WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. Carl Gamel

Case No. D2008-0253

 

1. The Parties

The Complainant is Red Bull GmbH, Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Sp. Jawna, Poland.

The Respondent is Carl Gamel, Covington, Kentucky, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <redbullsucks.com> is registered with Melbourne IT trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2008. On February 19, 2008, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On February 20, 2008, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2008. The Response was filed with the Center on March 17, 2008.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on March 31, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

1. The Complainant is a producer of energy drinks including a drink sold under the trademark RED BULL.

2. The Complainant first used the trademark in 1987 and since 1994 has made extensive international promotion and sale of its goods bearing the trademark1.

3. The Complainant’s reputation in the trademark has been acknowledged in former decisions under this Policy2.

4. The trademark is registered internationally3.

5. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark or to register or use any domain name incorporating the trademark, nor any variation of it.

6. The Respondent registered the disputed domain name on April 19, 2007.

7. The website which corresponded with the domain name promoted a so-called ‘healthy’ energy drink by the name “a.c.t”. The website included the Respondent’s name and described him as a “DrinkACT Associate”. The website included links for ordering the goods, for dealer logon, for a factory tour, and for cash rewards.

8. Pre-Complaint correspondence between the parties failed to resolve the dispute.

9. The Complainant petitions the Panel to transfer the disputed domain name from the Respondent to the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts trademark rights in RED BULL and alleges that the disputed domain name is confusingly similar to the trademark.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.

The detail of the Complaint is included where necessary in Part 6 of this decision.

B. Respondent

The Response is short and pays little regard to the Complaint or the Policy. It cites a number of Internet references which point to the potentially harmful effects of energy drinks. In short, the Respondent argues that his right to free speech implies his right to register and use the disputed domain name. The Panel will treat the Response as relying upon paragraph 4(c)(iii) of the Policy.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain name 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 has been registered and is being used in bad faith.

Having considered the Complaint, the Response and the evidence, the Panel finds the following:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the trademark RED BULL through both use and registration.4

The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s trademark.5

That said, the Panel is concerned to address two arguments perpetuated by the Complaint which it regards as specious. The first is that in so-called “sucks” cases under this Policy, confusing similarity should be assessed by analogy with decisions which have considered domain names consisting of a complainant’s trademark together with a descriptive or otherwise generic term.6 The present Complainant, for example, submitted that:

<redbullsucks.com> incorporates Complainant's famous trademark RED BULL in its entirety and the distinctive part of the domain name in dispute <redbullsucks.com> is “redbull”. The only deviation that Respondent did was that he has added the generic term “sucks”.

This Panel’s view is that it is not helpful to characterize “sucks” as a generic term in the same way earlier cases have held “buy-”, “cheap-”, “-online” and numerous similar terms to be non-distinctive. The virtually universal finding of confusing similarity in those cases is based on the primacy accorded to a complainant’s (usually well known) trademark over added matter of no source distinguishing value.

Trademark jurisprudence carries with it a long and unresolved debate as to whether trademarks deserve protection as “badges of origin” or as “badges of control”. Within the former paradigm, there is no respectable argument that “red bull” and “red bull sucks” would cause confusion as to source.

In a case relied upon by the Complainant, ADT Services AG v ADT Sucks.com, WIPO Case No. D2001-0213, the Panel said that “[T]he addition of the words “sucks” is a crude attempt to tarnish the mark”. It, and cases like it, which use language such as “tarnishment” and “dilution”, align themselves with the protection of trademarks as badges of control. Put crudely, those laws which protect trademarks from dilution in some way, through threat of infringement, are not rationalised on confusion as to origin.

Paragraph 4(a)(i) of the Policy simply asks whether the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

The Complaint also clings to the fantasy that:

far from all international customers are familiar with the pejorative nature of the term “sucks” and a large proportion of Internet users therefore are likely to be confused by “-sucks” domain names”, as they may not recognize the connotation of the word “sucks”.

A similar approach was taken in Vivendi Universal v. Mr. Jay David Sallen and G0247.COM, INC., WIPO Case No. D2001-1121, when Panel was of the view that “the addition of the word “sucks” to a well-known trademark is not always likely to be taken as “language clearly indicating that the domain name is not affiliated with the trademark owner”, properly indicating that not all Internet users speak English as their mother tongue.

Alike, in the very recent case Red Bull GmbH v. Russell Snyder, WIPO Case No. D2007-0915, the Panel has found that “it has been said many times in the context of the “sucks” cases that if potential users, i.e. potential customers of the Complainant, might not understand the nuances of the English language and the meaning of the slang words that make the “sucks” cases what they are, this may make a finding of confusing similarity more likely”.

This Panel’s opinion is that, at this time7, those people who have no appreciation of the pejorative nuance of the word “sucks” form such an inappreciable part of the modern Internet audience that concern for their sensibilities should not be a factor in the assessment of confusing similarity under paragraph 4(a)(i) of the Policy.8

The proper approach to the assessment of confusing similarity in “sucks” cases was taken by David Bernstein in Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No.D2000-0662, where it was said:

Complainant contends that consumers are likely to believe that any domain name incorporating the sequence “Wal-Mart” or a close approximation thereof is associated with Complainant. In the ordinary case, when a generic term is appended to the trademark (such as the domain name walmartstores.com), this would be so. But the fame of a mark does not always mean that consumers will associate all use of the mark with the mark’s owner. No reasonable speaker of modern English would find it likely that Wal-Mart would identify itself using wal-martsucks.com. Complainant has no evidence of any potential confusion. The Panel specifically rejects Complainant’s argument that consumers are likely to be confused as to the sponsorship or association of a domain name that combines a famous mark with a term casting opprobrium on the mark.

Nevertheless, the Panel understands the phrase “identical or confusingly similar” to be greater than the sum of its parts. The Policy was adopted to prevent the extortionate behavior commonly known as “cybersquatting”, in which parties registered domain names in which major trademark owners had a particular interest in order to extort money from those trademark owners. This describes Respondent’s behavior. Thus, the Panel concludes that a domain name is “identical or confusingly similar” to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity.

… … …

The Panel is cognizant of the importance of protecting protest sites that use a trademark to identify the object of their criticism. The “legitimate interest” and “bad faith” factors should adequately insulate true protest sites from vulnerability under the Policy, especially as the Complainant retains the burden of proof on each factor.

The preferable view is that paragraph 4(a)(i) of the Policy does not depend on a strict application of trademark confusion theory. The “sucks” cases are better regarded as examples of how the object of the Policy informs the meaning of confusing similarity under the Policy. Shoe-horning “sucks” cases into a traditional trademark infringement analysis is unconstructive. The question is whether, in the abstract, which amongst other things means putting to one side the repute the trademark in question might enjoy, the domain name and the trademark have confusing similarity.

The Panel finds that the Complainant has satisfied the first limb of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the circumstances described in the Complaint are sufficient to constitute a prima facie showing by the Complainant of Respondent’s absence of rights or legitimate interests in the disputed domain name and to shift the evidentiary burden to the Respondent to show that it does have a right or legitimate interest in the domain name.9

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 or service mark at issue.

The Respondent’s sole argument is that he is using the disputed domain name to criticize the Complainant as a manufacturer of energy drinks which allegedly can have deleterious effects. It is accordingly possible that the Respondent might bring himself under the protection of Paragraph 4(c)(iii). In this case, however, Complainant alleges, the evidence shows and Respondent does not deny, that the Respondent is using a website corresponding with the disputed domain name to promote an energy drink in competition with the Complainant. That is not noncommercial use and the evidence shows it is for commercial gain.

The Panel finds that the Respondent has no rights or legitimate interests in the domain name and so the Complainant has established the second limb of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:

(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 website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

What is noteworthy about paragraphs 4(b)(i) – (iv) is that they are cases of both registration and use in bad faith. Paragraph 4(b) is not exhaustive and other instances of bad faith might be in evidence but, in those instances, the Panel must be able to find both bad faith registration and bad faith use. It is therefore logical to first test the facts against these given circumstances.

The Complainant alleges that the Respondent’s conduct falls under paragraphs 4(b)(iii) and (iv).

Paragraph 4(b)(iv) requires the Respondent to have created a likelihood of confusion by using the domain name. The confusion must be as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. To make that finding would be at odds with the Panel’s earlier comments in relation to paragraph 4(a)(i) of the Policy. The Complainant’s argument accordingly fails.

The Complainant argues that the Respondent registered the domain name primarily for the purpose of disrupting its business. The Complainant sent the Respondent a cease and desist letter prior to filing of the Complaint. The Respondent's first response was “Please sue me!” and later “Try this I own “www.redbullsucks.com” “http://www.redbullsucks.com” and I will continue to promote my business! A.C.T. is the best an thats that! SEE YA!!! Carl B. Gamel III”. The Complainant argues that this is proof that the Respondent set out to disrupt its business and so falls under paragraph 4(b)(iii) of the Policy.

Had the Respondent’s use of the domain name related to a genuine protest site, it might have shown a legitimate interest in the domain name, whether or not an objective consequence of that protest site was disruption of the Complainant’s business. The question now is whether, on the evidence before the Panel, the Respondent’s primary purpose was to disrupt the business of the Complainant and in this case the answer must be in the affirmative. Those Internet users perhaps disenchanted with the Complainant’s products, or merely curious about the Respondent’s website, were presented by the Respondent with an energy drink offered in competition with the Complainant’s goods. It matters none for the purpose of paragraph 4(b)(iii) that the Respondent’s activities might have had no net impact on the Complainant’s business.

The Panel finds that the Respondent’s actions fell under paragraph 4(b)(iii) and as such finds that the domain name was both registered and used in bad faith. The Complainant has accordingly satisfied the third and last element under the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <redbullsucks.com> be transferred to the Complainant.


Debrett G. Lyons
Sole Panelist

Dated: April 14, 2008


1 Complainant has spent over EUR 3.9 billion on overall marketing activities, including media expanses. In that time, more than EUR 1 billion was spent on penetrating the marketplace in TV, cinema and radio. Solely in 2006, Complainant's total marketing expenses were more than EUR 961 million.

2See Red Bull GmbH v. Pregio Co., Ltd., WIPO Case No D2006-0909; Red Bull GmbH v. Web Wax Designer, WIPO Case No D2006- 0746. In Red Bull Gmbh v. Tony Marinelli, WIPO case No D2001-0522, the Panel 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 considered “very strong trademarks” as confirmed in Red Bull GmbH. v. Grey Design, WIPO Case No. D2001-1035.

3The Complainant and its subsidiaries hold national and international trademark registrations or applications consisting of or containing the mark RED BULL in Austria and a further 202 jurisdictions worldwide including the United States of America, Canada, Germany, the United Kingdom, the Russian Federation, Australia, Brazil, South Africa, Hong Kong, China, Taiwan, Japan and Saudi Arabia. In addition, Complainant holds various registered Community Trademark registrations. Examples are:
AT 150 540 with priority date September 7, 1993;
CTM 52787 with priority date April 1, 1996;
CTM 52803 with priority date April 1, 1996;
IR 612320 with priority date September 7, 1993,
IR 641378 with the priority date September 1, 1994,
US 2494093 with the registration date October 2, 2001,
US 3086964 with the registration date May 2, 2006,
US 3092197 with the registration date May 16, 2006.

4See Innomed Techs., Inc. v. DRP Servs., NAF Case No. 221171 ("Registration of the NASAL AIRE mark with the USPTO establishes Complainant's rights in the mark."); see also Men’s Wearhouse, Inc. v. Wick, NAF Case No. 117861 (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).

5See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 (finding that the top level of the domain name such as ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Case No. 153545 (“The addition of a top level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top level domains are a required element of every domain name.”). See also the subsequent analysis in this decision.

6See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, eResolution Case No. 0298 (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also AXA China Region Ltd. v. KANNET Ltd., WIPO Case No. D2000-1377 (finding that the domain name “is confusingly similar to the Complainant's trade mark 'AXA'" because "common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also J. Thomas McCarthy, MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION §23:50 (4th ed. 1998) (a user of a mark generally “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non descriptive matter to it").

7Several years have passed since the Center produced its informal overview of panel positions on key procedural and substantial issues: “http://www.wipo.int/amc/en/domains/search/overview/index.html”. It asked, amongst other questions:

Is a domain name consisting of a trademark and a negative term confusingly similar to the complainant's trademark? ("sucks cases")

Majority view: A domain name consisting of a trademark and a negative term is confusingly similar to the complainant’s mark. Confusing similarity has been found because the domain name contains a trademark and a dictionary word; or because the disputed domain name is highly similar to the trademark; or because the domain name may not be recognized as negative; or because the domain name may be viewed by non fluent English language speakers, who may not recognize the negative connotations of the word that is attached to the trademark.

Relevant decisions:

"Wal Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale WIPO Case No. D2000-0662, Transfer

A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen WIPO Case No. D2001-0900, Transfer

Berlitz Investment Corp. v. Stefan Tinculescu WIPO Case No. D2003-0465, Transfer

Wachovia Corporation v. Alton Flanders WIPO Case No. D2003-0596 among others, Transfer

Minority view: A domain name consisting of a trademark and a negative term is not confusingly similar because Internet users are not likely to associate the trademark holder with a domain name consisting of the trademark and a negative term.

Relevant decisions:

Lockheed Martin Corporation v. Dan Parisi WIPO Case No. D2000-1015, Denied

McLane Company, Inc. v. Fred Craig WIPO Case No. D2000-1455, Denied

America Online, Inc. v. Johuathan Investments, Inc., and Aollnews.com WIPO Case No. D2001-0918, Transfer, Denied in Part"

8See Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998), which concluded that the addition of the word “sucks” prevents any reasonably prudent user from confusing a “sucks” website with an authorized website.

9See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna Barbera Prods., Inc. v. Entm’t Commentaries, NAF Case No. 741828; AOL LLC v. Gerberg, NAF Case No. 780200.