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No man is an island, but WIPO is no man.

By J. DeVoy

Catching up on the backlog of interesting stuff I couldn’t address during bar prep, Red Bull lost the UDRP proceeding seeking the transfer of domain names that an Austrian court ruled belonged to Red Bull.

In 2003, Red Bull held the Taurus Rubens, an air festival/art show that hopefully had more professional participation than its Flugtag events across America.  Anticipating that the event would become an annual one, Reinhard Birnhuber registered the domains and among others.  When Red Bull discovered this, it offered Birnhuber € 500.  Birnhuber demanded one million euros.

In April 2005, Red Bull registered its Taurus Rubens as an Austrian trademark and commenced a UDRP proceeding against Birnhuber before the WIPO.  Red Bull lost.  Though the decision, Red Bull GmbH v. Reinhard Birnhuber D2005-0862, noted that Birnhuber’s registration of the marks was probably in bad faith – Birnhuber owned several other Red Bull-related domain names – Red Bull had no standing under the UDRP rules.  Because Red Bull had registered the Taurus Rubens trademark years after Birnhuber registered the relevant domains, the company had no right to appear before WIPO and its complaint was dismissed.

Red Bull then filed suit in an Austrian commercial court, winning against Birnhuber.  Birnhuber, who was found to have registered the domains in bad faith, appealed the lower court’s decision, but again lost.  With final judgment in its hands, a speedy transfer of domain names pursuant to the court’s order seemed all but certain for Red Bull.  Indeed, any rational person would agree.

Birnhuber balked at transferring the domains to Red Bull, and the company initiated a second UDRP proceeding in 2009, D2009-1598.  Red Bull lost.  The WIPO panel held that the Austrian court’s determinations were of no merit or relevance in the case, and the panel’s own determinations should stand as the final judgment.  With a few pages of paper, the WIPO arbitrators blinked several years of legal proceedings and costs out of existence.  Why would WIPO want courts horning in on its (very good) gig?  By excluding them, WIPO can have full control over the UDRP parallel universe.  From Google Translate, the opinion has this to say:

The panel can see in the above circumstances, no new facts or actions that would warrant a new assessment of the case. In this respect, the complainant fails to recognize that not only “new actions” to the resumption of proceedings are necessary, but this also has to be relevant.

The correct legal result is more than the enforcement of that ruling in Austria, especially as the present legal request (transfer of the domain name) covers with the sentencing order of the Austrian court. Since both parties are domiciled in Austria, is likely a priori, no specific enforcement problems arise. WIPO panels can so far do not replace the state authorities.

A cold, expensive reminder that the bare right to something does not translate to its possession, especially on the internet.

Red Bull’s lawyers dun’ goof’d by apparently ignoring common law trademark rights, which are recognized by the UDRP.  In LLC v. Gregory Ricks / Gee Whiz Domains Privacy Service, D2008-0882, a dispute handled by Randazza, LLC (“BME”) argued that it had been using the mark BME in its line of business for 14 years before the dispute arose, and it had become distinct and famous within the body modification industry as a result.  Respondent, Ricks, was found to have registered the domain in bad faith because of BME’s continuous use of the mark, making Ricks’ use of confusingly similar to BME’s mark.  Accordingly, the panel ordered Ricks to transfer the domain to BME.  If this approach had been effectively used in the Red Bull cases, it could have resulted in different panel holdings and circumvented years of litigation in Austrian courts.

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