WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Domain Admin, PrivacyProtect.org / technokraft.net, Ijaz Ahmad
Case No. D2011-2192
1. The Parties
Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy, Spólka Komandytowa, Poland.
Respondents are Domain Admin, PrivacyProtect.org of Queensland, Australia and technokraft.net, Ijaz Ahmad of Peshawar, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <redbulltcpharma.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2011. On December 13, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On December 14, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 21, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 21, 2011.
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” 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 Respondents of the Complaint, and the proceedings commenced on December 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2012. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on January 13, 2012.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on January 23, 2012. 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
Complainant and its associated companies have registered trademarks in many countries, including for example RED BULL, Community Trademark Registration No. 005225611 (figurative) in classes 1 through 45, registered July 21, 2009, and International Trademark Registration No. 961854 in classes 25, 28, 32, 41 and 43, registered March 19, 2008.
The disputed domain name was registered July 21, 2010 and currently routes to a webpage with the headline “Account Suspended.”1 According to exhibits appended to the Complaint, the webpage to which the disputed domain name routed has in the past displayed Complainant’s figurative mark described above. The exhibits also show that the webpage displayed the image of a can of Krating Daeng, Complainant’s Asian version of its leading energy drink product, along with contact information for Complainant’s Thai joint venture partner, T.C. Pharmaceutical Industries Co., Ltd.
5. Parties’ Contentions
Complainant avers that the RED BULL Energy Drink product was developed from an Asian formula for energy drinks and that Complainant agreed in 1982 with Pharmaceutical Industries Co. Ltd. (TC) to assume responsibility for marketing and distributing of the product worldwide, with the exception of a few Far East countries. Complainant avers that more than 4.1 billion units of its products were sold in 2010 in 157 countries. Complaint avers that in 2010, it spent over 338 million Euros on radio, television and cinema promotion worldwide, and just under 1.5 billion Euros on marketing overall.
Among Complainant’s promotional efforts are sponsorship of several sports teams (including major football (soccer) clubs FC Red Bull Salzburg and Red Bull New York), sports and media events, and international motor and air races with live audiences numbering in the tens of thousands. Complainant also describes involvement under the RED BULL trademark in enterprises including television broadcasting and webcasting, along with the launch of a mobile telecommunications company and associated media companies.
Complainant avers that its RED BULL websites at “www.redbull.com” received over 85 million page views in 2010. Complainant alleges that its RED BULL marks are legally protected in 205 countries and that Complainant’s RED BULL trademark is well known worldwide.
In its legal allegations under the Policy, Complainant first contends that the disputed domain name is confusingly similar to its RED BULL trademark since the disputed domain name fully incorporates the trademark, along with a short reference to the name of its joint venture partner, T.C. Pharmaceutical Industries Co., Ltd. (TC).
Second, Complainant contends that Respondent has no rights or legitimate interests in use of the disputed domain name and that Respondent is deliberately attempting to divert Internet users away from Complainant’s websites and to Respondent’s website for commercial gain.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith. Complainant alleges that the disputed domain name was registered in bad faith because Complainant’s mark was widely known and clearly associated with Complainant and its products at the time of Respondent’s registration.
Complainant also avers that in October 2011, it sent three cease and desist letters. First, Complainant’s legal advisor sent a letter to Respondent PrivacyProtect.org in Australia (the registrant address listed at the time in the WhoIs record). Complainant avers that no response was received. Complainant contends that this is an indication of bad faith use.
Complainant also avers that it sent email and postal cease and desist letters to its joint venture partner, TC Pharmaceutical Industries Co., Ltd., because the company was prominently listed in contact information appearing on the website to which the disputed domain name routed. A copy of the letter is allegedly annexed to the Complaint. In response to the letters, T.C. Pharmaceutical Industries Co., Ltd. apparently denied having registered the disputed domain name. T.C. Pharmaceutical Industries Co., Ltd. has supplied a sworn declaration representing that it has no affiliation, endorsement, sponsorship or economic connection to the registrant.
Complainant alleges that Respondent’s “impersonation” of Complainant’s joint venture partner (by displaying on the website Complainant’s partner’s contact details) -- and its use of the confusingly similar disputed domain name -- are part of a deliberate effort by Respondent to attract Internet users away from Complainant’s websites, in bad faith.
On the basis of the above allegations, Complainant seeks cancellation of the disputed domain name.2
Respondents did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Procedural Matters
(i) Notification of Proceedings to Respondents
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent to Respondents by courier notification of these proceedings. The Center used the addresses listed identified by the Registrar in its verification, but the courier company was unable to deliver to the addresses indicated. The Center also notified Respondents by using all available email addresses.
The Panel is satisfied that by sending communications to the contacts made available through the Registrar, and those provided by the registrant to the Registrar, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondents.
(ii) Proper Respondents
The Panel notes that the contact information provided for Respondent technokraft.net, Ijaz Ahmad is possibly fictitious. Consequently, and is routinely practiced in UDRP proceedings, the Panel considers it appropriate to retain as Respondents in this proceeding both the individual Respondent technokraft.net, Ijaz Ahmad and the proxy registration service Domain Admin, PrivacyProtect.org. E.g. TDS Telecommunications Corporation v. Registrant  Nevis Domains and Registrant  Moniker Privacy Services, WIPO Case No. D2006-1620. All further references in this Decision to the intention or conduct of Respondent, however, signify the individual Respondent technokraft.net, Ijaz Ahmad.3
(iii) Length of Complaint
The Complaint slightly exceeds the 5,000 word limit imposed by the Rules and Supplemental Rules paragraph 10(a), however the portions of the Complaint outlining the facts and grounds for relief are shorter than 5,000 words. See Talal Abu-Ghazaleh International, Talal Abu Ghazaleh & Co., Abu Gazaleh Intellectual Property and Aldar Audit Bureau v. Fadi Mahassel, WIPO Case No. D2001-0907 (suggesting that “[t]he word limit referred to in the WIPO Supplemental Rules, Paragraph 10a), is only applicable to the description of grounds on which the Complaint is made”). Absent any reply or objection by Respondents and in the interests of efficiency, the Panel renders this decision on the basis of the Complaint as submitted, without requesting further amendments.
B. Substance of the Complaint and Applicable Standards
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).
Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondents do not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to trademarks of Complainant, as elaborated below.
UDRP panels disregard the domain name suffix in evaluating identity or confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Removing the suffix, the disputed domain name wholly incorporates the RED BULL trademark and adds a portion of the name of Complainant’s joint venture partner in Thailand (T.C. Pharmaceutical Industries Co., Ltd.). The Panel concludes that the addition of the term “tcpharma” does not negate the confusion created by Respondent’s complete inclusion of the RED BULL mark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
In fact, since Complainant’s marks are associated with a product developed and marketed together with T.C. Pharmaceutical Industries Co., Ltd., the Panel finds that the addition of the term “tcpharma” to Complainant’s mark simply increases the confusion that Internet users would experience. Cf. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).
The Panel finds, therefore, that the disputed domain name is confusingly similar to Complainant’s marks and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
The Panel also agrees with Complainant that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) the use of the “domain name in connection with a bona fide offering of goods and services”; (2) an entity being commonly known by the domain name; or (3) the making of “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers [ . . .].” Policy, paragraphs 4(c)(i)–(iii).
Complainant must show a prima facie case proving that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant avers that: (1) Respondent is not commonly known by the disputed domain name; (2) Respondent has no trademark registration to use the RED BULL marks; and (3) that Respondent has no authorization from Complainant to use the RED BULL marks. In the absence of a response, the Panel accepts these undisputed facts as true.
Complainant also alleges that Respondent makes no legitimate use, but that “Respondent is making illegitimate use of the [disputed] domain name with intent to misleadingly divert Internet users to his website.”
The Panel agrees. On the basis of the record before it, the Panel also finds that Respondent is not actively offering any goods or services, or making use of the site for any sort of other information or commentary that might support a finding of bona fide or fair use. Therefore the Panel rules that Respondent is not making a legitimate noncommercial, bona fide, or fair use of the disputed domain name.
Complainant has established a prima facie case. Refraining from submitting a response, Respondents have brought to the Panel’s attention no circumstances from which the Panel could infer that Respondents have rights or legitimate interests in use of the disputed domain name.
Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established.
C. Registered and Used in Bad Faith
The Panel also concludes that Respondent has registered and is using the disputed domain names in bad faith, as explained below.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
These circumstances are not exhaustive, however. UDRP panels may draw inferences about bad faith registration and use in light of the circumstances, such as whether the trademarks in question are well-known, whether there is no response to the complaint, whether a respondent is making active use of the disputed domain name, a respondent’s concealment of identity, and whether there is no conceivable legitimate use for the disputed domain name. E.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel does not hesitate to find that Respondent knew of Complainant’s RED BULL mark when Respondent registered the disputed domain name, since the trademark had been in existence and widely used before registration of the disputed domain name. In the words of another panel, “[i]t seems [highly] unlikely . . . that Respondent would have chosen this name randomly.” Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236. The Panel finds, therefore that the disputed domain name was registered in bad faith. See, e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (disputed domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
It remains for the Panel to determine whether Respondent, in addition to registering in bad faith, is also using the disputed domain name in bad faith.4 Despite the fact that the record contains little evidence relating to the four illustrative circumstances in paragraph 4(b) of the Policy, the Panel nevertheless concludes that Respondent is also using the disputed domain name in bad faith, as elaborated below.
In many decisions involving inactive websites, UDRP panels have adhered to the approach outlined in Telstra Corporation Limited v. Nuclear Marshmallows, supra. Telstra set forth circumstances of inaction (or “passive holding”) beyond those identified in Policy paragraph 4(b) that supported a finding of use of a domain name in bad faith. Following the approach of Telstra in this case, the Panel finds that several circumstances indicate bad faith use.
The website to which the disputed domain name routes is inactive at present. According to annexes to the Complaint, evidence which the Panel find to be credible, the website before its “suspension” displayed Complainant’s figurative trademark and prominently displayed contact details of Complainant’s joint venture partner. The Complaint alleges that the use of Complainant’s trademarks and the display of contact information for its joint venture partner were unauthorized.
The Panel accepts that Complainant’s partner did not register or authorize the registration of the disputed domain name, as stated in the declaration signed by two authorized Directors of Complainant’s partner. In the absence of a response by Respondents, the Panel accepts as true the allegations of the Complaint that the use of the figurative trademark and partner contact details were unauthorized and agrees that these circumstances evidence bad faith. With the addition of the term “tcpharma” to Complainant’s RED BULL trademark, the Panel also finds that there is no conceivable good faith use for the disputed domain name <redbulltcpharma.com> by Respondent.
Circumstances evidencing bad faith also include Respondents’ failure to respond both to the Complaint and to Complainant’s cease and desist letters, sent to the registrant’s address listed in the WhoIs record, see, e.g., Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632.5
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the requirements of the third element of paragraph 4(a) of the Policy are fulfilled.6
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <redbulltcpharma.com> be cancelled.
Jeffrey D. Steinhardt
Dated: January 26, 2012
1 The only content on the webpage apart from this heading is the statement “This Account Has Been Suspended.” The Panel has undertaken limited factual research by viewing the website to which the disputed domain name resolves. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.
2 The Complaint indicates that the decision to apply for the uncommon remedy of cancellation under paragraph 4(i) of the Policy, rather than transfer, was well considered.
3 References to “Respondent” in the singular also mean Respondent technokraft.net, Ijaz Ahmad.
4 Both the elements of bad faith registration and bad faith use must be established. E.g., E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615. Telstra Corporation Limited v. Nuclear Marshmallows, supra.
5 It is possible that Respondents never received the letters or notification of these proceedings. If so, it was due to Respondents’ failure to maintain accurate contact information, as required in the registration agreement. That failure by Respondents would constitute further evidence of bad faith. E.g., Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393 (citing The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340).
6 Since the website to which the disputed domain name routes has no active content, it is not clear how Respondent might be benefiting commercially from it, as alleged in the Complaint. In any case, it is unnecessary for the Panel to rule on this allegation in reaching its decision.