WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Domains By Proxy, LLC / Bar Crawl Barcelona
Case No. D2012-1337
1. The Parties
Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Sp. Jawna, Poland.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Bar Crawl Barcelona of Barcelona, Spain.1
2. The Domain Name and Registrar
The disputed domain name <redbullbarcelona.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2012. On June 29, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On July 3, 2012, GoDaddy.com, LLC 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 Complainant on July 4, 2012 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 July 4, 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 Respondent of the Complaint, and the proceedings commenced on July 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 26, 2012.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on August 8, 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 is a company with legal domicile in Austria and is a world-wide producer of energy drinks, in particular of the RED BULL energy drink.
According to an Affidavit submitted by Complainant’s General Counsel, the RED BULL energy drink was first sold in Austria in 1987 and internationally since 1992. Currently, the RED BULL energy drink is sold in 159 countries all over the world and Complainant has sold over 4.6 billion units in 2007 alone.
Furthermore, the RED BULL trademark and trade dress is protected in 205 jurisdictions world-wide. Since the introduction of the RED BULL energy drink onto the market, Complainant has invested substantial efforts to promote its RED BULL trademark on TV, cinema and radio advertisement.
The reputation of the RED BULL product and trademark acquired through sales activities, television broadcast, Internet activities and events sponsored by Complainant is confirmed by the statistics of market research studies conducted in 2003 in Germany and Austria, where 83.7% and 90% of the general public spontaneously associated the RED BULL trademark with the RED BULL energy drink.
Complainant has submitted evidence that it is the registered owner of a number of trademarks relating to the designation “Red Bull”, e.g.:
- word mark RED BULL, International Trademark Registration, Registration Number: 961854, Registration Date: March 19, 2008; Status: Active.
The disputed domain name <redbullbarcelona.com> was registered on May 14, 2012.
Complainant has submitted evidence that on June 29, 2012, the disputed domain name redirected to a website at “www.redbullbarcelona.com” which included Complainant’s RED BULL trademark and logo and promoted third party economic activities, namely clubs, bars and restaurants located in the city of Barcelona, Spain.
The Complaint sent to Respondent by the Center on July 5, 2012 via DHL as well as in electronic format via email turned out to be undeliverable.
Complainant requests the disputed domain name to be cancelled.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s RED BULL trademark because (1) the disputed domain name incorporated Complainant’s famous RED BULL trademark in its entirety, and (2) the distinctive part of the disputed domain name is “red bull” and the additional wording “barcelona” as a common geographical term does not change the overall impression of the designation as being a domain name connected to Complainant and does not reduce the likelihood of confusion
Complainant further suggests that Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or any variations thereof, or to register or use any such domain names, (2) Respondent is not commonly known by the name “Red Bull”, but the combination of those words is purely fanciful so that it can be concluded that Respondent has registered the disputed domain name to create a misleading impression of being in some way associated with the Complainant, and (3) Respondent uses the disputed domain name to resolve to a website advertising clubs, bars and restaurants in Barcelona, Spain, so that there can be no issue of noncommercial or fair use.
Finally, Complainant claims that the disputed domain name was registered and is being used in bad faith since (1) the RED BULL trademark is one of the best known trademarks all over the world and Respondent must have been aware of this fact when it deliberately registered the disputed domain name and (2) Respondent registered and uses the disputed domain name for commercial gain by promoting clubs, bars and restaurants located in Barcelona, Spain. This indicates that Respondent’s obvious intent was to misleadingly divert consumers to its website, causing confusion among consumers by creating the impression of a relation with or sponsorship or endorsement of Respondent by Complainant, thus exploiting the reputation of Complainant’s RED BULL.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that Complainant owns registered trademark rights in the designation RED BULL.
Furthermore, the disputed domain name <redbullbarcelona.com> is confusingly similar to those RED BULL trademarks.
The disputed domain name incorporates the RED BULL trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the geographical term “Barcelona” is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s RED BULL trademark into the disputed domain name.
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently neither has made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found the Respondent made a legitimate, noncommercial or fair use without intent for commercial gain.
Complainant has produced evidence that the disputed domain name redirected on June 29, 2012 to a website at “www.redbullbarcelona.com” displaying Complainant’s RED BULL trademark and logo and promoting various clubs, bars and restaurants in the city of Barcelona. The Panel, therefore, concludes that Respondent – irrespective of the alleged fame and reputation of the RED BULL trademark throughout the world – was aware of Complainant’s RED BULL trademark at the time of the registration of the disputed domain name and that the latter obviously alludes to Complainant’s RED BULL trademark and product. Against this background, the use of the disputed domain name to promote third parties’ commercial activities is certainly neither noncommercial nor fair use of the disputed domain name without intent for commercial gain.
Moreover, such use is also not fulfilling the requirements of a bona fide offering of goods or services, because (1) Respondent obviously has neither been authorized to use complainant’s RED BULL trademark as a domain name or on Respondent’s website or in any other way and (2) Respondent is using the disputed domain name to run a website that does not accurately and prominently disclose Registrant’s relationship with the trademark holder (see WIPO Overview 2.0, paragraph 2.3).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on July 5, 2012.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s trademark RED BULL, to a website in order to promote third parties’ commercial activities without Complainant’s permissions to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to his own website, by creating a likelihood of confusion with Complainant’s RED BULL trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or a product thereon. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy (see also: Red Bull GmbH v. Madummal K Durganand, WIPO Case No. D2007-1613).
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent apparently provided improper WhoIs information for the disputed domain name since the sending of the Complaint to Respondent by the Center on July 5, 2012 both via DHL as well as in electronic format was unsuccessful as neither the postal address nor the email address put down by Respondent in the respective WhoIs record resulted in a reply or acknowledgement. These circumstances throw a light on Respondent’s behavior which at least supports the finding of a registration and use of the disputed domain name in bad faith (see also: Red Bull GmbH v. Web Wax Designer, WIPO Case No. D2006-0746).
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirement of paragraph 4(a) of the Policy.
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 <redbullbarcelona.com> be cancelled.
Stephanie G. Hartung
Dated: August 13, 2012
1 In accordance with Complainant’s Amendment to the Complaint of July 4, 2012, the term “Respondent” as used by the Panel in the case at hand refers exclusively to Bar Crawl Barcelona who was confirmed by the Registrar on July 3, 2012 to be the underlying registrant of the disputed domain name.