WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Kevin Franke
Case No. D2012-1531
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 Kevin Franke of Bozeman, Montana, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <redbullblood.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 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 name. 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 for the disputed domain name.
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 Response was filed with the Center on August 24, 2012.
The Center appointed Adam Taylor as the sole panelist in this matter on September 14, 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 Panel notes that the Response does not conform to the requirements of paragraph 5(b) of the Rules.
Amongst other requirements, it omits the certification required by paragraph 5(b)(viii) of the Rules, that the information contained in the Response is to the best of the Respondent's knowledge complete and accurate, that the Response is not being presented for any improper purpose, and that the assertions in the Response are warranted under the Rules and applicable law.
Paragraph 10(d) of the Rules provides that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
Some UDRP panels have held that where a deficient response clarifies an issue fundamental to a dispute, and its admission will not prejudice either party or substantially delay the proceeding, it may be appropriate to take the contents of the response into account. See, e.g., NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984.
In this case, the deficient Response does indeed clarify a fundamental issue in that it is the only document which sets out the Respondent’s explanation of its purpose in registering the disputed domain name. The Panel sees no reason as to why its admission would prejudice either party, and the Complainant has not contended otherwise. When considering the veracity of the Respondent’s assertions, the Panel can take account of the lack of a certification of truth. Admission of the Response will not cause substantial delay to the proceeding as it was filed on time.
Accordingly, the Panel had decided to admit the Response.
The Complainant filed a Supplemental Filing on September 3, 2012. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides the following consensus view on the topic of Supplemental Filings:
“… Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.”
Having reviewed the Complainant’s Supplemental Filing, the Panel determined that this should be admitted on the basis that it sought to address new matters raised by the Response which could not reasonably have been in the Complainant’s contemplation when it filed the Complaint. The Panel resolved to allow the Respondent an opportunity to comment upon the Supplemental Filing in accordance with the above consensus view and therefore issued Procedural Order No. 1 on September 20, 2012 allowing the Respondent to submit, in its discretion, a response strictly relating to matters arising from the Complainant’s Supplemental Filing by September 27, 2012 and extending the due date for the Decision to October 5, 2012.
The Respondent did not file a response to the Supplemental Filing.
4. Factual Background
The Complainant is a major worldwide producer of energy drinks including “Red Bull”, sold in Austria since 1987 and internationally since 1992. The “Red Bull” drink is now sold in 159 countries with over 4.6 billion units sold in 2011.
The Complainant engages in substantial advertising and sponsorship of sporting activities including a motor racing team “Red Bull Racing”, a New York soccer team “Red Bull New York” and the “Red Bull X-Fighters” motorcross event which has taken place in different countries including the United States and which is televised in 60 countries.
The Complainant’s main website is at “www.redbull.com”. It received approximately 270 million page views in 2009. The Complainant has over 28.9 million Facebook fans.
The Complainant owns an international portfolio of registered trade marks for the term RED BULL including United States Trade Mark No. 3092197 for RED BULL filed December 31, 2003, in international class 32.
The disputed domain name was registered on May 11, 2010.
As of an unspecified date, the Respondent used the disputed domain name for a website consisting of a logo “TIMS”, the slogan “All things Subaru since 1991”, a telephone number and a link to “www.timsofbozeman.com”. According to the Complainant, “the content of that website is the same as on the disputed domain name”.
As of October 5, 2012, the website at the disputed domain name comprised the following notice: “Future review site of the finest Southwest Montana Steaks served up ultra rare!”
5. Parties’ Contentions
Identical or Confusingly Similar
As various WIPO panels have concluded, the Complainant’s trade mark RED BULL is famous with a strong reputation worldwide including in the United States.
The disputed domain name incorporates the Complainant’s mark in its entirety. It is well established that incorporation of a trade mark within a disputed domain name in full may be sufficient to establish confusing similarity.
The distinctive part of the disputed domain name is “redbull”. The additional word “blood” is a common term and does not change the overall impression of a domain name connected with the Complainant and does not reduce the likelihood of confusion.
Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trade marks.
The Respondent is not commonly known by the disputed domain name. Given the fame and reputation of the Complainant’s mark, it is beyond doubt that the Respondent deliberately created a slight variation of the Complainant’s trade mark by adding the word “blood”. The possible aim was to attract to the Respondent’s website Internet users seeking information about the Complainant. The Respondent had no legitimate reason to register the Complainant’s trade mark as a domain name.
None of the other circumstances in paragraph 4(c) of the Policy apply.
Registered and Used in Bad Faith
The combination of words “red” and “bull” is purely fanciful. Nobody would legitimately choose this combination unless seeking to create an association with the Complainant.
The Respondent must have been aware of the fame of the Complainant’s trade mark when it registered the disputed domain name comprising the trade mark plus the word “blood”. The Complainant’s mark is so well-known and so obviously connected with the Complainant that by definition the registration was made in opportunistic bad faith and any use would create a likelihood of confusion with the Complainant’s mark.
The disputed domain name was registered in good faith.
The Respondent has “made no expressed or implied resemblance” to the Complainant. He purchased the disputed domain name because he enjoys red Angus steak and thought that he might one day review steak houses and their cuisine in Bozeman, Montana, where there is above-average consumption of steak.
The Complaint was not timely as the disputed domain name was registered on May 20, 2010, whereas the Complainant did not file this Complaint until July 30, 2012.
The Complainant does not in any way impersonate the Complainant’s products, brand, logo or business. There is nothing at the website which remotely looks like the Complainants product, brand or logo or business. The Respondent makes no claim to represent the Complainant.
It is true that the website presented a picture of "Tim's, All things Subaru since 1991" at the time of submission of the Complaint. However, this was not a marketing website and did not present anything claiming to be connected with the Complainant's products. This site was a redirect of another of the Respondent’s domains <timsofbozeman.com> to display to a friend a graphic which the Respondent had created. The Respondent used his free hosting for the website at the disputed domain name as he had no hosting plan for <timsofbozeman.com>. The graphic was reviewed and this redirect has since been removed since it is no longer needed.
The disputed domain name does not capture web traffic by means of misspellings of <redbull.com> or any of the Complainant’s other domain names.
The disputed domain name is sufficiently different from the Complainant’s name that it is not accessible by mistyping. An Internet user will only reach the disputed domain name by deliberately entering it.
The disputed domain name does not capture web search traffic from users searching for the Complainant’s company, product, logo or brand. Nor does it appear in web search results for Complainants websites or otherwise capture web traffic from users attempting to navigate to the Complainant’s domain names.
The mere inclusion of the Complainant’s brand name in the disputed domain name is not sufficient evidence that the Complainant has rights to the disputed domain name.
Since the Complainants brand name comprises common English words, the inclusion of those words in the disputed domain name does not mean that he is falsely representing himself as the Complainant. See craigslist, Inc. v. Craig Solomon Online Services, NAF Claim No. FA1205001445057.
The inclusion of a globally recognized name, which is also a common English word, does not render the disputed domain name a bad faith registration. Apple Inc, does not own all domain names which include "apple". Pepsi does not own domains which include "rockstar".
C. Complainant’s Supplemental Submission
A combination of the words "red" and "bull" is purely fanciful. Therefore, nobody would legitimately choose this combination or any variation thereof, unless seeking to create an association with the Complainant. It cannot be mere coincidence or innocence that the Respondent registered the domain name incorporating the strong trade mark.
Given the Complainant's numerous trade mark registrations for, and its substantial reputation in, the word “Red Bull”, it is obvious that the Respondent was well aware of the Complainant's trade marks and their reputation.
After receiving the Complaint, the Respondent cancelled the content of the website at the disputed domain name. However, the Respondent is merely passively holding the Domain Name and this alone is sufficient to constitute bad faith.
The Complainant discovered the existence of disputed domain name just before filing the Complaint. The Respondent has not proved that the Complainant knew about the disputed domain name and ignored its existence. Panels have stated there is no limitation period in the Policy and that the defence of laches has no application.
The Respondent refers to craigslist, Inc. v. Craig Solomon Online Services, NAF Claim Number 1205001445057 but this does not apply as in that case the complainant’s delay was nine years.
The Respondent confers that the disputed domain name was a redirect of another domain <timsotbozeman.com>. By using the Complainant’s famous trade mark, the Respondent aimed to gain attention of Internet users and promote the Respondent's business activity. Such activity should be deemed as for commercial gain, which creates a strong inference of bad faith.
The disputed domain name is deceptively similar to the Complainant's trade marks and the term "blood" does not change the overall impression that the disputed domain name is associated with the Complainant.
It is a decision of each company to decide whether or not to contest domain names which infringe their trade marks.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant undoubtedly has rights in the mark RED BULL by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name. The Respondent does not contest the existence of such rights.
Paragraph 1.2 of WIPO Overview 2.0 makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Here, the disputed domain name consists of the Complainant’s trade mark combined with the descriptive term “blood”.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
The Panel considers that the Complainant has established a prima facie case of lack of rights or legitimate interests and so the Panel must weigh up the allegations of relevant rights or legitimate interests on the part of the Respondent.
First, the Respondent says that his use of the disputed domain name for a website displaying a large logo for “Tim’s of Bozeman”, an existing or prospective motor-related business of the Respondent, was simply to enable the Respondent to display the logo to a friend by means of a redirect from <timsofbozeman.com>. The Respondent asserts that he used the disputed domain name for this purpose because it had free hosting attached, whereas at that time he had no hosting plan for the domain name <timsofbozeman.com>. Leaving aside the credibility of this claim for the moment, it is clear that such use of the disputed domain name for the alleged purpose of display of a logo to a friend cannot be considered as “a bona fide offering of goods or services” for the purposes of paragraph 4(c)(i).
The Respondent also argues that he “might one day” use the site to review steak houses and their cuisine in Bozeman, Montana, where there is above-average consumption of steak. However, the Respondent has not served up any supporting evidence which might be said to constitute “demonstrable preparations” for a bona fide offering, as required by paragraph 4(c)(i).
Accordingly, the Panel does not consider that paragraph 4(c)(i) of the Policy applies in the circumstances of this case and there is no evidence that paragraphs 4(c)(ii) or (iii) apply either.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The starting point is to consider the Respondent’s explanation for his registration of the disputed domain name.
As mentioned above, the Respondent claims that he bought the disputed domain name because he enjoys red angus steak and he thought that he might one day review steak houses and their cuisine in Bozeman, Montana, where there is above-average consumption of steak.
In accordance with paragraph 4.5 of WIPO Overview 2.0, the Panel has visited the website at the disputed domain name and ascertained that it now contains the following notice: “Future review site of the finest Southwest Montana Steaks served up ultra rare!”. Although the Panel is unaware of the exact date when this statement was posted, the Panel considers it likely that its purpose was to bolster the Respondent’s position in this case.
While the Respondent has given his reason for registering the disputed domain name, he has not provided a detailed explanation for its selection of the words comprised in the disputed domain name. In the absence of such an explanation, the Panel is unconvinced by the Respondent’s version of events.
If the disputed domain name was truly intended to be used as claimed by the Respondent, one might have expected it to contain the word “review” or some other term signalling its purpose. Also, it seems inherently unlikely that a review site for steak houses would concentrate simply on steaks of the “ultra rare” variety. Even if so, in the Panel’s view, the most that can be said in the Respondent’s favour is that each of the individual words comprised in the disputed domain name has some sort of connection with steak, particularly rare-cooked steak. But, when considered independently of the Complainant’s trade mark, the combined name conveys to the Panel the impression of a somewhat random and illogical collection of words. The first word “red” refers not to steak but to “bull”. If, in the context of rare steaks, there is a reason why it is relevant to refer to the colour of the animal itself, rather than the steak which may be derived from it, the Respondent has not explained this. Furthermore, the word “blood” appears to have been tacked on at the end of the disputed domain name with no real relationship to the rest of the disputed domain name.
Nor has the Respondent explained why the alleged review site has not yet been implemented, some two years after registration of the disputed domain name.
Furthermore, the Respondent has not denied that the Complainant’s mark was well-known or that he was aware of the Complainant when it registered the disputed domain name.
Accordingly, the Panel finds it difficult to avoid the conclusion that the Respondent’s alleged proposed review site is simply an attempted retrospective justification for registering the disputed domain name. On balance the Panel considers that, although the Respondent’s exact purpose remains obscure, the Respondent’s intent on registering the disputed domain name was to target the Complainant’s mark in some unfair manner. In the Panel’s view, the disputed domain name was registered in bad faith.
But that is not the end of the matter as the Complainant must also establish that the Respondent has both registered and used the disputed domain name in bad faith.
As mentioned in section 4, the Respondent has at some point used the disputed domain name to resolve to a website consisting of a logo “TIMS”, the slogan “All things Subaru since 1991”, a telephone number and a link to “www.timsofbozeman.com”. The Respondent says that the only purpose of this use of the disputed domain name was to temporarily display a logo for a motor-related business to a friend of the Respondent. The alleged reason for this was the Complainant did not have a hosting package for <timsofbozeman.com>, the domain name to which the logo related, and so instead he placed the logo on the website at the disputed domain name and forwarded <timsofbozeman.com> to that site.
That may not seem like a very plausible explanation but, on the other hand, there is no evidence that the Respondent ever used the disputed domain name in any real sense in connection with his motor-related business. The Complainant says that the link to “www.timsofbozeman.com” led to a website whose content was the same as on the disputed domain name. While this is not a very clear statement, the Panel infers from this that the link simply looped back to the website at the disputed domain name.
Neither party has seen fit to shed any light on the exact period during which the disputed domain name was used in this manner but the Respondent does say that the redirect was removed once the logo had been reviewed. In any case, the Panel has not been provided with any evidence indicating that this was anything other than a relatively short-lived, and anodyne, use of the disputed domain name.
The only other use of the disputed domain name apparent to the Panel is the self-serving notice mentioned above.
As the Respondent strongly asserts, there is nothing on the record to indicate that the Respondent has ever used the disputed domain name for any form of website that was of the remotest relevance to the Complainant’s business.
Nonetheless, the Panel is of the opinion that it is appropriate to consider this case in the context of the principles of “passive holding” set out in the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. There the panelist noted that "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith" and concluded that "it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”.
The panelist went on to say that
“… in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”
See also paragraph 3.2 of WIPO Overview 2.0 which states the following consensus view on this issue:
“…panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use…”
In this case, the Panel concludes that on balance, notwithstanding the limited use of the disputed domain name mentioned above, the following cumulative circumstances are indicative of passive holding in bad faith.
1. The Respondent has not given a detailed explanation for its selection of the disputed domain name and the Panel finds the Respondent’s assertion of its general purpose in registering the disputed domain name to be implausible.
2. The Respondent has not used the disputed domain name for its alleged purpose, despite having owned it for more than two years, nor has it attempted to explain the reason for the delay.
3. The Respondent has not denied that the Complainant’s trade mark is well-known.
4. The Respondent has not denied that it was aware of the Complainant’s trade mark on registration of the disputed domain name.
5. The Respondent has posted a notice at the website of the disputed domain name which the Panel considers was more likely than not to have been motivated by the desire to bolster its position in this case, rather than for a genuine purpose.
For the above reasons, the Panel concludes that on balance the disputed domain name is being used in bad faith.
The Respondent argues that the Complainant’s name comprises common, non-unique English words and therefore inclusion of those words does not mean that he is falsely representing himself as the Complainant. In support, he invokes craigslist, Inc. v. Craig Solomon Online Services, NAF Claim No. FA1205001445057. In that case, the respondent was using the domain name <craigslist.com> for a website comprising a directory of businesses connected with the Cayman Islands. The panel concluded that this was a distinctly different business to the complainant’s online-classifieds business and, because the site was neither competing with the complainant’s business nor disrupting it, there was no bad faith use. However, the Panel does not consider this decision assists the Respondent because the facts in that case were entirely different to here. There, the panel obviously considered that the respondent’s use of the disputed domain name was genuinely independent of the complainant. And one can see the potential plausibility of a registrant whose first name is “Craig” registering and using the domain name <craigslist.com> for a business-listings website. Whereas, here, there is no evidence of use of the disputed domain name for the purpose for which it was allegedly registered and, for the reasons given above, the Panel has concluded that on balance the Respondent selected the disputed domain name, not by reference to any generic meaning of its components, but because of the correspondence to the Complainant’s trade mark.
The Respondent also draws attention to domain names which include common English words such as “apple” and “rockstar” which also happen to be well-known trade marks, in support of his argument that the mere inclusion of such terms does not automatically render them bad faith registrations. But the issue for the Panel is not simply whether the disputed domain name happens to incorporate a trade mark but, rather, whether or not inclusion of “Red Bull” in the disputed domain name was linked to the Complainant’s trade mark or for a genuine independent reason.
Had the Panel accepted that the Respondent’s purpose in registering the disputed domain name was as he has claimed, then it is likely that the outcome of this case would have been different.
Finally, the Respondent relies on a delay of some two years between registration of the disputed domain name and the filing of this case.
Paragraph 4.10 of “WIPO Overview 2.0 addresses the issue of delay as follows:
“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.
However: Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant.”
This Panel subscribes to the view expressed in WIPO Overview 2.0 that laches does not generally apply to the Policy. In any case, the Respondent has not put forward any specific argument as to why laches should apply. The Respondent invokes only a two year delay and does not even suggest that the Complainant was, or ought to have been, aware of the disputed domain name for some or all of that time; whereas the Complainant says that it only became aware of the disputed domain name shortly before it filed the Complaint. Nor does the Respondent suggest that that there has been any detrimental reliance on its part.
Accordingly, the Panel rejects the Respondent’s delay argument.
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 <redbullblood.com> be cancelled (which is the remedy sought by the Complainant).
Dated: October 8, 2012