The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Roy Kenneth Nabben of Raelingen, Norway. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2010.
The Center transmitted its request for registrar verification to the Registrar on August 11, 2010. The Registrar replied on August 12, 2010, confirming that the Domain Name was registered with it, that the Respondent was the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name would expire on June 19, 2011, and had been placed on REGISTRAR-LOCK, that the language of the registration agreement was English, and that the registrant had submitted to the jurisdictions of the Registrar’s principal office at Karlsruhe, Germany, and the registrant’s address at Raelingen. The Registrar also provided the full contact details in respect of the Domain Name held on its WhoIs database. The Registrar could not confirm that a copy of the Complaint had been sent to it.
The Center verified that the Complaint satisfied the formal requirements of the UDRP, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 26, 2010. The notification was sent to the Respondent by email and the Written Notice was sent to the Respondent by courier using the contact details for the Domain Name on the Registrar’s WhoIs database. The courier subsequently confirmed that the hard copy Written Notice was delivered to the postal address of the Respondent on the Registrar’s WhoIs database on August 27, 2010.
The Respondent sent an email to the Center on September 9, 2010, asking for a copy of the Complaint to be sent to him; the return email address provided by the email was one of the addresses in the contact details on the WhoIs database to which the Center had already sent the Complaint. The Center sent a further copy of the Complaint to the Respondent by email to that address on September 10, 2010, and asked the Respondent whether he required any further documentation.
In accordance with paragraph 5(a) of the Rules, the due date for Response was September 15, 2010. The Respondent submitted a letter by way of response to the Complaint by email to the Center on September 15, 2010.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 24, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant is the largest producer of energy drinks in the world. It has sold its leading product under the mark RED BULL in Austria since 1987 and internationally since 1992. It sold over 3.8 billion units of this product in 157 countries in 2009. Its advertising expenditure has increased from EURO577,000 in 1987 to EURO244.7 million in 2009. It has also promoted the Red Bull brand by sponsorship of sports events and competitions, including events in Norway. It has registered various domain names containing its mark as the second level domain, including used for its main website and used for its website for Norway. Its main website had some 271 million views in 2009. It has also registered RED BULL as a trade mark in numerous countries for a wide variety of goods and services.
It is common ground that the Domain Name was registered and used by the Respondent to sell the Complainant’s Red Bull product to consumers in Norway pursuant to an agreement with the Complainant. The parties differ as to the circumstances and terms of the agreement and the termination of the trading relationship between them. 5. Parties’ Contentions A. Complainant
According to the Complainant, the Respondent concluded an agreement with the Complainant in 2006 allowing the Respondent to register the Domain Name and to use it for sales of the Complainant’s Red Bull product into Norway until the Complainant received authorization from the Norwegian authorities to sell the product legally in Norway, which it did in April 2009. The Complainant then established a subsidiary in Norway and offered the Respondent the opportunity to sell the product in Norway, but the Respondent did not take up this offer. The Complainant therefore sent the Respondent cease and desist letters in February and March 2010. The Respondent subsequently renewed the Domain Name on June 20, 2010.
The Complainant submits that the Domain Name is confusingly similar to the RED BULL mark in which it has rights. The Complainant observes that the mark is very widely known and that the addition of “Norge”, which means “Norway” in Norwegian, does not reduce the likelihood of confusion.
The Complainant contends that the Respondent does not have any right or legitimate interest in respect of the Domain Name, since the Complainant’s consent to the Respondent’s use of it expired in May 2009. The Complainant states that the Respondent is not commonly known by the Domain Name and is now using it misleadingly to divert Internet users to his website.
The Complainant further alleges that the Domain Name was registered and is being used in bad faith. The Complainant draws attention to the Respondent’s renewal of the Domain Name after the Complainant’s cease and desist letters. The Complainant reiterates that the Respondent is now using the Domain Name misleadingly to divert Internet users to his website.
The Complainant requests a decision that the Domain Name be cancelled. B. Respondent
The Respondent states that he approached the Swedish division or subsidiary of the Complainant’s group in the spring of 2004 with a proposal for a sales and distribution agreement for the Complainant’s products in Norway. It was agreed that the Respondent should continue to work towards getting the product legalized in Norway.
In February 2008, the Respondent agreed with representatives of the Complainant in Sweden to continue to work with the Norwegian authorities to legalize the product and in the meanwhile to establish a web shop geared towards Norwegian customers. While it was then illegal to sell the product at a store in Norway, it was lawful for Norwegian consumers to order it from a web shop for delivery to their door as personal imports. According to the Respondent it was agreed at this meeting that he would be given a limited period of 6-12 months to sell the Red Bull product in Norway at full scale once the legislation allowed, by way of a test period to evaluate his ability to provide sufficient and high-quality delivery. Pursuant to this agreement the Respondent was given permission to register the Domain Name.
The Respondent states that following this agreement he continued to work with the Norwegian authorities and in the meanwhile opened a web shop. After the product was legalized in Norway, the Complainant offered to permit the Respondent to continue the web shop but did not offer the Respondent the opportunity to handle distribution and sale in Norway as had been agreed previously.
The Respondent says that he has expended considerable resources over a long period of time based on the promise of a trial period of full-scale sale and distribution of Red Bull in Norway. The Respondent adds that the Domain Name can be bought from him for a reasonable fee. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is clear that these are cumulative requirements and it is therefore appropriate to consider each of them in turn. A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has registered and unregistered rights in the Mark RED BULL.
The Panel further finds that the Domain Name is confusingly similar to this mark. The Domain Name consists of the mark followed by “norge” which means “Norway” in Norwegian and the generic top level domain name suffix. Many Internet users would assume that the Domain Name is a domain name of the Complainant used for its activities in Norway.
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
For the reasons stated in A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc.,WIPO Case No. D2010-0800, the Panel considers that paragraph 4(a)(ii) of the UDRP refers to a right or legitimate interest existing at the time of the complaint, and that this requirement can be satisfied (in the complainant’s favour) where the registrant once had but no longer retains a right to use the disputed domain name.
In the present case, the Panel is doubtful whether the Respondent has retained any right to use the Domain Name. However, it is not necessary to resolve this issue in view of the conclusion of the Panel on the issue of bad faith discussed below. C. Registered and Used in Bad Faith
For the reasons set out in detail in the recent majority decision in A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc.,WIPO Case No. D2010-0800, the Panel considers that, to satisfy the third requirement of the UDRP, a complainant must show that the domain name was both registered in bad faith and is being used in bad faith, and that a registration originally made in good faith cannot turn into a registration in bad faith because the registrant subsequently uses it in bad faith. Bad faith use can be evidence of bad faith registration but cannot convert a registration which was in fact made in good faith into a registration made in bad faith.
It has also been the consensus view of panelists that a renewal of a domain name without a change of ownership does not constitute a new registration for the purpose of this requirement: see section 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions; Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI),WIPO Case No. D2001-0782; PAA Laboratories GmbH v. Printing Arts America,WIPO Case No. D2004-0338; and Guildline Instruments Limited v. Anthony Anderson,WIPO Case No. D2006-0157.
It has sometimes been suggested that the requirement of bad faith registration as well as bad faith use represents a deficiency of the UDRP. But where a company consents to the registration by a trading partner of a domain name incorporating its mark, the company can readily protect itself by securing a clear written agreement specifying that it will own the domain name after the trading relationship comes to an end; and the agreement can further specify a cost effective means of dispute resolution. At all events this situation is a long way from the mischief which the UDRP was devised and adopted to address, namely the abusive registration of domain names which are identical or confusingly similar to the marks of other parties without their consent. In any case, the Panel is obliged to apply the UDRP as it is, rather than as it could or should be.
In this case it is common ground that the Domain Name was originally registered by the Respondent with the consent of the Complainant to enable the Respondent to market the Complainant’s Red Bull product to consumers in Norway for the mutual benefit of both parties. There is no evidence that the registration was originally made by the Respondent in bad faith. The Respondent has remained the registrant of the Domain Name since then, albeit that he renewed the Domain Name after the Complainant demanded that he cease using it.
In these circumstances, the Panel cannot find that the Domain Name was registered in bad faith. The third requirement of the UDRP is not satisfied and the Complaint must be rejected. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Jonathan Turner
Sole Panelist
Dated: September 30, 2010
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