WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Prateek Agrawal, EsoftWorld / Redbull Financial, Redbull Financial Services / Your's Red Bull Global Research Private Limited, Red Bull Global
Case No. D2015-0452
1. The Parties
Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
Respondent is Prateek Agrawal, EsoftWorld Softwares Pvt. Ltd. of Gwalior, Madhya Preadesh, India / Redbull Financial, Redbull Financial Services of Orissa, India / Your's Red Bull Global Research Private Limited, Red Bull Global of Bhubneshwar, Orissa, India.
2. The Domain Names and Registrars
The disputed domain names <redbullfinancial.com>, <redbullitech.com> and <redbullpages.com> are registered with Tucows Inc. The disputed domain name <redbullglobal.com> is registered with GoDaddy.com, LLC (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2015. On March 13, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 13, 2015, Tucows Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 17, 2015, GoDaddy.com, LLC transmitted by email to the Center its verification response also confirming that Respondent is listed as the registrant and providing the contact details. The Center received an informal communication from Respondent on March 13, 2015.
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 Respondent of the Complaint, and the proceedings commenced on March 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2015. On April 13, 2015, the Center received a request from Respondent for an additional four days to submit a Response. The due date for filing a Response was extended to April 17, 2015. Respondent did not submit a formal Response.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on April 23, 2015. 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 the owner of registrations for the trademark and service mark (hereinafter “trademark”) RED BULL on the registries of trademark offices in a substantial number of countries, including word and device mark on the Trade Marks Registry of Intellectual Property India (IPI), registration number 1375801, registration dated August 5, 2006, in classes 30, 33 and 34, covering various food, beverage and tobacco products, and; registration through the Madrid System, international registration number 961854, registration dated March 19, 2008, in international classes (ICs) 25, 28, 32, 41 and 43, designating a substantial number of countries mainly in Europe and the Middle East. There is an application for multiclass registration India pending in India, application number 2657090, dated January 13, 2004.1
Complainant has provided evidence of extensive use of the RED BULL trademark in a large number of countries, evidence of extensive expenditure in advertising and promotion of products and services under the RED BULL trademark, and evidence of consumer recognition of the trademark, inter alia, through recognition by various industry publications of high-rank of the trademark among globally recognized brands.
Complainant has provided evidence of significant and growing sales of its RED BULL branded energy drinks in the Indian market. Complainant’s data shows sales of approximately 19.3 million serving units in India in 2010, and over 42.2 million serving units in 2014.
According to the Registrars’ verification reports, Respondent is registrant of the disputed domain names. The report provided by Tucows Inc. regarding <redbullitech.com>, <redbullpages.com> and <redbullfinancial.com> does not include the date on which the records of registration for the disputed domain names were created; however, WHOIS reports from “www.whois.tucows.com” show the record of registration for <redbullitech.com> created on June 21, 2014, the record of registration for <redbullpages.com> created on June 21, 2014, and the record of registration for <redbullfinancial.com> created on September 4, 2013. The report provided by GoDaddy.com LLC shows the record of registration for <redbullglobal.com> created on June 4, 2014, and registered to Respondent since at least that date. The record of registration for each of the disputed domain names includes an identical email address for the registrant. The websites associated with the disputed domain names <redbullitech.com> and <redbullfinancial.com> each refer to the corporate office of “YOUR'S RED BULL GLOBAL RESEARCH (P) LTD”. The webpage associated with the disputed domain name <redgroupglobal.com> includes cross-links to Red Bull Financial, Red Bull iTech and Red Bull Pages. The Panel is satisfied that the disputed domain names are under common ownership and control, and that consolidation of this proceeding involving the named respondents (referred to as “Respondent”) is appropriate.
The disputed domain names are associated with websites offering various services. Redbull Financial offers various financial services, such as stock market and commodities advice, including “Sure Shot Commodity F.I. Calls”. Redbull iTech refers to Home & Office Security Solutions, such as Security Management and Access Control. Redbull Pages provides links to providers of goods and services, although most of the links refer the user to a subscription page. Redbull Global refers to itself as “a global enterprise headquartered in India, and comprises multiple business sectors: Financial, Investment, white pages, securities, HR portal,” with links to the aforementioned websites.
Complainant transmitted a cease-and-desist demand to Respondent at its various addresses on October 14, 2014, reiterated on November 24, 2014. Respondent did not reply to those demands.
Complainant has provided an Investigation Report regarding Red Bull Financial Services dated May 27, 2014, prepared by MarkScan. That report indicates that building in which the enterprise is situated as provided by Respondent on its website (i.e., Red Bull Plaza) does not exist and that the firm Red Bull Financial Services is not listed with a corporate registration. The report lists elements which lead it to suggest that Red Bull Financial Services is not a legitimate financial services business.
The registration agreement between Respondent and the Registrars subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant contends that it has rights in the trademark RED BULL and that the disputed domain names are confusingly similar to that trademark. Complainant contends that its trademark is well known, including in India. Complainant indicates that its trademark, while composed of common terms, is a purely fanciful combination of those terms.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Complainant has not licensed or otherwise authorized Respondent to use its trademark; (2) there is no evidence that Respondent is running a legitimate business in India; (3) Respondent was obviously aware of Complainant’s trademark when it registered the disputed domain names in an effort to create a misleading association with Complainant, and this is not a bona fide use of the disputed domain names in connection with an offering of goods or services; (4) Respondent’s use of the disputed domain names is tarnishing Complainant’s trademark; (5) Respondent is using the disputed domain names in an illegitimate way to derive commercial advantage from Complainant’s trademark.
Complainant alleges that Respondent registered and is using the disputed domain names in bad faith because: (1) Respondent has not replied to Complainant’s cease-and-desist demands; (2) Complainant’s trademark is one of the best-known in the world and Respondent must have known of Complainant’s trademark when it registered the disputed domain names; (3) Respondent’s obvious intent in registering the disputed domain names was to misleadingly create confusion among consumers regarding a relation with, sponsorship, or endorsement of Respondent by Complainant; (4) Respondent has used the disputed domain names to divert Internet users away from Complainant’s business; (5) registration by a third party of a well-known trademark in a domain name with no authorization and no legitimate purpose constitutes bad faith.
Complainant requests the Panel to direct the Registrars to cancel registration of the disputed domain names.
Respondent submitted a brief informal email response. Respondent stated that the Center is aware that Respondent business is registered in India; that its Board of Directors has been very busy with preparing its financial statements, and consequently did not have time to prepare a response. Having received authorization from the Center for an additional period of time in which to file, Respondent provided no additional response.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Express courier delivery records indicate that notifications were delivered and signed for at the addresses provided by Respondent in its records of registration. Respondent provided an informal email response indicating that it was aware of these proceedings. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps satisfy the Policy’s notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has submitted substantial evidence of rights in the trademark RED BULL, including by registration in India and under the Madrid System, and has demonstrated substantial use in commerce in India and other countries. Respondent has not challenged Complainant’s assertion of rights in the RED BULL trademark. The Panel determines that Complainant has established rights in the trademark RED BULL in India and other countries.
The disputed domain names <redbullitech.com>, <redbullpages.com>, <redbullfinancial.com> and <redbullglobal.com>, directly incorporate Complainant’s RED BULL trademark. Three of the disputed domain names respectively add the common terms “pages”, “financial”, “global”. The term “itech”, added by the fourth, is as a short form for “information technology(ies)“, and would be understood as such by Internet users. Complainant’s trademark is a distinctive fanciful combination of terms that is heavily advertised and well-known. A combination of the distinctive RED BULL trademark with the descriptive terms “pages”, “financial”, “global” and “itech” is likely to be viewed and understood by Internet users in association with Complainant and its wide range of goods and services.2
The Panel determines that Complainant holds rights in the trademark RED BULL, and that the disputed domain names are confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) 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; or
(iii) you are 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.” (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain names are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent’s registration and use of the disputed domain names that are confusingly similar to Complainant’s well-known and distinctive trademark took place after Complainant began doing business in India and made substantial investments in advertising its products and services there, and established substantial market penetration. Respondent is presumed to have been aware of Complainant’s trademark when it registered the disputed domain names. Respondent’s use of those disputed domain names in connection with marginally operative websites offering stock market tips and security services under Complainant’s well-known brand does not constitute a good faith offering of goods or services, and does not constitute legitimate noncommercial or fair use of Complainant’s trademark in the disputed domain names. The evidence on the record of this proceeding does not point the Panel toward a finding of rights or legitimate interests on the part of Respondent.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Among those circumstances are: “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”
Respondent registered the disputed domain names incorporating Complainant’s distinctive and well-known trademark for the purpose of attracting Internet users to its own websites. Complainant offers a wide range of goods and services under its trademark. While there is not necessarily an identity between the goods and services offered by Complainant and the goods and services offered by Respondent on its websites, Internet users would be likely to visit Respondent’s websites based on a presumed sponsorship, endorsement or affiliation by or with Complainant. Respondent is seeking to take financial advantage of association with Complainant’s distinctive and well-known trademark. The Panel determines that Respondent is using the disputed domain names to attract for commercial gain Internet users to Respondent’s websites by creating a likelihood of confusion as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s websites.
The Panel determines that Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) 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 names <redbullfinancial.com>, <redbullglobal.com>, <redbullitech.com> and <redbullpages.com> be cancelled.
Frederick M. Abbott
Date: May 6, 2015
1 Complainant presented evidence of the pending application at IPI in India. The Panel verified status on the website of IPI. The reasons for the long pendency of the application are not readily apparent. Panel visit of May 6, 2015.
2 Addition of the generic Top-Level Domain “.com” does not distinguish the disputed domain names in the circumstances presented here.