WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. Manuel Sousa

Case No. D2001-0584

 

1. The Parties

1.1 The Complainant is Red Bull GmbH, a company incorporated in Austria with its registered office in Fuschl am See, Austria.

1.2 The Respondent is Manuel Sousa, of 1830 E. Sahara Suite 101, Las Vegas, NV 89104, U.S.A.

 

2. The Domain Names and Registrar

2.1 The domain names upon which this Complaint is based are <redbullentertainment.com>, <redbullentertainment.org> and <redbullentertainment.net>. The registrar of the domain names as at the date of the Complaint is Register.com, Inc ("RCI").

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Name and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the Center") by email on April 23, 2001 and in hard copy on April 27, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint states that a copy of the Complaint together with the cover sheet as prescribed by the Supplemental Rules have been sent to the Respondent and that a copy of the Complaint has been sent to the Registrar of the domain name in dispute, RCI.

3.3 On April 24, 2001, the Center sent to the Complainantís representative an Acknowledgment of Receipt of Complaint.

3.4 The Center sent a Request for Registrar Verification to RCI on April 24, 2001, by email. RCI responded to the Centerís request on April 24, 2001, stating:

(a) that RCI was the registrar for the domain names in dispute;

(b) that the Respondent was the current registrant of the domain names in dispute;

(c) that the domain names in dispute were active;

(d) the Respondentís contact details; and

(e) that the Uniform Dispute Resolution Policy was applicable.

3.5 The Panel notes that in its response to the Centerís Request for Registrar Verification, RCI stated that it did not confirm that a copy of the Complaint regarding the domain names in dispute was sent to it by the Complainant as required by the Supplemental Rules. The Complaint states, at paragraph 17: "A copy of this Complaint has been sent or transmitted to the concerned registrar on April 23, 2001, by e-mail attachment.".

3.6 In the absence of any relevant evidence, the Panel is of the view that although the Complainant may have sent a copy of the Complaint to an email address which it took to be that of RCI on April 23, 2001, RCI, for whatever reason, had not received that email at the time of its response to the Centerís Request for Registrar Verification. The Panel notes, however, that the Center emailed details of the Complaint to RCI on May 23, 2001. For the purposes of paragraph 10 of the Rules, the Panel is satisfied that no unfairness to the Respondent resulted from the fact that RCI may not have received full details of the Complaint until May 23, 2001.

3.7 The Center contacted the Complainantís representative by email on May 1, 2001, to request four additional copies of the video tape (of various commercials made for the Complainant to advertise its Red Bull energy drink) which was originally provided with the Complaint. The four additional copies of the videotape originally provided with the Annexures to the Complaint were received by the Center on May 22, 2001.

3.8 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on May 23, 2001, to the Respondent by post/courier (with enclosures), by facsimile (without attachments) and by email (without attachments), and to the Complainantís representative by email (without attachments).

3.9 On May 23, 2001, the Center received an email from the Respondent which is discussed below. On May 31, 2001, the Center contacted the Respondent by email to inform the Respondent that the deadline by which the Respondent could file a full Response was June 11, 2001.

3.10 On June 14, 2001, the Center sent to the Respondent an Acknowledgement of Receipt of Response, referring to the email Response received by the Center from the Respondent on May 23, 2001.

3.11 On June 25, 2001, the Center sent a Notification of Appointment of Administrative Panel to the Complainantís Representative and to the Respondent by email.

3.12 The Center sent a Transmission of Case File to Administrative Panel by email on June 25, 2001. The documentation was received in hard copy by the Panel, together with a copy of the videotape, on June 28, 2001 in Sydney, Australia.

3.13 All other procedural requirements appear to have been satisfied.

 

4. Factual Background

4.1 Activities of the Complainant

The following information is asserted as fact in the Complaint.

The Complainant is the largest 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 2000, the Red Bull energy drink was sold in 55 countries all over the world and the Complainant has sold approximately 900 million units in 2000. Currently, Red Bull has an annual turnover of approximately EURO 790 million. Additionally, the Complainant has since 1995 sponsored and co-owned Formula One racing cars, the RED BULL SAUBER PETRONAS team, which have been televised on a world wide basis and which have made the trade mark RED BULL well-known also in the USA and Canada.

4.2 The Complainantís trade marks

The following information is asserted as fact in the Complaint.

The Complainant has traded under the name "Red Bull" in Austria since 1987, and outside Austria since 1992 (the international launch date of the Red Bull energy drink).

The Complainant is the proprietor of more than 12 registrations and applications in Austria of trademarks consisting of or containing the mark "RED BULL", details of which are set out in Annex G to the Complaint. 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 to register, a range of trademarks consisting of or containing the words "RED BULL", in a large number of countries such as U.S.A., Canada, Russian Federation, United Kingdom, Germany, France, Spain, Italy, Ireland, China, South Africa and Saudi Arabia. In addition, the Complainant has obtained various registered Community Trademarks including the mark "RED BULL", details of which are set out in Annex H to the Complaint.

The Complainant also states that it is the registrant of numerous domain names incorporating the words "redbull", including <redbull.com>, <redbull.org> and <redbull.co.uk>. The Complaint states that the principal website operated by the Complainant (at <www.redbull.com>) 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, all of which are evidence of the entertainment activities of the Complainant.

4.3 Activities of the Respondent

No formal Response has been received from the Respondent in this proceeding, and no information is available to the Panel as to the activities of the Respondent. As stated above, an email from the Respondent was received by the Center on May 23, 2001, but this email, which is discussed below, contained no information as to the activities of the Respondent.

 

5. The Complainantís contentions in the Complaint

5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the relevant part of the domain names 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 Complaint refers to the Administrative Panel Decision, WIPO Case No. D2000-0766, Red Bull GmbH v. Harold Gutch.

The Complainant alleges that the addition of the word "entertainment" to the words "redbull" leads to the conclusion that the domain names in dispute have been registered by a branch or subsidiary of the Complainant dealing with its entertainment activities, which creates additional confusion for the relevant public.

5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint states that 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. The Complaint further states that combination of the words "Red Bull" is a purely fanciful combination of words, as there does not exist a red-coloured bull and, therefore, no trader would legitimately choose this mark unless seeking to create an impression of association with the Complainant. The Complaint alleges that in this respect, the Respondent seeks to create the false and misleading impression that he acts in accordance with the Complainant conducting entertainment activities. Accordingly, the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complaint refers to the Administrative Panel Decision, WIPO Case No. D2000-0766, Red Bull GmbH v. Harold Gutch.

5.4 In reference to the element in paragraph 4(a)(iii) of the Policy, the Complaint recites paragraph 4(b) of the Policy and sets out the circumstances, which shall be evidence of the registration and use of a domain name in bad faith under this paragraph. The Complaint goes on to state that evidence of bad faith registration and use of the domain names in dispute in this case is established by the following circumstances:

- The trademark "RED BULL" is one of the best known trademarks not only in Austria but all over the world, and it is inconceivable that the Respondent would not be aware of the fact.

- By virtue of the widespread use and reputation of the trademark "RED BULL", members of the public in the U.S.A. would believe that the Respondent was the Complainant or in some way associated with the Complainant. In addition, Internet-users in countries such as Austria and Germany, where the trademark "RED BULL" is very well-known by the public, would immediately believe that the disputed domain names are in some way associated with the Complainant.

- Any realistic use of the domain names in dispute must misrepresent an association with the Complainant and its goodwill, resulting in passing off, breaches of Unfair Competition legislation and trademark infringement.

- Two of the domain names in dispute, <redbullentertainment.org> and <redbullentertainment.net> are 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 these domain names. There is no evidence of advertising, promotion or display to the public of the domain names. There is no evidence of advertising, promotion or display to the public of the domain names. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain names to the Complainant or any other person. As the Administrative Panel correctly stated in Telstra and Red Bull, "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 in bad faith: "..... the concept of a domain name Ďbeing used in bad faithí 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.".

- With regard to the domain name <redbullentertainment.com>, this domain name is used in connection with a website solely containing the words "for a good time call" and the U.S. telephone number 702-862-8999. Obviously, the opponent is using the reputation and fame of the Complainant in bad faith for this website of dubious qualities.

The Complaint states that the requirement of registration and use of the disputed domain names by the Respondent in bad faith is therefore fulfilled.

 

6. The Respondentís contentions in its email response dated May 23, 2001.

6.1 In his email to the Center dated May 23, 2001, the Respondent states:

"I have no interest in redbullentertainment.com, .net, .org. I sent an email to the fact that I would discontinue using the redbullentertainment company which never actually did any business and never was established. I will assume that your purpose is only to waste my time and harass me.

All I did was register the name without knowing that there would be a conflict, since my company has nothing to do with yours. When I registered <redbullentertainment.com>, .net, .org the domain names were available, I did nothing wrong by simply paying the registering fee. If you continue to pursue this matter I will seek legal counsel to file a lawsuit for your continued harassment."

 

7. Discussion and Findings

7.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.

7.2 Domain Name identical or confusingly similar to Complainantís trade mark

The domain names in dispute are <redbullentertainment.com>, <redbullentertainment.org> and <redbullentertainment.net>. The Complainant has numerous trade mark applications and registrations in Austria and various other countries of the words "RED BULL". Therefore, apart from the gTLD suffixes forming part of the domain name, which do not have a relevant distinguishing function in determining whether a domain name is identical or confusingly similar to a trade mark or trade name, the difference between the disputed domain names and the Complainantís "RED BULL" trademarks is the addition of the word "entertainment" in the domain names.

As far as a comparison between the disputed domain names and the Complainantís trade marks of the word "Red Bull" is concerned, the addition of the word "entertainment" to the words "redbull" in the domain names has, in the Panelís view, marginal incremental impact on what the viewer focuses on, namely, the "redbull".

This Panelís view, consistently expressed in prior decisions, is that common nouns are rarely distinguishing elements. Notwithstanding that the Complainantís principal business does not relate to entertainment, but rather to the manufacture of energy drinks, the Complainant does sponsor participants in certain entertainment events, such as a team of Formula One racing cars. Accordingly, the Panel has come to the view that, although potentially descritpive, "redbullentertainment" is similar to the Complainantís trademarks, and confusingly so.

The Panel therefore finds that the Complainant has proven paragraph 4(a)(i) of the Policy.

7.3 The Respondent has no rights or legitimate interests in the Domain Name

The Complaint asserts that the Respondent has no rights or legitimate interests in the disputed domain names. As stated above, the only response from the Respondent in any time in this proceeding was the Respondentís email to the Center dated May 23, 2001, the first line of which is, "I have no interest in <redbullentertainment.com>, .net, .org.". The Respondent therefore appears to admit that he does not in fact have any rights or legitimate interests in the domain names in dispute.

It is clear to the Panel that the Complainant owns the "RED BULL" trademarks discussed above, and that there is no relationship or connection whatsoever between the Complainant and the Respondent. The question before the Panel is therefore whether, notwithstanding the ownership of the "RED BULL" trade marks by the Complainant, the Respondent does have legitimate rights or interests in the disputed domain names.

Paragraph 4 (c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondentís rights or legitimate interests in a disputed domain name. There is no evidence whatsoever before the Panel that any of the situations described in paragraph 4(c) of the Policy apply in the case of the Respondent. Similarly, the Respondent has not put before the Panel any evidence of its use of or preparation to use the disputed domain names, and has in fact stated in his Response that "I sent an email to the fact that I would discontinue using the redbullentertainment company which never actually did any business and never was established.".

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.

7.4 Domain Name has been registered and is being used in bad faith

The Panel notes that paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

In order to show that the Respondent registered the domain name in bad faith, the Complainant has alleged: first, that it is likely that when the Respondent registered the domain name it knew or should have known of the existence of the Complainantís "RED BULL" trade marks; secondly, that as a result of the widespread use and reputation of the "RED BULL" trade marks, members of the public in the U.S.A. would believe that the Respondent was associated with the Complainant; and thirdly, that any realistic use of the domain names results in passing off, breaches of unfair competition legislation and trademark infringement. The Complainant further asserts that the fact that the <redbullentertainment.net> and .org domain names are not yet being positively used is not a bar to the domain names having been registered and used in bad faith; finally, the Complainant alleges that the bad faith use of the <redbullentertainment.com> domain name is evidence by the fact that that domain name resolves to a "web site of dubious qualities."

Therefore, the Complainant appears to suggest that the circumstances outlined in paragraphs 4(b)(iv) are applicable in this dispute: namely, that the Respondent has registered the domain name either to attract Internet users to its web site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of its web site.

However, the Panel notes that one of the disputed domain names, <redbullentertainment.com>, currently resolves to a Whitewing Labs, Inc web site which, amongst other things, encourages a healthy lifestyle and, in particular, a Presidentís Message suggesting a reduction in the consumption of caffeine. Unusually, the ability to view the siteís source code has been suppressed.

As regards the bad faith registration and use of this disputed domain name by the Respondent, in the Panelís opinion, the circumstances set out in paragraph 4(b)(i) of the Policy exist in respect of this dispute: namely, that the Respondent registered the disputed domain name <redbullentertainment.com> primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a competitor of the Complainant for valuable consideration in excess of his out-of-pocket expenses directly related to that domain name. The fact that the Complainant did not allege that the circumstances set out in paragraph 4(b)(i) of the Policy exist in respect of this dispute may due to the fact that at the time of making the Complaint the domain name <redbullentertainment.com> was not being used by Whitewing Labs, Inc. but allegedly resolved to a web site of "dubious qualities".

In respect of the other two disputed domain names, <redbullentertainment.net> and <redbullentertainment.org>, the Panel has come to the view that the Respondent registered these domain names with the same primary purpose as that discussed above regarding <redbullentertainment.com>, notwithstanding the fact that these other two domain names do not currently resolve to any active web site: the Panel accepts the argument put forward by the Complainant, and consistently expressed in other administrative panel decisions, that it is possible for inactivity by the Respondent to amount to a disputed domain name being used in bad faith. Occupying an entry in the DNS is "use" in any event, since it has a blocking function.

The Panel is of the view that the domain names in dispute were registered and are being used in bad faith by the Respondent at least at the time of the Complaint. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.

 

8. Decision

8.1 The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that the domain names <redbullentertainment.com>, <redbullentertainment.org> and <redbullentertainment.net> be transferred by RCI to the Complainant, Red Bull GmbH.

 


 

Philip N. Argy
Sole Panelist

Dated: July 3, 2001