WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Designer Blinds Online LLC
Case No. D2012-1530
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 Designer Blinds Online LLC of San Jose, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <redbullsolar.com>, <redbullsolar.net> and <redbullsolar.org> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 30, 2012. On July 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 30, 2012, the Registrar 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 the Respondent of the Complaint, and the proceedings commenced on August 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2012. An email communication from the Respondent was received after the notification of the Respondent’s default, on August 28, 2012.
The Center appointed Jon Lang as the sole panelist in this matter on September 20, 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
The Complainant is the largest producer worldwide of energy drinks. It produces the widely-known Red Bull energy drink which is sold in 150 countries. The Complainant or its subsidiaries hold trade mark registrations or applications consisting of or containing its mark RED BULL in Austria and 205 other jurisdictions worldwide, including the USA. These include International Registration No. 956851 for Red Bull and device with a priority date of July 25, 2007 (designated for the USA with US Registration No. 3718691), International Registration No. 961854 for RED BULL with a priority date of March 19, 2008, US Registration No. 3479607 for RED BULL ENERGY DRINK and device with a priority date of October 29, 2007 and US Registration No. 3092197 for RED BULL with a priority date of December 31, 2003.
The Complainant has run its business under the name Red Bull in Austria since 1987 and internationally since 1992. It has promoted the RED BULL mark and the device of two fighting bulls by substantial advertising and sponsors many public sports and other events. Through advertising and sponsorship the Red Bull energy drink and RED BULL marks have become widely known in several countries of the world.
The Complainant also has a large number of domain names containing the RED BULL mark, its main website being at “www.redbull.com”.
The Respondent registered the disputed domain names <redbullsolar.com>, <redbullsolar.net> and <redbullsolar.org> (the “Domain Names”) on November 10, 2010 in connection with its business concerning solar power. The Respondent’s business appears to use the trading name “Red Bull Solar” as well as a red bull logo.
5. Parties’ Contentions
The Domain Names are identical with or confusingly similar to trademarks in which the Complainant has rights
- The Complainant or its subsidiaries hold trademark registrations or applications consisting of or containing the mark RED BULL in Austria and 205 other jurisdictions worldwide, including the USA and has run its business under the Red Bull name for a considerable number of years.
- The Complainant’s RED BULL marks are famous, have a very strong reputation and are widely known all over the world.
- Although “red” and “bull” are ordinary words, they form a distinctive combination.
- The distinctive part of the Domain Names is “redbull”.
- The overall impression is that the Domain Names are connected with the Complainant and thus there is a likelihood of confusion. The inclusion of the term “solar” in the Domain Names does not reduce the likelihood of confusion.
The Respondent has no rights or legitimate interests in respect of the Domain Names
- The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or variations thereof for the purposes of registration of domain names or otherwise.
- The Respondent must, if seeking to rely on the fact that it has been commonly known by the Domain Names, produce evidence in support, a mere assertion being insufficient.
- The Respondent has intentionally registered the Domain Names to create the misleading impression of being in some way associated with the Complainant, the aim being to divert Internet users from their search for the Complainant’s site to its own site.
- The Respondent has no legitimate reason to register domain names containing the Complainant’s RED BULL mark.
The Domain Names were registered and are being used in bad faith
- The Complainant’s RED BULL mark is one of the best known global marks. The Respondent must have been aware that this was the case at the time of registration of the Domain Names.
- The Respondent’s intention must have been to misleadingly divert consumers to its website who were searching for information on the Complainant. By creating an impression of a connection between the Respondent and Complainant, thus attempting to exploit the reputation of the Complainant and its RED BULL marks, the Respondent will have caused confusion among consumers. Apart from causing confusion, this is disruptive to the Complainant’s business.
- The Respondent promotes its business using the fame of the Complainant’s RED BULL mark. Internet users could be mislead into believing that the Respondent’s solar panel business is in some way affiliated with the Complainant, leading to tarnishment of the Complainant’s mark.
The Respondent did not formally reply to the Complainant’s contentions by way of submission of a Response, but did write to the Complainant’s lawyers prior to these proceedings in response to a letter received from them, and also later to the Center once proceedings had begun. In an email in response to the Complainant’s lawyer’s letter, it was said on behalf of the Respondent that “…I have made an investment to establish a business presence as Red Bull Solar.” and that ”If you wish to propose a fair offer for the rights to my company identity, I will provide a timely response.” The Complainant’s lawyers responded to the Respondent’s email. They referred to various matters, including information gleaned from the efforts of the Complainant’s investigators which appeared to suggest that legal advice was taken on behalf of the Respondent as to its use of the Domain Names. In a later email, in response to the Center’s Notification of Respondent Default, it was said on behalf of the Respondent that “Red Bull Solar is an LLC that has discontinued operations. …. Deliver an offer to cover all fees from GoDaddy to dissolve the account and for my time and I will consider it.”
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements.
All three Domain Names resolve to the same website and can be dealt with together.
A. Identical or Confusingly Similar
The Complainant clearly has rights in its RED BULL trademarks.
The Domain Names incorporate the Complainant’s RED BULL mark in its entirety and is very much its dominant element, being a widely-known mark placed first in the Domain Name, followed by the generic term, “solar”. The suffixes “.com”, “.net” and “.org” are to be disregarded for comparison purposes as can the space between ”RED” and “BULL” in the trademark.
However, as the Complainant’s mark and the Domain Names are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
Given that the RED BULL mark is readily recognisable within the Domain Names (and very much its dominant element), the Panel is satisfied that the Domain Names are confusingly similar to the Complainant’s RED BULL trademark.
Even if one were to adopt a possibly more stringent test and require, as some UDRP panels have done, a risk that Internet users may actually believe that there is a real connection between the Domain Names and the Complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The impression created by the Domain Names may well give rise to the possibility that Internet users may think that the owner of the Domain Names is in fact the owner of the Complainant’s mark to which it is similar, or that there is some form of association between the Respondent and the Complainant.
It should be noted that the addition of the word “solar” after “redbull”, far from distinguishing the Domain Names from the Complainant’s mark and reducing the likelihood of confusion, may in fact serve to increase the likelihood of confusion - one might associate the word “solar” with energy (being a source thereof) and it is the Complainant’s energy drinks with which the RED BULL mark is associated.
The Panel holds that the Domain Names are confusingly similar for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names and, as such, as previous UDRP panels have held, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so by way of a Response and the Panel is generally entitled to find, given the prima facie case made out by the Complainant, that the Respondent lacks rights or legitimate interests in the Domain Names.
However, the Respondent has raised a matter, albeit in an email to the Complainant’s lawyers, that could, in certain circumstances, give rise to an answer to the Complaint. In the e-mail it was said that “I have made an investment to establish a business presence as Red Bull Solar”. In the circumstances, as part of the multi-factorial assessment carried out by the Panel, it is perhaps appropriate to explain why the Panel has decided in the way that it has given that a respondent might under certain circumstances be able to show it has rights to or legitimate interests in a domain name by demonstrating that it has been commonly known by that domain name.
Generally, a respondent can show that it has rights or legitimate interests in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. The Respondent has itself made reference to a “business presence as Red Bull Solar” and in these circumstances, it would be difficult to accept that there is a noncommercial use. Moreover, the Domain Names are confusingly similar and so it would be difficult to maintain there is not a risk of a misleading diversion of consumers or, for that matter, a risk of tarnishmnet of the RED BULL mark. As to a bona fide offering of goods or services, while the Panel does not of course extend its finding to any broader issue as to the validity or status of the Respondent’s chosen name for its business activity vis-à-vis the Complainant’s trademark, for the purposes of the Policy, it would be difficult to maintain that there is anything bona fide about offerings on a website linked to Domain Names which, in the Panel’s view, so obviously take advantage of the fame of the trademark to which they are confusingly similar. (See Skype Limited v. Mobitronix LLC, WIPO Case No. DAE2011-0001, where the panel held that, on balance, the respondent had no rights or legitimate interests in the domain name <skype.ae> as “it is more likely than not that the Respondent, which had already intended to use “Sky Private Executive” for more than three years without registering a corresponding domain name, heard of Ebay’s acquisition of the Complainant in 2005 and then started using “SKYPE” as an acronym for “Sky Private Executive” and registered the disputed domain name”, and thereafter registered SKYPE as a trademark.)
Additionally, it does appear that Respondent has used the name “Red Bull Solar” i.e. the precise words used in the Domain Names, as a trading name. For example, on its website it is said “Red Bull Solar makes it very easy to determine if you need solar”. Paragraph 4(c)(ii) of the Policy provides that rights to or legitimate interests in a domain name can be established, if it is found by the panel to be proved that “you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;”.
It cannot be the case of course, that use of a domain name as a business name will always establish rights or legitimate interests in that domain name for if that were the case, respondents could always avoid the consequences of their otherwise wrongful actions by doing something the Policy was designed to prohibit, namely taking unfair advantage of another’s mark to build a business. As the panel stated in Drexel University v. David Brouda, WIPO Case No. D2001-0067, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. That seems to be the case here. There is no obvious connection between solar energy and the words ‘red bull’ and there appears to be little reason for the Respondent to choose this combination of ordinary dictionary words other than to unfairly capitalise on or otherwise take advantage of the Complainant’s mark. The Panel notes in this regard that the Complainant asserted to the Respondent in its communications prior to the filing of the Complaint (as provided as an annex to the Complaint), and in the Complaint itself, that the Respondent purposefully chose the Domain Names to create the misleading impression of being in some way associated with the Complainant, an assertion which the Respondent has chosen not to address.
The fact that the Respondent may have taken legal advice on the issue (as suggested by the Complainant’s lawyers) provides no answer. If anything, it might reinforce the fact that the Respondent had the Complainant in mind when choosing the Domain Names.
The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests have not been contradicted or challenged, or cast into doubt by the brief analysis set out above and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent must have been aware of the Complainant’s RED BULL mark at the time of registration of the Domain Names. In the Panel’s view, and as discussed above, there is no obvious connection between solar energy and the combination of the words “red” and “bull”. It would appear therefore that there is no legitimate explanation for the Respondent’s choice of Domain Names and in these circumstances, it seems clear to the Panel that the reason for the Respondent’s choice was to unfairly capitalise on or otherwise take advantage of the Complainant’s mark.
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. It matters not that once Internet users arrive at the Respondent’s website it is immediately clear that it is unconnected with the trademark owner. The Internet user will have been confused, at least initially, as to the relationship between the website and trademark owner and that is enough to establish bad faith. In any event, it is possible, even once landing at the Respondent’s site, that some form of association might be assumed for the reasons given earlier. In the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Names in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <redbullsolar.com>, <redbullsolar.net> and <redbullsolar.org> be cancelled.
Dated: October 4, 2012