Another Strange Domain Cancellation

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I read another UDRP result today from the World Intellectual Property Organization that I think is strange – this time involving the domain name CookingWithRedBull.com. As you can probably already tell without even looking, the makers of Red Bull, Red Bull GmbH, filed the UDRP for this domain name. (UPDATE: As George pointed out in the comment section, the complainant requested the cancellation, and the panelist obliged. I haven’t seen that before… My mistake and apologies.)

In fact, the panelist agreed that the domain name infringed on Red Bull’s trademarks, too:

“So here, the Panel finds the Domain Name, <cookingwithredbull.com>, confusingly similar to the Complainant’s mark RED BULL. Moreover, not only is that well-known mark wholly incorporated in the Domain Name, it is identified with a drink and therefore may readily be associated with cooking. Thus the prefix “cooking with” does nothing to distinguish the Domain Name from the mark.”

“The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the Domain Name on the part of the Respondent.”

“It follows that the only use to which the Respondent has been shown to have made of the Domain Name prior to notice of this dispute (namely prior to his receipt of the initial cease and desist letter) is to lead to a website displaying, without permission, the Complainant’s logo and a picture of its product, with text likely misleadingly to convey to consumers the impression that the site was approved by or operated by the Complainant. This is not bona fide use under paragraph 4(c)(i) nor legitimate non-commercial or fair use under paragraph 4(c)(iii).”

“The Domain Name is clearly designed to attract Internet users familiar with the Complainant’s energy drink, since the confusing similarity between the Domain Name and the Complainant’s RED BULL mark would be likely to lead Internet users to wonder whether the Domain Name was associated with the Complainant. “

One thing that bothers me about this is that a canceled domain name will likely end up back in the drop pool, where it will be picked up by someone else. If Red Bull wants to continue protecting their mark, they would then have to file another UDRP or file a lawsuit against the next guy who gets it (unless they bid on it at a drop auction).

The inconsistency in results also bothers me, as the panelist didn’t provide rationale for canceling the domain name rather than transferring it. In the past, this same panelist has transferred other domain names, with recent transfers including Confo.com in March 2010, vertuemail.com and vertumail.com February 2010, Tati.com December 2009, and Legoland-california.com August 2009. To my untrained legal eye, the three elements of the Policy were met in the same was as the Red Bull domain name, yet they were given to the Complainant rather than canceled.

UPDATE: As George pointed out in the comment section, the complainant requested the cancellation, and the panelist obliged. I haven’t seen that before… My mistake and apologies.

4 COMMENTS

  1. If you read part 5.a, it says:

    “The Complainant seeks cancellation of the Domain Name.”

    So, it’s the fault of the complainant’s lawyers, for asking for that.

    This is a big contrast from the wooot.com case, where the complainant asked for the transfer, but the panelist without any explanation cancelled the name.

  2. This may have to do with the complainant being located in Germany. For .DE domains a deletion of a domain is a common request and result of a dispute – something I never quite understood. Often it goes hand in hand with a declaration of the respondent never to register names containing the brand again.

  3. Might also have something to do with the lawfirm (from poland) and Red Bull based on Austria. Those TLDs registries require a TM check (?) for regisration. That is no excuse for botching up the request on a gTLD but might be an reason.

    Elliott: I think your larger question is valid though but directed to the law firm. Why not take ownership of it At least until it expires. They spend the big money to fight it so it can’t be that it was expense related

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