WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Prolym
Case No. D2008-0889
1. The Parties
The Complainant is Red Bull GmbH, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Sp. Jawna, Poland.
The Respondent is Prolym, United States of America.
2. The Domain Name and Registrar
The disputed domain name <redbullvitamin.com> is registered with GoDaddy.com, Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2008. On June 12, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On June 12, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 1, 2008. The Center verified that the Complaint together with the amendment to 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 July 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 29, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 5, 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
The factual information below is summarised from the assertions of the Complainant.
The Complainant produces energy drinks, particularly the RED BULL brand energy drink, which was first sold in Austria in 1987 and has been sold internationally since 1994. Currently the product is sold in 145 countries, with sales on a scale of over 3.5 billion units in 2007.
The product is heavily advertised and the Complainant participates in the sponsorship of major sporting activities.
The trademark RED BULL is registered or applied for in 203 jurisdictions worldwide, including Austria. The Complainant holds various Community Trademark registrations or applications dated between 1993 and 2006.
The Complainant owns a large number of domain names incorporating the trademark RED BULL and operates its main website at “www.redbull.com”.
No factual information is available about the Respondent except for the details provided with its registration of the disputed domain name. The domain name was registered on February 20, 2008.
5. Parties' Contentions
The Complainant's submissions include the following. Key points are supported by documentary evidence or by a signed Affidavit solemnly declared by the General Counsel of the Complainant.
The Complainant is the largest worldwide producer of energy drinks, including the RED BULL brand energy drink.
The Complainant's products are heavily advertised globally. The Complainant sponsors various sports-related activities and teams including Formula One motor racing, football, motocross, flying and aircraft racing. Examples of the Complainant's high profile sponsorship include the RED BULL RACING and other Formula One racing teams, the FC RED BULL SALZBURG and RED BULL NEW YORK soccer teams, RED BULL FLUGTAG in which would-be fliers land in water under the slogan “Gives You Wings”, and the RED BULL AIR RACE WORLD SERIES. The Complainant also provides sponsorship in the field of music, including the RED BULL MUSIC ACADEMY events in cities world-wide.
A DVD submitted in evidence by the Complainant showed examples of TV commercials made for various countries and featuring the Complainant's name and the product. A CD showed a video about the extensive website “www.redbull.com”.
Extensive market analysis has been conducted to survey the coverage and efficacy of the Complainant's advertising campaigns. Thus the Complainant contends that its name is famous, and cites in support of this contention previous WIPO domain name decisions in which it has been involved.
Red Bull Energy Vitamin Supplement was a product sold through the website corresponding to the disputed domain name <redbullvitamin.com>, registered to the Respondent. The Complainant says that this operation used the Complainant's trademark without authorisation and that the selling of the product through the website stopped after a cease and desist letter was sent. The Complainant's request that the domain name be cancelled was not actioned by the Respondent, letters since have not been answered by the Respondent, and the domain name is currently for sale.
The Complainant contends that the disputed domain name <redbullvitamin.com> is confusingly similar to the trademark RED BULL in which it has rights. Notwithstanding the generic nature of the words “red” and “bull” their use in combination is distinctive. The additional components “vitamin” and “.com” in the domain name do not reduce the likelihood of confusion, and the absence of spacing is of no consequence.
The name RED BULL is trademarked or applied for in Austria, the United States of America, Canada, Germany, the United Kingdom, the Russian Federation, Australia, Brazil, South Africa, Hong Kong, China, Taiwan, Japan, Saudi Arabia and other places, extending to a total of 203 jurisdictions. In addition, the Complainant holds various registered Community Trademark registrations or applications. The RED BULL trademarks cover 45 classes. The following examples of trademark registrations are annexed in documentary evidence:
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.
The Complainant further contends that it has not in any way permitted or authorised the Respondent to use its trademark. The Respondent is not commonly known by the disputed domain name and is using it illegitimately. It cannot qualify to have rights or legitimate interests in the domain name in any of the terms of paragraph 4(c) of the Policy.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith.
The Complainant says that since RED BULL is one of the best known trademarks in the world, the Respondent must have registered the disputed domain in this knowledge and with the intent to exploit and trade upon the Complainant's trademark. The design of the Respondent's corresponding website is such as to mislead Internet users into associating the Respondent's products with the name and goodwill of the Complainant and to imply erroneously the Complainant's endorsement of the Respondent's products. It is contended that this activity represents a disruption of the Complainant's business.
The Complainant contends, citing proposed precedent, that the registration of a well-known trademark by a Respondent having no valid reason amounts in itself to bad faith.
The Complainant contends that the current status of the disputed domain name, being parked and for sale, constitutes passive holding in the pattern of the widely followed previous case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The trademark RED BULL is fanciful and distinctive, there being no such thing as a red bull.
The remedy requested by the Complainant is the transfer to it of the domain name.
The Respondent made no reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable provider, in compliance with the Rules, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has produced adequate evidence of its rights in the trademark RED BULL at the relevant time. The disputed domain name is <redbullvitamin.com>. The gTLD suffix “.com” or its equivalent is an integral part of a domain name and does not enter into the consideration of confusing similarity. The remainder of the domain name, whilst contiguous, is easily read as the words “red”, “bull” and “vitamin”, the lack of punctuation spaces being of no consequence since the domain naming system does not allow them. The generic words “red” and “bull” in combination are readily discerned as RED BULL, being the strong, distinctive and fanciful trademark of the Complainant. The extra word “vitamin” does little to detract from confusing similarity and indeed may in the minds of some people enhance it, because of the health connotations of some of the Complainant's products. The Panel finds confusing similarity between the disputed domain name and the Complainant's trademark under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant states a prima facie case to the effect that it has not authorised the Respondent to use its trademark, and that as far as may be ascertained the Respondent is not commonly known by the disputed domain name and has not made any legitimate use of the domain name. As numerous previous panels have found, once established it is for the Respondent to refute the Complainant's prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not replied. The Panel finds that the Respondent has no rights or legitimate interests in the domain name and finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, 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 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.”
As noted, the disputed domain name was registered quite recently, in early 2008, and the Complainant's trademark has been in use internationally since 1994. The first use to which the disputed domain name appears to have been put by the Respondent was for the direct selling of the Respondent's product. The name of the Respondent's product, “Red Bull Energy Vitamin Supplement”, as reflected essentially in the disputed domain name, carries the strong implication that it is another health product from the stable of the strong brand name owned by the Complainant. The Respondent has submitted no explanation of its activities or its reason for choosing the disputed domain name. In the circumstances, there can be no plausible explanation for the Respondent's choice of this particular domain name other than an intent to trade commercially on the name and goodwill of the Complainant and to attract Internet users to the Respondent's website by confusing them into thinking the products available there were endorsed by the Complainant. The Panel finds bad faith registration and use of the disputed domain name in the terms of paragraph 4(b)(iv) of the Policy. The Complainant also claims that the diversion of its business constitutes disruption in the terms of paragraph 4(b)(iii) of the Policy, and the Panel accepts in this case that this is so.
The name RED BULL alone, fanciful though it is, may not be quite so exclusive as the Complainant would wish, for example it is the sort of name one may readily envisage being used by British pubs, but there can be little realistic prospect of anyone using the combination of words in <redbullvitamin.com> without infringing the Complainant's trademark. Therefore, since the Respondent's primary purpose in holding the domain name now appears to be to sell it, on the facts the Panel finds bad faith proven in the terms of paragraph 4(b)(i) of the Policy.
Appropriation of a well known trademark of which a respondent must have been aware, for the purposes of a domain name or website without authorisation, has been held to be a basis for a finding of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849; Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085). The Respondent's association of the Complainant's well known trademark with a health product only further confirms the necessary awareness in the Panel's view, and bad faith registration and use is found to be proven generally in accordance with paragraph 4(a)(iii) of the Policy.
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 <redbullvitamin.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: August 19, 2008