WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. Harold Gutch

Case No. D2000-0766

 

1. The Parties

The Complainant in this administrative proceeding is Red Bull GmbH a company incorporated under the laws of Austria, with its registered office in Fuschl am See, Austria. Dr. Christian Hauer, Schönherr Barfuß Torggler & Partners, Vienna, Austria represents the Complainant.

The Respondent is Harold Gutch, Regensburg, Germany.

 

2. The Domain Name and Registrar

The domain name that is subject of this Complaint is redbull.org.

The registrar with which the domain name is registered is Computer Service Langenbach GmbH, Düsseldorf, Germany.

 

3. Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on July 10, 2000, and the signed original together with four copies was received by WIPO Center on July 11. The WIPO Center sent an Acknowledgment of Receipt to the Complainant, dated July 13, 2000,

On July 13, 2000, a Request for Registrar Verification was transmitted to the Registrar. The request was re-sent on July 20. The Registrar confirmed on July 25, 2000, the information in the request and forwarded the requested WHOIS details, and confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was on "Active" status.

The policy in effect at the time of the registration of the domain name at issue is the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the provisions of the Policy bind the Respondent.

The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on July 29, 2000.

The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

No formal deficiencies having been recorded, on July 29, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of August 19, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by the required means.

The Respondent filed a response on August 20, 2000.

On August 31, 2000, in view of the Complainantís designation of a single panelist the WIPO Center invited Mr. Knud Wallberg to serve as a panelist in Case No. D2000-0766, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received, Mr. Knud Wallbergís Statement of Acceptance and Declaration of Impartiality and Independence, on September 1, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was September 15, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

The Administrative Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Uniform Rules and the WIPO Supplemental Rules.

 

4. Factual Background

The Complainant is a worldwide producer of energy drinks. It is the producer of the RED BULL energy drink, which was first sold in Austria in 1987 and in Germany in 1994. In 1999, the RED BULL energy drink was sold in 44 countries all over the world and the Complainant has sold approximately 622 million units in 1999. Currently, the annual turnover of the Complainant amounts to approximately EURO 480 million.

The Complainant has traded under the name "Red Bull" in Austria since 1987 and outside Austria since 1992.

The Complainant is the proprietor of more than 12 registrations and applications in Austria of trademarks consisting of or containing the mark "Red Bull". The various trademark registrations and applications cover an extensive range of goods and services, and span all of the 42 trademark classes. As well, the Complainant has registered, or applied for registration of, a range of trademarks consisting of or containing the word "Red Bull", in a large number of countries such as U.S.A., Russian Federation, United Kingdom, Germany, France, Spain, Italy, Ireland, China, South Africa, Saudi Arabia. In addition, the Complainant has obtained various registered Community Trademarks including the mark "Red Bull". Details of trademark registrations in countries outside Austria were set out in Annex F to the Complaint.

The Complainant is the registrant - among others - of the following domain names containing the mark "Red Bull": redbull.com, redbull.de, redbull.ch, redbull.at, redbull.co.uk, redbull.se, redbull.nl, redbullusa.com, redbull.com.br, redbull.it.

The Complainant operates its principal Website at "redbull.com". The site contains information on the RED BULL energy drink, sports events sponsored by the Complainant, download-versions of different Red Bull commercials and links to other Red Bull Websites.

The Respondent is private person and apart from the domain name "redbull.org", he is also the registrant of the domain names "gutch.net", "deamonpowered.org" and "morphism.net". The domain name "redbull.org" is not yet functional.

 

5. Partiesí Contentions

A. Complainant

The relevant part of the domain name in dispute is the expression "Red Bull", which is clearly identical with or confusingly similar to the various trademarks and trademark applications "Red Bull", which are registered and/or owned by the Complainant.

The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks. Combination of the words "Red" and "Bull" is a purely fanciful combination of words, as there does not exist a red colored bull. Therefore, no trader would legitimately choose this mark unless seeking to create an impression of association with the Complainant. Accordingly, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

With respect to this requirement, the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith according to Policy paragraph 4(b):

- Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark (normally the Complainant) or to a competitor of that Complainant, for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name; or

- Whether the domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or

- Whether the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

- Whether by using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrantís web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of the registrantís web site or location or of a product or service on the registrantís web site or location.

In the case at hand, evidence of bad faith registration and use is established by the following circumstances (see also Administrative Panel Decision in the case of Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003,  7.1-7.12):

The Trademark "RED BULL" is one of the best-known trademarks in Austria and Germany, and it is inconceivable that the Respondent would not be aware of this fact.

By virtue of the widespread use and reputation of the trademark "RED BULL", members of the public in Austria and Germany would believe that the Respondent was the Complainant or in some way associated with the Complainant.

Thirdly, any realistic use of the domain name must misrepresent an association with the Complainant and its goodwill, resulting in passing off, breaches of Austrian and German Unfair Competition legislation and trademark infringement.

Fourthly, the domain name "redbull.org" is not yet functional. There is no evidence that a Website or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant or any other person. As the Administrative Panel stated in Telstra, "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all circumstances of the case, it can be said that the Respondent is acting bad faith. ..... the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. .... it is possible .... for inactivity by the Respondent to amount to the domain name being used in bad faith."

Therefore, the requirement of registration and use of the domain name "redbull.org" by the Respondent in bad faith is also fulfilled. As a consequence, the Respondent is obliged under Policy paragraph 4 to submit to a mandatory administrative proceeding.

B. Respondent

The Respondent claims that he circumstances of this case fulfill the demands of Policy Paragraph 4(c)(i-iii) in as much as:

∑ in compliance with Policy 4(c)(i) before any notice to the Defendant of the dispute, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name was not in connection with any offering of goods or services;

∑ he as an individual has been commonly known by the domain name, even if he has acquired no trademark or service mark at issue;

∑ he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark service at issue.

In support of these claims the Respondent gives the following information:

The name "red bull" has been the Respondentís nickname from his earliest childhood, according to his mother since the summer of 1981, when the Respondent was given this nickname by his friends during the course of Red Indian games. In addition the Respondentís family name "Gutch" is Welsh meaning "Red".

The combination "red" and "bull" is contrary to the view of the Complainant, not impossible, unheard of or rare, nor the Complainantís invention, original thought, or combination, nor did it appear for the first time in 1987 in connection with the launch of his drink. The color adjective "red" is commonly used with animals when the fur or coat is actually "brown", as for example a fox is "red" and not brown, so is cattle (bull, ox, cow, calf etc.) "red" when it is in reality light brown. It its figurative or symbolic use (for example "red fury") "red" meaning "violent, hot, dynamic, energetic, wild, burning, fiery, active etc.", the adjective can combine with any noun, regardless of the natural color of the object the noun stands for. Reference in support of these claims was made through citations of different dictionaries. In addition the combination "red" and "bull" is known in England as a traditional name for country pubs and together with "Red Lion" and "Red Ox" has as such been established in England at least since the Middle Ages. Also it was stated that the word "bull" has more than the one meaning. "Bull" can mean among others, "a seal attached to an official document". Such seals are commonly red, and in this sense a "red bull" is not a fanciful combination of words, but rather a technical term.

As a brand name "Red Bull" has been established for other products than that of the Complainant, namely for bikes, bike equipment such as saddles, frames, clothes etc., and for tobacco. The examples of the two brands with identical trademark as the Complainantís show that identical trademark must not necessarily go with confusing the consumer with regard to the identity of the product. As little as a consumer associates or confuses "Red Bull" drinks, "Red Bull" bikes or "Red Bull" tobacco with each other, as little is the Defendant's fun page "redbull.org" associated with any of these brands.

The possibility of confusing or associating the Defendant with the Complainant is even given to a far lesser degree than that of the mentioned bike and tobacco brand with the Complainant. For the Defendant is a mathematician, at the time still student of mathematics, enrolled at Regensburg University, and in this capacity a completely different "unity" from the Complainant.

Further, the requirement of Policy Paragraph 4(a)(iii) is not fulfilled as there is no evidence that the Respondent has registered or used the domain in bad faith. The respondent registered the domain name on December 28, 1999. Since this date multiple accesses to the webserver serving "www.redbull.org" occurred from the Complainantís own domain. Since April 3 the domain is "offline" due to technical reasons.

The "hits" mentioned above occurred before any notice to the Respondent of the dispute, and the Respondentís use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name was or were exclusively legitimate, noncommercial and fair, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue and accordingly the use fulfills the requirements of Policy Paragraph 4(c)(iii). The Respondent even "referred" to the Complainantís own WebPages on the main webpage for the domain "redbull.org", which the Complainant certainly was aware of due to the "hits" mentioned above. To support this the Respondent disclosed the existence of his other domains gutch.net, daemonpowered.org and morphism.net. These activities shows Respondentís overall good intent, interest, good faith and good will, when registering a domain, as they all fulfill the requirements of Policy Paragraph 4(c)(iii).

The Complainant registered all of these domains before the Respondent registered the domain "redbull.org", most of them even long before. The Complainant had time enough to register the ".org" domain in its name, but seems to have been not interested in doing so.

Summarizing these facts there can be no talk of the domain name in dispute "misrepresenting an association with the Complainant and its goodwill, resulting in passing off, breaches of Austrian and German Unfair Competition legislation and trademark infringement".

 

6. Discussion and Findings

According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

2) that the Respondent has no legitimate interests in respects of the domain name; and

3) that the domain name has been registered and used in bad faith.

1) Similarity with Complainants rights

The distinctive part of the domain name is identical to the Complainants trademark RED BULL. The mark is registered for different goods and services in several countries including in the Respondents place of residence Germany. The Panel finds that the Complainant has proven that the mark through intensive use for a number of years has become well known.

2) Respondents legitimate interests

The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating he mark.

The Respondent claims that Red Bull has been his nickname since childhood but does not provide any evidence to this fact.

The Respondent further points out that Red Bull is a natural combination of words and that the combination of words is used as a trademark also by other entities than the Complainant. The Panel recognizes that these points are valid and must be taken into consideration. However, in determining whether or not the registration of the domain name infringes the rights of the Complainant they do not carry substantial weight. It is basic trademark law that common words can serve as and be registered as trademarks as long as the words are not descriptive for the goods or services in question. The words Red Bull can not be perceived as being descriptive for the goods and services for which they are registered and used by the Complainant and must thus be considered to be an inherently distinctive mark. Furthermore, the fact that Red Bull is also a trademark of other entities does not prevent the Complainant from invoking their rights to the mark.

On this background the Panel finds that the Respondent has not proven that he has any prior rights or legitimate interests in the domain name

The preconditions in the Policy, Paragraph 4(a)(i) and (ii), cf. 4(c) are therefore fulfilled.

3) Bad faith

Paragraph 4(a)(iii) cf. 4(b) of the Policy further provides registration and use in bad faith.

The Panel finds that the Complainantís mark must be considered as a well-known mark in many markets, including in Germany. It is highly unlikely that the Respondent has selected the domain name without having knowledge of the Complainantís use of the mark RED BULL. The Panel finds that not only must he have had the Complainantís mark in mind when he registered the domain name but that he must also have been aware of the deception and confusion that would inevitably follow if he used the domain name.

Consequently, the Panel finds that the domain names have been registered in bad faith.

It is further required that the domain name is being used in bad faith.

Article 4(b) of the Policy gives a non-exclusive list of factors that can be considered as evidence of bad faith.

There is no evidence that the Respondent has tried to sell the domain name to the Complainant. Neither has the Respondent yet used the domain name actively to offer any services. He only states that the intention is to create a "fun page".

On the other hand the Panel finds that by registering the domain name the Respondent has effectively prevented the Complainant from reflecting their distinctive and well-known mark, in the corresponding domain name, cf. Article 4(b)(ii). The Panel notes in this context that in many jurisdictions the mere registration of one or more domain names that contains the well- known trademark of others is considered a trademark infringement or an act of unfair competition and thus is believed to be use in the course of trade.

As stated above, the Panel also finds that the expected use of the domain name by the Respondent inevitably (and to the Respondentís knowledge) will lead people to believe that the Respondent and the Respondents site was in some way associated with the Complainant. For this purpose potential use is equivalent to actual use. The fact that the Complainant has registered a number of domain names that includes the mark RED BULL does not alter this fact.

On this background also the elements in Article 4(a)(iii) are present in this case.

Consequently, all the preconditions for cancellation or transfer of the domain name according to Paragraph 4(a) of the Policy are fulfilled.

The Complainant has requested transfer of the domain name.

 

7. Decision

In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is confusingly similar to the trademark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and 15 of the Rules, the Panel requires that the registration of the domain name redbull.org be transferred to the Complainant.

 


 

Knud Wallberg
Presiding Panelist

Dated: September 21, 2000