WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. Ian Andrew

Case No. D2001-0709

 

1. The Parties

Complainant is Red Bull GmbH, Brunn 115, 5330 Fuschl am See, Austria.

Respondent is Mr. Ian Andrew, P.O. Box 7200, Hook, Hampshire RG27 8GX, United Kingdom.

 

2. The Domain Name and Registrar

The Domain Name at issue is <givesyouwings.com>.

The Registrar of the Domain Name is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint by e-mail on May 29, 2001, and in hard copy on June 5, 2001. On May 30, 2001, the Center acknowledged receipt of the Complaint.

On June 1, 2001, the Center sent to the Registrar a request for verification of registration data. On June 4, 2001, the Registrar confirmed, inter alia, that it was indeed the Registrar of the Domain Name, that the Domain Name was registered in the name of Respondent, and that the Uniform Domain Name Dispute Resolution Policy applied to the Domain Name.

On June 11, 2001, the Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panelist agrees with the Centerís assessment that the Complaint complies with the formal requirements.

Also on June 11, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent by e-mail, fax and post. The Notification indicated that the Response was due on June 30, 2001.

On June 29, 2001, Respondent filed a Response by e-mail. On July 2, 2001, the Center sent to Respondent a Response Deficiency Notification, requesting that Respondent submit his Response in hard copy as requested by the Rules before July 6, 2001. In an e-mail of July 2, 2001, Respondent indicated that four original copies of the Response had been sent, and confirmed that a single-member panel was acceptable. On July 4, 2001, the Center received the Response in hard copy.

On July 26, 2001, having received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Anne-Virginie Gaide (the "Panelist"), the Center notified the parties of the appointment of a single-member panel consisting of the Panelist. The Panelist is satisfied that the Administrative Panel was properly constituted.

The language of the proceeding is English.

 

4. Factual Background

Complainant is a producer of energy drinks which it commercializes under the trademark "RED BULL". The "RED BULL" drinks were first sold in Austria, where Complainant is incorporated, in 1987, and outside Austria in 1992. At the current time, The "RED BULL" energy drinks are sold in 55 countries over the world, including the United Kingdom.

Complainant frequently uses the expressions "gives you wings" or "gives you wiiings" in relation to its "RED BULL" energy drink in TV commercials and on marketing material.

Complainant also sponsors a number of sporting events such as the "RED BULL FLYING DAY".

Respondent is a private person domiciled in the United Kingdom. He registered the Domain Name <givesyouwings.com> on March 1, 2000.

The Domain Name resolves to a web page displaying the following notice : "This site is currently under construction. Please check back at a later time".

 

5. Partiesí Contentions

A. Complainant

Complainant contends that it owns trademark registrations and applications for the expression "GIVES YOU WINGS" or its translations in 85 countries, including the United Kingdom, for goods falling in particular into international classes 32, 33 and 42.

Complainant contends that the Domain Name is identical to its trademarks "GIVES YOU WINGS".

Complainant further contends that it has not licensed or otherwise permitted Respondent to use its trademark "GIVES YOU WINGS" or to apply for a domain name incorporating such terms, and that consequently Respondent has no rights or legitimate interests to the use of the Domain Name.

Complainant finally contends that the Domain Name was registered and is being used in bad faith, as established by the following circumstances :

- The trademark "GIVES YOU WINGS" is a well-known trademark all over the world, and it is not conceivable that Respondent had no knowledge of it.

- Due to the notoriety of the trademark "GIVES YOU WINGS", the public is likely to believe that Respondent is in some way associated to Complainant.

- Any use of the Domain Name must result in a misrepresentation of an association between Respondent and Complainant.

- The Domain Name does not resolve to an active web site and there is no evidence of use of the Domain Name, such inaction amounting to passive holding in bad faith, as described in the Telstra case (Telstra Corporation Ltd v. Nuclear Marshmallows, Case D2000-0003).

Consequently, Complainant requires the transfer of the Domain Name.

B. Respondent

Respondent contends that the expression "gives you wings" is a phrase of the common language which relates to something that makes one feel high or elated, and that he knew this expression only as such. Respondent remarks that other companies, such as Motorola, use the expression "gives you wings".

Respondent further contends that he registered the Domain Name for a web site dedicated to things that "give you wings", i.e. things that make one high or elated, such as winning, kissing, caffeine, alcohol or fame. The Domain Name was registered on the same day as two other domain names, i.e. <givetheslip.com> and <giveusarest.com>.

Respondent contends that Complainant does not always use the exact expression "gives you wings", but rather uses variations including the word "wings", such as "Nowadays, people need wings more than ever before" or "Red Bull gives you wiiings" (with three "i").

In view of the above, Respondent contests that he acted in bad faith.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

i) 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

ii) the respondent has no rights or legitimate interests in respect of the domain name; and

iii) the domain name registered by the respondent has been registered and is being used in bad faith.

1. Identity or confusing similarity with Complainantís trademark(s)

The Domain Name is identical to the expression "GIVES YOU WINGS" on which Complainants declares to have trademark rights.

Complainant states that it owns trademark registrations or applications consisting in the expression "GIVES YOU WINGS" in 85 countries. In support of this contention, Complainant submitted an unofficial listing of all its registrations and applications for the trademark "GIVES YOU WINGS" or translations thereof.

The Panelist has to stress here that this listing does not constitute adequate evidence of Complainantís trademark rights. Indeed, it has no official value, as it was prepared by Complainant or its trademark agent. Moreover, the various columns of the chart do not have any heading, so that one can only guess which column refers to the date of application, publication, registration, and so forth. As a rule, only copies of certificates of registration issued by official registration authorities are apt to demonstrate trademark rights.

In the present case, it is likely that Complainant would have been able to provide appropriate evidence of its rights had it been requested to do so. However, the Panelist has considered unnecessary to ask Complainant to submit a copy of a certificate of registration for the trademark "GIVES YOU WINGS", because even if the trademark rights of Complainant were properly established, the Complaint would have to be denied for other grounds (see under 3 below).

2. Rights or legitimate interests

According to Complainant, Respondent is not a licensee of Complainant, and Respondent has not otherwise obtained an authorization to use Complainantís mark.

Respondent contends that he registered the Domain Name with a view to use it for a web site dedicated to "things that make you feel high or elated", but does not describe his plan in more details. Today, almost 18 months after registration, the Domain Name does not resolve to an active web site. Respondent himself declares in this respect : "the website is not active yet nor has any marketing been done". It can be inferred from this that Respondent has not yet made any preparations to use the domain name, be it commercially or not. Respondent does not assert that he would be commonly known by the Domain Name.

In view of the above, the Panelist concludes that Respondent does not have rights or legitimate interests to the Domain Name.

3. Registration and use in bad faith

Paragraph 4(b) of the Policy sets forth four particular circumstances which are evidence of registration and use in bad faith. The list is not exhaustive, and in a given case, other circumstances may be evidence of bad faith.

The circumstances expressly mentioned in paragraph 4(b) of the Policy are the following :

i) Registration for the purpose of selling or otherwise transferring the domain name to the owner of an identical or confusingly similar trademark or to a competitor of such owner for a price in excess of costs directly related to the domain name.

ii) Registration for the purpose of preventing the owner of an identical or confusingly similar trademark from reflecting the mark in a corresponding domain name, provided the respondent has engaged in a pattern of such conduct.

iii) Registration for the purpose of disrupting the business of a competitor.

iv) Use for the purpose of attracting Internet users to the respondentís web site by creating a likelihood of confusion with the complainantís mark.

Complainant does not assert any of the above-mentioned grounds. Relying on the non-exhaustive character of this enumeration, Complainant invokes several circumstances which, in its opinion, show that the Domain Name was registered and is being used in bad faith, i.e :

- The trademark "GIVES YOU WINGS" is a well-known trademark all over the world, and it is not conceivable that Respondent was not aware of it.

- Due to the notoriety of the trademark "GIVES YOU WINGS", the public is likely to believe that Respondent is in some way associated to Complainant.

- Any use of the Domain Name must result in a misrepresentation of an association between Respondent and Complainant.

- The Domain Name does not resolve to an active web site and there is no evidence of use of the Domain Name, such inaction amounting to passive holding in bad faith in accordance to the Telstra case (Telstra Corporation Ltd v. Nuclear Marshmallows, Case D2000-0003).

The first three circumstances invoked by Complainant relate to the question of registration of the Domain Name in bad faith, while the fourth one concerns the question of use of the Domain Name in bad faith. The Panelist will address these two issues separately.

Registration in bad faith

The first three circumstances alleged by Complainant can be summarized as follows : because of the notoriety of the trademark "GIVES YOU WINGS", Respondent had to know, when he registered the Domain Name, that this expression was a trademark of Complainant, which leads to the conclusion that the registration of the Domain Name served the purpose of creating an association between Complainant and Respondent. Therefore, registration was effected in bad faith.

The Panelist is not satisfied that registration of the Domain Name was made in bad faith, for the reasons set out hereafter.

First, the Panelist cannot infer from the evidence submitted by Complainant that the expression "gives you wings" is so well-known in the United Kingdom that it must be presumed that Respondent knew it to be Complainantís slogan when he registered the Domain Name.

As regards the TV commercials for the United Kingdom made available to the Panelist on a video tape, Complainant does not indicate at what dates they were aired and on which television channels. The only media plan regarding television that was submitted concerns the year 1997 and bears only the mention "RED BULL", so that the Panelist cannot know whether it covers the commercials on the video tape. Neither did the Panelist find an indication of the distribution methods and dates of the promotional materials such as flyers and postcards that were submitted with the Complaint. Moreover, the Panelist did not see, on the video of the "Flying Day" sponsored by Complainant, the slogan "gives you wings", but only the mark "RED BULL". Finally, Complainant submitted two field surveys conducted in Germany in 1998 and Austria in 1997 regarding the recognition of the slogan "verleiht Flügel" (the German version of "gives you wings"). According to Complainant, the surveys show that 86% spontaneously associate the slogan "verleiht Flügel" with Complainant in Germany (where the slogan was first used in 1994) and 44% in Austria (where it was first used in 1987). Upon reviewing the surveys, the Panelist could not find these numbers. It rather results from these documents that 44% in Germany associate the slogan with Complainant and 68% in Austria. Thus, over 50% of the people participating in the survey in Germany, i.e. their majority, did not associate the expression "verleiht Flügel" with "RED BULL" products after four years of use. Complainant indicates that the slogan "gives you wings" was first used in the United Kingdom in the fall of 1996. In view of the results of the German survey, it is quite possible that in March 2000 (less than four years later), Respondent did not know that this expression was used by Complainant.

Second, the expression "to give [someone or something] wings" has a meaning in the English language. According to the Collins English Dictionary (third edition, 1994), it refers to anything causing a rapid motion, as in "fear gave wings to his feet". The slogan "gives you wings" is thus not, contrarily to Complainantís opinion, a "purely fanciful combination of words", but an expression that may be used in everyday conversation in English-speaking countries to designate something that gives speed or energy. The fact that Complainant uses translations of the expression "gives you wings" in non English-speaking countries shows that it is using this expression for its particular meaning, and not as a fanciful denomination. Moreover, Respondent submitted Internet printouts showing that this expression is used by others than Complainant. For example, it can be observed that Motorola uses the slogan "Motorola gives you wings" on its web site. The expression "technology that gives you wings" is displayed on the web site www.homeworkingmom.com, and the expression "this kiss gives you wings" appears on the web site www.virtualkiss.com. Finally, Respondent submits the lyrics of a song by Kris Delmhorst, dated 1998, with the title "world gives you wings". It cannot be reasonably assumed that all these persons copied Complainantís slogan. Thus, it is possible that the choice of "gives you wings" by Respondent was a coincidence.

Third, even if it were assumed that Respondent had come across TV commercials or marketing materials of Complainant featuring the slogan "gives you wings", and thus knew it to be used by Complainant when he registered the Domain Name, this does not mean that Respondent was necessarily aware that this expression was used as a trademark to which Complainant considered to have rights. Indeed, in view of the meaning of the expression "gives you wings", it is not obvious that this expression is a trademark when it is used in relation to an energy drink. Indeed, it does not differ, in this context, from an expression such as "makes you quick". Thus, even if he had seen Complainantís TV commercials, Respondent did not have to recognize that the terms "gives you wings" in "RED BULL GIVES YOU WINGS" were used as a trademark and not as a description of RED BULLís effect. The fact that Complainant uses this expression is, in this context, not sufficient to communicate to consumers that Complainant considers it as its property. It must be noted here that the terms "gives you wings" do not appear on the products themselves. In view of the above, even if he knew that Complainant used the expression "gives you wings" in relation to its products, Respondent could in good faith believe that this expression belonged to the general public and that he was therefore entitled to register it as a domain name.

It must finally be observed that in the TV commercials shown in the United Kingdom, Complainantís slogan, when featured in writing, is always spelled with three "i" in "wings" ("GIVES YOU WIIINGS"). Registration in bad faith could have been found if Respondent had registered the domain name "givesyouwiiings.com" (with three "i"), because it could then have been assumed that the use of this particular and unusual spelling was meant to refer to Complainantís slogan.

In view of the above, the Panelist considers that Complainant has not satisfied its burden of proof as far as registration of the Domain Name in bad faith is concerned, since Respondent contests such bad faith and since it appears reasonably possible that Respondent indeed registered the Domain Name in good faith.

Use in bad faith

Complainant further contends that the absence of use of the Domain Name is a sign of passive holding in bad faith. In support of this argument, Complainant cites the case Telstra Corporation Limited v. Nuclear Marshmallows, Case no. D2000-0003, in which the Panelist held that the passive holding of a domain name may amount to use in bad faith when, among other circumstances, it appears that any plausible active use of the domain name by the respondent would be illegitimate. The Panelist in Telstra considered that the following circumstances warranted a finding of bad faith on the part of the respondent :

1) Telstraís trademark "TELSTRA" had a strong reputation and was widely known in Australia.

2) Nuclear Marshmallows had provided no evidence of any actual or contemplated good faith use of the domain name <telstra.org>.

3) Nuclear Marshmallows had taken active steps to conceal its true identity, by operating under a name that was not registered as a business name.

4) Nuclear Marshmallows had actively provided false contact details and failed to correct them.

5) It was not possible, in view of the above, to conceive of any plausible actual or contemplated active use of the domain name that would not be illegitimate, such as being a passing off, an infringement of consumer protection legislation or an infringement of Telstraís rights under trademark law.

The present case is distinguishable in several respects from the Telstra case.

First, because of its clear meaning when used in relation to energy drinks, it is not certain that the expression "gives you wings" is recognized as a trademark. "TELSTRA", on the other hand, has no meaning and is obviously an invented word. Its registration as a domain name could therefore not be a coincidence, whereas such a coincidence is possible in the present case.

Second, Respondent did not take steps to conceal his identity or to make contact impossible. On the contrary, the contacts details of Respondent were correct and Respondent filed a timely Response to the Complaint.

Finally, it is possible to conceive of a legitimate use of the terms "gives you wings" as a domain name, since this expression can apply to many other products that those commercialized by Complainant, as illustrated by the Internet printouts provided by Respondent.

In view of the above, the Panelist finds that in the present case, the passive holding of the Domain Name by Respondent does not amount to use in bad faith within the meaning of paragraph 4(b) of the Policy.

 

7. Decision

In light of the foregoing, the Administrative Panel decides that the Domain Name <givesyouwings.com> registered by Respondent is identical to a trademark in which Complainant appears to have rights, that Respondent has no rights or legitimate interests in respect of the Domain Name, but that Complainant has failed to demonstrate that Respondent has registered and used the Domain Name in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Administrative Panel denies the request that the registration of the Domain Name <givesyouwings.com> be transferred to Complainant.

 


 

Anne-Virginie Gaide
Sole Panelist

Dated: August 9, 2001