SanDisk refuted bad faith registration of sandisk.no

2005.02.01
Oslo Patentkontor AS filed a complaint regarding a third party registration of the domain name sandisk.no to the Norwegian dispute resolution body last year. On January 19, 2005 the decision was made that the domain name must be deleted on the grounds that the registration was made in bad faith.

The domain name sandisk.no was registered on June 23, 2004 by Foto & Video Nett AS. When this was discovered Oslo Patentkontor AS filed a complaint regarding the registration of the domain name to the dispute resolution body on behalf of SanDisk Corporation. SanDisk Corporation argued that the registration of the domain name is a violation of their rights to the name SANDISK. They are the proprietors of a number of different trademarks which all, individually or in combination with other elements, contain the word SANDISK, and these trademarks are registered for various electronic goods. The registration seems to have been made in bad faith as Foto & Video Nett AS is well aware of the existence of SanDisk Corporation as well as their products and trademarks, as they are the distributor of SanDisk Corporation’s products in Norway.

In the decision of January 19, 2005, the dispute resolution body found it well documented that SanDisk Corporation has rights to the name SANDISK, which is identical to the registered domain name sandisk.no. Foto & Video Nett AS distributes the product SANDISK but has no rights to the trademark. The dispute resolution body further stated that Foto & Video Nett AS clearly had done this in bad faith as they were familiar with the rights of SanDisk Corporation, being the distributor of SANDISK at the time when they registered the domain name. No matter whether or not the domain name was registered in order to distribute information and promote sales of SANDISK, the dispute resolution body finds that registering the domain name is an action which will undermine the rights of the complainant. Further, the registration will be a hindrance for SanDisk Corporation when they wish to exercise their rights to the trademark in Norway. In the light of this the dispute resolution body made the decision to delete the domain name sandisk.no.


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