Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
Respondent is Steve Redmon of Florida, United States of America (“United States or USA”).
The disputed domain names <redbullcola.cc> and <redbullcola.tv> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2010. On January 8, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On January 8, 2010, 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on January 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 11, 2010.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on February 18, 2010. 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.
The trademarks upon which the Complaint is based are RED BULL and RED BULL COLA. According to the documentary evidence and contentions submitted, the RED BULL trademark is registered in 203 jurisdictions worldwide to cover an extensive range of goods and services, including in the United States (Trademark Registrations Ns. 0883431 dated June 24, 2008, filed on July 6, 2007; 3086964 dated May 2, 2006, filed on December 13, 2001; 3092197 dated May 16, 2006, filed on December 31, 2003). Complainant is also the owner of various trademark registrations containing the words RED BULL COLA, including IR 994918 with the priority date May 23, 2008 (inter alia designating USA) and CTM 006771323 with priority date March 21, 2008.
According to the documentary evidence and contentions submitted, the Complainant is the largest worldwide producer of energy drinks, particularly the Red Bull product first sold in Austria in 1987 and internationally since 1994. Currently, the Red Bull energy drink is sold in 156 countries and much of Complainant's marketing activities is directed to publicity of sport events. In March 2008, Complainant launched the Red Bull Cola energy drink in the United Kingdom, after which the product was launched in other countries of Europe. The first shipment of Red Bull energy drink to USA was made in May 1996, and the first shipment of Red Bull Cola to USA was made in April 2008.
Complainant owns a large number of domain names containing the RED BULL trademark. The Panel notes that the fame of the RED BULL trademark has been confirmed in previous WIPO decisions. See, e.g., Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909; Red Bull GmbH v. Web Wax Designer, WIPO Case No. D2006-0746; Red Bull GmbH v.Tony Marinelli, WIPO Case No. D2001-0522; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035.
The domain names <redbullcola.cc> and <redbullcola.tv> were registered on June 8, 2008 with GoDaddy.com, Inc., and redirect Internet traffic to Respondent's website at “www.tamebull.tea.com”. The Panel conducted an independent survey by accessing the disputed domain names on February 25, 2010 and found out that the website at “www.tamebull.tea.com” displays information on the Tea TameBull UnWind Drink, offered for sale via Internet.
Complainant sent a cease and desist letter to Respondent on September 15, 2008. Complainant states that no response was ever received.
Complainant argues that Respondent's domain names are confusingly similar to the trademarks in which Complainant has rights because they comprise the combined words “redbull” and “cola”, where “redbull” is the distinctive part. Complainant contends that the incorporation of a complainant's mark in full within a disputed domain name may be sufficient to establish confusingly similarity between the mark and the disputed domain name.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain names because (i) Respondent is not licensed or otherwise permitted by Complainant to use the RED BULL trademark; (ii) Respondent is not commonly known by the disputed domain names; and (iii) Respondent is making illegitimate use of the disputed domain names with the intention to misleadingly divert Internet users to his website.
Finally, Complainant contends that Respondent registered and uses the disputed domain names in bad faith because (i) Respondent knew the existence of the RED BULL trademark, and (ii) by registering domain names corresponding to a well-known trademark, Respondent intentionally intends to exploit the reputation of Complainant and to attract Internet users to his own business.
Respondent did not reply to Complainant's contentions.
The consensus view is that a respondent's default does not automatically result in a decision in favor of a complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
Therefore, the Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
The RED BULL trademark is distinctive and the domain names <redbullcola.cc> and <redbullcola.tv> incorporate such mark in its entirety. In this type of combination it is clear that the RED BULL trademark stands out and leads the public to think that the disputed domains are somehow connected to the owner of the registered trademark.
The Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant's registered trademark, this may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282. That is particularly true where the disputed domain name incorporates a well-known trademark, as in the instant case.
The addition of the term “cola” reinforces the similarity and the likelihood of confusion because the mark RED BULL COLA is also a registered trademark of Complainant and has been used in connection with a Red Bul energy drink. The Panel agrees with Complainant's contention that Internet users will think that there is an economic relationship, sponsorship or endorsement of Respondent with Complainant, and that they may be confused by the disputed domain names when seeking for information on the “Red Bull Cola” drink.
Finally, the addition of the suffixes “.cc” and “.tv” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540.
Therefore, the Panel finds that the domain names <redbullcola.cc> and <redbullcola.tv> are clearly confusingly similar to the RED BULL and RED BULL COLA trademarks and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
The Panel finds as reasonable Complainant's contentions that (i) Respondent has not been licensed or authorized by Complainant to register and use the disputed domain names or the RED BULL trademark; and (ii) Respondent is not commonly known by the disputed domain names.
This Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.
In addition, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. In fact, Respondent has clearly the intention to misleadingly divert Internet users to his website. Accordingly, the Panel is convinced by the evidence produced in this case that Respondent has no legitimate interests in the disputed domain names.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
The fact that Respondent has chosen as part of a domain name a well-known trademark is per se a clear indication that registration of the disputed domain names was made in bad faith. The Panel accepts as reasonable, Complainant's contention that Respondent was aware of the RED BULL trademark and intended to free ride on Complainant's goodwill and on RED BULL's reputation for commercial gain.
In fact, a consumer encountering any domain name incorporating the words “Red Bull” would be likely to be confused as to the source, sponsorship, or approval of the content. The mere fact of diverting users in this misleading manner is evidence of bad faith. See The Gap, Inc. v. YongHoon Lee, SofTech, WIPO Case No. D2007-0386.
The association of a domain name to a well-known mark and product and its use by someone with no legitimate interest in respect of the registered domain name constitutes what has been called as “opportunistic bad faith”. See SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Perfumes Christian Dior v. Javier Garcia Quintas and Christian Dior. net, WIPO Case No. D2000-0226; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
The fact that Respondent has added the word “cola”, which happens to also be an energy drink and incorporated as part of a trademark of Complainant, reinforces the conclusion that Respondent, not only registered, but is using the disputed domain name in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 names <redbullcola.cc> and <redbullcola.tv> be cancelled as requested by Complainant.
Manoel J. Pereira dos Santos
Dated: March 1, 2010