WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Redbulls Itc. Ltd
Case No. D2002-0541
1. The Parties
The Complainant in these Administrative Proceedings is Red Bull GmbH, a company incorporated in Austria, having its registered office at Fuschl am See, Austria.
The Respondent is Redbulls Itc. Ltd having an address at Rm 2002-5, Laws Comm Plaza, No. 788 Cheung Sha Wan Rd., Lai Chi Kok, Hong Kong, SAR of China.
2. The Domain Name and Registrar
This dispute concerns the domain name <redbulls.com>.
The registrar with which the domain name is registered is Network Solutions, Inc. (the "Registrar")
3. Procedural History
On June 12, 2002 the Complaint was filed by e-mail with the WIPO Arbitration and Mediation Center (the "Center") pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999. The hard copy was received on June 17, 2002.
On June 13, 2002, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant by e-mail.
On June 18, 2002, in response to a Request for Registrar Verification from the Center, to the Registrar confirmed inter alia that the said registration was registered by the Registrar, that the Respondent was the registrant of said domain name. The Registrar provided details of the administrative contact and billing contact for the said registration and confirmed that the language of the Service Agreement was English.
On June 19, 2002, having reviewed the Complaint, the Center requested the Complainant to file an amendment to the Complaint identifying the correct principal office of the Registrar.
On June 21, 2002 the Complainant filed the requested amendment by e-mail. The hard copy of the amendment was received by the Center on June 26, 2002, and on receipt of same, the Center was satisfied that the Complainant complied with the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.
On June 28, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent, including the domain name registrant, the administrative contact, the technical contact, zone contact and billing contact by post/courier (Complaint with enclosures), facsimile (Complaint without attachments), and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on June 28, 2002, and that the Respondent was required to submit a Response to the Center on or before July 18, 2002.
The courier was unable to serve the Respondent at the contact address supra that had been provided by the Respondent to the Registrar. The package containing the said Notification was returned to the Center. The Complainant had experienced a similar difficulty in trying to serve documents on the Respondent and had provided the Center with an alternative address for the Respondent. Attempts to serve the Respondent at the alternative address proved unsuccessful also. The e-mail address provided by the Respondent for the Administrative Contact and the Billing Contact also had permanent fatal errors.
The courier did however succeed in serving said Notification on the Respondent at the address provided in the contact details for the Administrative Contact.
No Response was received by the Center.
On July 22, 2002, the Center sent a Notification of Respondent Default to the Respondent.
On July 30, 2002, having received a Statement of Acceptance and Declaration of Impartiality from James Bridgeman, the Center proceeded to appoint this Administrative Panel consisting of a single member.
On the same date, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Parties and the case file was transferred to this Administrative Panel.
In the view of this Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
The Complainant is the producer of a beverage known as RED BULL. The Complainant has traded under the name RED BULL in Austria since 1987 and outside Austria since 1992. In that time it has developed a substantial international reputation for its RED BULL trademark.
The Complainant is the proprietor of more than 12 Austrian trademark registrations and applications in Austria for registration 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.
In other jurisdictions the Complainant has registered, or applied to register, a range of trademarks consisting of or containing the words RED and BULL in combination, in a large number of countries including, Hong Kong, where the Respondent is based, the U.S.A., Australia, Canada, New Zealand, Russian Federation, United Kingdom, Germany, France, Spain, Italy, Ireland, China, South Africa and Saudi Arabia.
In addition, the Complainant has secured the registration of a number of Community Trademarks for its RED BULL trademark.
The Complainant is the registered owner of a substantial portfolio of domain names incorporating the Complainantís RED BULL trademark including: <redbull.com>; <redbull.org>; <redbull.com.au>; <redbull.cd>; <redbull.de>; <redbull.ch>; <redbull.at>; <redbull.co.uk>; <redbull.se>; <redbull.nl>; <redbull.co.nz>; <redbullusa.com>; redbull.com.br>; <redbull.it>; <redbullentertainment.com>; <redbullentertainment.org>; <redbullentertainment.net>; <red-bull.tv>; and <redbull.tv>.
The Respondent has registered said domain name <redbulls.com> but as of the date of the Complaint, the Respondent had not established any www site at this address. Except for the information supplied by the Respondent to the Registrar and available on the Registrarís WHOIS database, there is no information available relating to the Respondent. It is noteworthy that the attempts to serve the Respondent with notices in the course of these Administrative Proceedings have demonstrated that most of the information supplied by the Respondent to the Registrar appears to be incorrect.
5. Partiesí Contentions
The Complainant requests this Administrative Panel to issue a decision that the contested domain name registration be transferred to the Complainant.
The Complainant claims to be the largest producer of what it describes as "energy drinks" in the world. The Complainantís RED BULL beverage was first sold in Austria in 1987 and in Germany in 1994. Currently, the RED BULL beverage is sold in 68 countries all over the world and the Complainant claims to have sold approximately 900 million units in 2000. The Complainant claims to have an annual turnover of approximately Ä 790 millions.
The Complainant claims that its media expenses in 2000 amounted to Ä95 millions. In the period from 1987 to 2000, the Complainant claims to have spent Ä 633 millions on overall marketing activities, including media expenses. In 2001, the Complainantís total marketing expenses amounted to more than Ä 427 millions.
The Complainant submits that its RED BULL brand has become the unchallenged market leader in all its markets.
Additionally, the Complainant has since 1995 sponsored and co-owned Formula One racing cars and the RED BULL SAUBER PETRONAS racing team, which have been televised on a world-wide basis and which the Complainant submits have made the Complainantís RED BULL trademark well-known all over the world.
Furthermore, the Complainant claims that through television broadcasts, sales activities, Internet activities, entertainment activities and events sponsored by the Complainant, the Red Bull beverage has become well-known in many countries and has achieved the status of being famous in Austria.
The Complainant operates its principal www site at "www.redbull.com". The site contains information on the Red Bull beverage, sports events sponsored by the Complainant and links to other www sites of the Complainant. The Complainant submits that these www sites provide evidence of the entertainment activities of the Complainant.
Identical or Confusingly Similar Domain Name (Policy para 4 (a) (i))
The Complainant submits that 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, which are registered and/or owned by the Complainant. In this respect, the Complainant refers also to the decisions of the administrative panels in Red Bull GmbH v. Harold Gutch, (WIPO Case No. D2000-0766); Red Bull GmbH v. Tony Marinelli, (WIPO Case No. D2001-0522); Red Bull GmbH v. Manuel Sousa, (WIPO Case No. D2001-0584) and Red Bull GmbH v. Grey Design, (WIPO Case No. D2001-1035).
The Complainant submits that in said Red Bull GmbH v. Tony Marinelli the panel correctly stated, that "Complainant's trademark RED BULL is composed of two common words of the English language, which in their combination are arbitrarily used to distinguish the energy drink sold by the Complainant and therefore are inherently distinctive. Such trademarks are in fact very strong marks."
Therefore, the Complainant submits that in the case of the domain name in dispute in the present Administrative Proceedings, consumers including those in Hong Kong, where the Respondent is based, will think that the plural RED BULLS is a variation of the Complainant's trademark and therefore the Respondent has created situation where there is a risk of confusion between the Complainant's trademarks and the disputed domain name.
The Complainant furthermore submits that courts in the U.S.A. have ruled, that "typosquatting" is a violation of the Anti-Cybersquatting Protection Act, holding that "a reasonable interpretation of conduct covered by the phrase "confusingly similar" is the intentional registration of domains names that are misspellings of distinctive or famous names, causing an Internet user who makes a slight spelling or typing error to reach an unintended site" (Shields v. Zuccarini, Case No. 00-2236, United States Court of Appeals for the Third Circuit; link: "http://laws.findlaw.com/3rd/002236.html").
The Complainant submits that such a proposition most certainly holds true for the domain name in dispute in the present Administrative Proceedings and such a view has also been adopted by the administrative panel in Red Bull GmbH v. Grey Design, (WIPO Case No. D2001-1035).
Respondent's Rights or Legitimate Interests in the Domain Name (Policy para 4 (a) (ii))
The Complainant submits that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to apply for or use any domain name incorporating any of those marks or any variations thereof. The Comblainant submits that the combination of the words "RED" and "BULL" is a purely fanciful combination of words, as a red coloured bull does not exist.
Therefore, the Complainant submits that no trader would legitimately choose this mark or any variation thereof, unless seeking to create an impression of association with the Complainant. In this respect, the Respondent seeks to create the false and misleading impression of an association with the Complainant by registering the <redbulls.com> domain name.
The Complainant submits that the Respondent is quite obviously trying to exploit the fame and reputation of the Complainant's RED BULL trademarks.
Given the fame and reputation of the Complainantís RED BULL mark and also the activities of the Complainant all over the world, including Hong Kong, it is inconceivable, that the Respondent was unaware of the Complainant before registering the <redbulls.com> domain name. It is also inconceivable that the Respondent created a fantasy name, which happened to consist of a variation of the Complainantís RED BULL trademark.
Furthermore, the Complainant submits that the Respondent has never used the domain name in connection with a bona fide offering of goods or services. As a result, the Respondent has no rights or legitimate interests in the domain name <redbulls.com>. In support of this submission the Complainant refers to the decision of the administrative panel in Red Bull GmbH v. Harold Gutch, (WIPO Case No. D2000-0766).
Domain Name Registered and Used in Bad Faith (Policy para 4 (a) (iii))
The Complainant pleads that with respect to the requirement regarding bad faith, 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 para 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
that 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
that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
that 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.
The Complainant submits that it has been consistently expressed in various administrative panel decisions, that it is possible for inactivity by the Respondent to amount to a disputed domain name being used in bad faith. In this regard the Complainant refers to the decisions of the administrative panels in Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003; Red Bull GmbH v. Harold Gutch, (WIPO Case No. D2000-0766); Red Bull GmbH v. Manuel Sousa, (WIPO Case No. D2001-0584).
The Complainant submits that the following matters are evidence of registration and use of the domain name in bad faith:-
The trademark RED BULL is one of the best known trademarks not only in Austria but all over the world, including Hong Kong, and it is inconceivable that the Respondent would not be aware of this fact. As a consequence, the disputed domain name has been registered in bad faith according to para 4 (b) (ii) and (iii) of the Policy.
By virtue of the wide-spread use and reputation of the trademark RED BULL, members of the public, including those in Hong Kong 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 Ė where the trademark RED BULL is very well known by the public Ė would immediately believe that the disputed domain is in some way associated with the Complainant. These facts are evidence of bad faith registration of the disputed domain names under para 4 (b) (ii), (iii) and (iv) of the Policy.
Any realistic use of the domain name in dispute must misrepresent an association with the Complainant and its goodwill, resulting in passing off, breaches of Unfair Competition legislation and trademark infringement. This results in bad faith registration and use of the disputed domain name according to para 4 (b) (ii) and (iii) of the Policy.
The domain name in dispute is not yet functioning as a www site. There is no evidence, that a www site 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. As the administrative panel correctly stated in Telstra, Red Bull v. Harold Gutch and Red Bull v. Manuel Sousa, "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 aciton; inaction is within the concept. .... it is possible .... for inactivity by the Respondent to amount to the domain name being used in bad faith."
Lastly, the Complainant has sent a letter to the Respondent on December 12, 2001, informing the Respondent, that the registration of the domain name <redbulls.com> is an infringement of Ė among others Ė the Complainant's trademark rights. There has been no response to that letter.
There was no Response filed.
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainants the onus of proving that:(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and (iii) the said domain name has been registered and is being used in bad faith. In an exceptionally well presented Complaint, the Complainant has clearly established that it has rights in the RED BULL trademark through its substantial portfolio of registrations and its promotional activities to enhance the reputation of the mark described supra. The domain name <redbulls.com> is clearly confusingly similar to the RED BULL trademark and the Complainant has therefore succeeded in establishing the first element of the tests in paragraph 4(a) of the Policy. This Administrative Panel accepts the Complainantís submissions that its trademark has acquired a substantial reputation and that the Respondent must be aware of this reputation. It does not automatically follow that the Respondent would not have pre-existing rights, but in the absence of any Response, this Administrative Panel accepts that the Complainant has established that on the balance of probabilites, the Respondent has no rights or legitimate interest in said domain name. In Telestra the panel noted that the domain name in issue did not resolve to any web site or other on-line presence; there was no evidence that a www site or other on-line presence was being established using the domain name in issue; there was no evidence of any advertising, promotion or display to the public of the said domain name; and finally there was no evidence that the Respondent had offered to sell, rent or otherwise transfer the said domain name to the Complainant, a competitor of the Complainant, or any other person. No positive action was being taken by the Respondent in relation to the domain name. The administrative panel reviewed the provisions of the Policy and concluded that inactivity by the Respondent can amount to use of a domain name in bad faith. As to the circumstances in which such inactivity may amount to bad faith, the administrative panel in Telestra concluded that this must be decided on a case by case basis. In the present case, the Respondent would appear to have given incorrect contact details to the Registrar. The Respondent did not file a Response and this Administrative Panel is entitled to take an inference from this. The Complainant has established that it has acquired a substantial reputation in the RED BULL trademark world-wide, including Hong Kong. The Respondent has enhanced its trademark by establishing an Internet presence with a large portfolio of domain names. It is unlikely that the Respondent was not aware of the Complainantís trademarks and domain names when it registered the domain name <redbulls.com>. While the combinations of the names of a colours and the names of animals have traditionally been used to form trademarks, nonetheless the Complainant has established that its RED BULL trademark is distinctive. Furthermore this Administrative Panel accepts that the Complainant has made out a prima facie case that by registering the domain name <redbulls.com> in the plural form the Respondent has engaged in typo-squatting. Taking all these factors into account, this Administrative Panel accepts the Complainantís submissions that the Respondent registered and is using the domain name in bad faith.
With specific reference to paragraphs 4(i) of the Policy and paragraph 15 of the Rules this Administrative Panel decides that the domain name <redbulls.com> is confusingly similar to the Complainant's trade mark, that the Respondent has no rights or legitimate interest in respect of said domain name and that the Respondent has registered and is using said domain name in bad faith.
Accordingly, this Administrative Panel decides that said domain name <redbulls.com> should be transferred to the Complainant.
Dated: August 13, 2002