WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Mario Maranda
Case No. D2008-0941
1. The Parties
The Complainant is Red Bull GmbH, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Sp. Jawna, Poland.
The Respondent is Mario Maranda, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <redbullcorporation.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 20, 2008. On June 20, 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 20, 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. 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 June 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on July 24, 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 available factual information below is summarised from the assertions of the Complainant.
The Complainant produces energy drinks, particularly the RED BULL energy drink brand, 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 company participates in the sponsorship of major sporting activities.
The trademark RED BULL is registered or applied for in Austria and 202 other jurisdictions worldwide. The Complainant holds various Community Trademark registrations or applications dated between 1993 and 2006.
The Complainant operates its own 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 appears to have been registered on October 11, 2007.
5. Parties’ Contentions
The Complainant’s submissions include the following. Many of the key points are supported by an original 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 energy drink brand.
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 teams, the FC Red Bull Salzburg and Red Bull New York soccer teams, Red Bull Flugtag in which would-be fliers fall into 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 international examples of TV commercials featuring the Complainant’s name and the product. A CD submitted showed a video of the extensive website “www.redbull.com”.
Advertising coverage of all kinds has been extensively analysed and surveyed for criteria such as demographics and exposure of the RED BULL name and logo, figures for which are submitted in evidence. The Complainant contends that its name is thus famous, and cites in support previous WIPO UDRP decisions in which it has been involved.
The name RED BULL is trademarked or applied for in Austria, the United States of America, Canada, Germany, the United Kingdom of Great Britain and Northern Ireland, the Russian Federation, Australia, Brazil, South Africa, Hong Kong SAR of China, China, Taiwan Province of China, 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 contends that the disputed domain name <redbullcorporation.com> is confusingly similar to the trademark RED BULL. Notwithstanding the generic nature of the words “red” and “bull” their use in combination is distinctive. The additional components “corporation” and “.com” in the domain name do not reduce the likelihood of confusion, and the absence of spacing is of no consequence.
The trademark RED BULL is fanciful and distinctive, there being no such thing as a red bull.
The Complainant contends that it has not in any way authorised the Respondent to use its trademark. Furthermore it is asserted that the Respondent is not commonly known by the disputed domain name and is using it illegitimately.
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 attract by confusion Internet users looking for the Complainant’s website.
The Respondent is a former employee of Red Bull Canada’s distributor in Quebec. The website under the disputed domain name was initially illegitimately registered by the Respondent as a website of “TANTRUM - Quebec’s Authorised Distributor of Red Bull Energy Drink”.
The Complainant sent to the Respondent a cease and desist letter on April 23, 2008, to which there has been no reply.
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. It is also contended, with proposed precedent citations, that the content of the Respondent’s website is not relevant to the decision since the deception occurs when Internet users are confused by the domain name before reaching the website.
The remedy requested by the Complainant is the transfer to it of the domain name.
The Respondent did not 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 of Procedure, 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 <redbullcorporation.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 “corporation”, the lack of punctuation spaces being of no consequence since the 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 “corporation” is merely descriptive and is found not to detract from confusing similarity, and in any case has a broadly similar meaning to the authentic “GmbH” (a private limited liability company). 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. It is for the Respondent to refute the Complainant’s prima facie case as provided for in paragraph 4(c) of the Policy. 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.”
In overview the Respondent, having registered the disputed domain name, initially placed it on the Internet as a website with the Complainant’s logo, name and style prominently displayed, together with that of the authorised RED BULL distributor Tantrum, with token content. A screenshot of the website submitted in evidence was made on March 19, 2008. It is clear to the Panel that the Respondent was using the domain name to attract Internet users in a way that would have confused at least some into thinking mistakenly that the website may be owned or endorsed by the Complainant.
One typical pattern in such cases is that a respondent intends to derive revenue by attracting purchasers of goods or services directly, or by collecting pay-per-click revenue from links to advertisers, either activity constituting commercial use, which may lead to a finding of bad faith in the terms of 4(b)(iv) of the Policy. Another typical pattern is for it to be made known that a disputed domain name is for sale at a price in excess of registration costs, constituting bad faith in the terms of paragraph 4(b)(i) of the Policy.
The present Respondent’s motives are not entirely clear but it is not necessary for them to be established since the provisions of paragraphs 4(b)(i) - (iv) of the Policy are illustrative only and bad faith may be found otherwise. The Respondent has registered a world-famous trademark and has not pleaded any tenuous possible legitimacy, such as agency, for its intended use. On the uncontested evidence, the Respondent was formerly an employee of the Complainant’s distributor in Quebec, Canada. The Panel concludes that the Respondent must therefore have known of the Complainant’s name, trademark and business, and that it is not reasonably credible that the Respondent’s purpose was non-commercial or in good faith.
Appropriation of a well known trademark of which a respondent must have been aware, for the purposes of a domain name and website without authorisation, is commonly a sufficient 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 Panel finds bad faith registration and use proven within the meaning of paragraph 4(a)(iii) of the Policy.
The failure of the Respondent to reply to the Complainant’s cease and desist letter of April 23, 2008 is found to be compounding evidence of bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000 1632).
The Respondent’s apparent later use of the disputed domain name to display a website operated by or on behalf of the Complainant is found to represent continued unauthorised use of the Complainant’s trademark and does not detract from any of the adverse findings against the Respondent.
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 <redbullcorporation.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: August 7, 2008