WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. Romas Bartkus/ DomainsByProxy.com

Case No. D2012-0465

1. The Parties

The Complainant is Red Bull GmbH of Fuschl am See, Austria represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.

The Respondent is Romas Bartkus / DomainsByProxy.com of Girona, Spain and Scottsdale, Arizona, United States, respectively.

2. The Domain Name and Registrar

The disputed domain name <redbullforex.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2012. On March 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 13, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 14, 2012.

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 the Respondent of the Complaint, and the proceedings commenced on March 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2012.

The Center appointed Marilena Comanescu as the sole panelist in this matter on April 17, 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.

The language of the proceeding is English.

The Identity of the Respondent

Before analyzing the present case on the merits, the Panel should decide on the identity of the proper Respondent.

The Complainant filed initially the Complaint against DomainsByProxy.com of Scottsdale, Arizona, United States, the Registrant as identified in the WhoIs at the time of filing the Complaint with the Center. After the Registrar disclosed the underlying registrant and contact information for the disputed domain name – which differed from the originally named Respondent – according to its standard procedure, the Center invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 14, 2012, requesting that this administrative proceeding be conducted against the individual confirmed by the Registrar as the Registrant of the disputed domain name, Romas Bartkus of Girona, Spain. The Center notified both named Respondents on the present proceeding.

According to paragraph 4.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), in a UDRP case in which a privacy or proxy registration service is named as the respondent in a filed complaint (e.g., because the complainant was not aware of the identity of any underlying registrant) - and the concerned registrar in response to a request from the Center discloses an underlying registrant of the domain name that differs from the privacy or proxy registration service which appeared in the WhoIs at the time of filing of the complaint, ultimately the panel has discretion to determine the identity of the proper respondent.

Similar to the majority of the previous UDRP panels, this Panel shall treat both entities, jointly, as the Respondent.

4. Factual Background

The Complainant is the famous producer of energy drinks and operates its business under the RED BULL trademark since 1987 in Austria and since 1992 internationally. According to the Complainant, the energy drink Red Bull is sold in 157 countries all over the world in significant quantities, over 4.1 billion units in 2010. Also, the Complainant organizes and sponsors various sports, music and other events under or including the RED BULL trademark.

The Complainant owns trademark registrations for RED BULL in 205 jurisdictions worldwide including in the United States since at least 2007. Due to its extensive advertising on television, radio and cinema the RED BULL trademark has become well-known and a market leader in many markets.

The Complainant operates its official main website at “www.redbull.com”.

The disputed domain name was first registered on June 29, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The disputed domain name <redbullforex.com> is confusingly similar to its trademark RED BULL:

The Complainant owns multiple registrations for the RED BULL trademark covering goods and services in all 45 classes, according to the International trademark classification. Although formed of ordinary words, the RED BULL trademark is inherently distinctive for energy drinks and has become famous worldwide.

The distinctive part of the disputed domain name is “redbull” which is identical to the Complainant’s trademark, the ordinary term “forex” does not change the overall impression of the designation as being a disputed domain name connected to the Complainant and does not reduce the likelihood of confusion.

The disputed domain name incorporates the Complainant’s trademark RED BULL in its entirety.

The Respondent has intentionally used the Complainant’s mark in order to obtain commercial gain from the confusion created among the Internet users who may believe there is a connection between the Respondent and the Complainant.

By registering the disputed domain name, the Respondent has prevented the Complainant from exercising its trademark rights and from managing its trademark presence on the Internet.

According to UDRP precedents, the content of the website corresponding to the disputed domain name is irrelevant to prove this first element of the Policy.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

The Complainant has not licensed or otherwise permitted the Respondent to use its RED BULL trademark or variations thereof, or to register or use any domain name incorporating its mark. The Respondent is not related to the Complainant in any way.

The association of words “red” and “bull” is fanciful, therefore nobody would legitimately choose this combination unless seeking to create an association with the Complainant.

The Respondent does not fall under the circumstances listed by paragraph 4(c) of the Policy. Rather, the Respondent is conducting economic activity under the name “InstaForex” and operates under the domain name <instaforex.com> which has delusively similar content as the webpage corresponding to the disputed domain name. Accordingly, the Complainant concludes that the Respondent has intentionally registered the disputed domain name trying to exploit the fame and reputation of its mark. As a conclusion of all the above, the Respondent has registered and is using the disputed domain name illegitimately.

(iii) The disputed domain name was registered and is being used in bad faith:

The trademark RED BULL is one of the best known trademarks all over the world and the Respondent must have been aware of this fact when registering the disputed domain name. The Respondent’s intent was to create a false impression to the Internet users with regard to a potential connection between the Respondent and the Complainant.

Further, the Respondent is using the disputed domain name containing the Complainant’s famous trademark to promote its private business and thus to obtain financial gain. The use of the disputed domain name could mislead the Internet users into believing that the Respondent’s financial business is related to and somehow warranted by the Complainant and thus to also tarnish the RED BULL trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer or cancellation of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent does not have rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.

The Respondent’s failure to respond does not automatically result in a decision in the favor of the Complainant, the latter must establish each of the three elements provided by paragraph 4(a) of the Policy, above listed.

Consequently, the Panel shall further analyze the eventual concurrence of these circumstances in the present case.

A. Identical or Confusingly Similar

There are two requirements that a complainant must establish under this element, namely: that it has rights in a trademark, and, if so, that the disputed domain name is identical or confusingly similar to its mark.

The Complainant has rights in the RED BULL trademark, holding registrations worldwide, including in the European Union since 1996¹ and in the United States since at least 2007 where the Respondent appears to be located.

The Panel considers the dominant part of the disputed domain name <redbullforex.com>, which also constitutes its prefix, incorporates the Complainant’s famous RED BULL trademark in its entirety.

In addition to this, the disputed domain name contains the generic word “forex”, the abbreviation for “foreign exchange”.

Numerous UDRP panels have considered that the addition of generic or descriptive words to trademarks in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the domain name as being connected to the complainant’s trademark (see Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Nike, Inc. v. Farrukh Zia, WIPO Case No. D2000-0167; Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant, WIPO Case No. D2007-0889).

Furthermore, the Complainant’s trademark is well-known worldwide for energy drinks and it is also used and promoted in relation to numerous events in various fields such as sports and music.

Therefore, an Internet user would most probably assume a connection with the Complainant when seeking information on a website operated under the disputed domain name <redbullforex.com>.

It is well established in decisions under the UDRP that the presence or absence of characters (e.g., dots, hyphens) in a domain name and indicators for Top Level Domains (e.g., “.com”, “.info”, “.net”, “.org”) are irrelevant to the consideration of confusing similarity between a trademark and a domain name.

For all the above, the Panel finds that the disputed domain name <redbullforex.com> is confusingly similar to the Complainant’s trademark RED BULL.

Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to its trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its RED BULL trademark. Therefore, in line with the UDRP precedents, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.

Although properly notified by the Center, the Respondent failed to submit any response in the present procedure. Considering other relevant circumstances of a matter, the silence of the Respondent may support a finding that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011.

Albeit the use of privacy services may have legitimate reasons, in such case, together with the rest of the evidence before the Panel, it may be inferred that it was made in order to conceal the Respondent’s true identity in case of a domain name dispute (see also TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542).

Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name.

In fact, at the time of filing the Complaint, the Respondent was using the disputed domain name containing the Complainant’s famous trademark in order to promote its private business named “InstaForex” which has no relationship or association whatsoever with the Complainant or its business.

For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain name.

When assessing the bad faith in the registration requirement, the following should be considered (1) whether the Respondent knew of the Complainant and its trademark, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (see Avon Products, Inc. v. Mary Ultes, WIPO Case No. D2009-0471).

The Complainant’s trademark has been in use since 1992 and is protected in more than 200 jurisdictions worldwide. Due to its extensive advertising and use the Panel finds the RED BULL trademark has become well-known in the markets it penetrates.

The Complainant’s trademark is a fanciful combination of words and has no apparent meaning in other fields, in particular in the financial field where the Respondent is apparently operating.

The disputed domain name <redbullforex.com> was first registered in June 2011. The Respondent’s business seems to be named “InstaForex” and thus it has no connection with the words composing the Complainant’s trademark RED BULL.

From the above, the Panel concludes that indeed the Respondent had knowledge of the Complainant’s trademark and incorporated the same in the disputed domain name in order to create confusion and divert Internet users on its web portal.

Further, the Respondent appears to be using the Complainant’s trademark for a web portal promoting its private business. The fact that the content of the website corresponding to the disputed domain name is not directly related to or makes any reference to the Complainant or its business area may not be relevant in such analysis, the mere incorporation of a famous trademark in a domain name is sufficient to create confusion for the public and to disrupt the business of the Complainant by diverting its potential consumers to websites unrelated to it and to tarnish its trademark. The Respondent is using without permission the Complainant’s famous trademark in order to get traffic on its web portal and to potentially obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation/connection with the Complainant.

Paragraph 4(b) of the Policy sets out a nonexclusive list of circumstances that evidence bad faith registration and use of a domain name.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location” is evidence of registration and use in bad faith.

Given that the disputed domain name completely incorporates the Complainant’s trademark, the RED BULL trademark is well-known worldwide, the Complainant is involved in other various events and promotes its trademark extensively via various media including on the Internet, indeed in this Panel’s view, that the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name <redbullforex.com> who may be confused and believe that it is a website held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.

Furthermore, the Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark and therefore reinforces this approach. See also Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

For all these reasons, the Panel finds that the third element of the Policy is established on the record in these proceedings, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <redbullforex.com> be cancelled.

Marilena Comanescu
Sole Panelist
Dated: April 23, 2012

¹ See Paragraph 4.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) regarding the Panel’s discretion to conduct individual researches.