'Napster.be' nabbed by Napster

In Napster Inc v TheInternetOne CV, panellist Yves Van Couter at the Belgian Centre for Arbitration and Mediation (CEPINA) has ordered the transfer of 'napster.be' to Napster. Couter held that the domain name was identical to the complainant's famous NAPSTER mark and had been registered in bad faith.

Napster, a US internet file sharing company, registered the US trademark NAPSTER in 2000 and registered the same mark in Benelux in December 2001. It filed a complaint with CEPINA arguing that TheInternetOne's registration and use of 'napster.be' infringed its trademark rights. TheInternetOne registered the domain name prior to Napster's Benelux mark registration, but it failed to file a response to the complaint.

Couter ordered the transfer of the domain name, holding that the conditions for transfer under the DNS Belgium dispute resolution policy (set out in Article 10 of the registration agreement terms and conditions) had been fulfilled. He reasoned that, pursuant to this policy, it was irrelevant that Napster gained trademark rights in Benelux after 'napster.be' had been registered. All that was necessary, said Couter, was for Napster to prove that it has such rights, and it had successfully done so. He concluded that:

• 'napster.be' is identical to Napster's mark and would cause confusion among internet users;
  
  
• TheInternetOne had no legitimate interest in the domain name by default because it had failed to respond to Napster's complaint; and
  
  
• the domain name had been registered in bad faith since NAPSTER was a well-known mark in Benelux at the time the domain name was registered, and TheInternetOne should have been aware of this fact.

Olivier Vrins, Altius, Brussels