WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. Akiyoshi Fukumitsu, hivelocity Inc.

Case No. D2012-1209

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 Akiyoshi Fukumitsu, hivelocity Inc., of Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name <redbullordertool.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2012. On June 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2012, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain name which differed from the named Respondent and contact information on the Complaint. The Center sent an emailed correspondence to the Complainant on June 15, 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 June 18, 2012. On June 15, 2012, the Center transmitted an email to the parties in both Japanese and English regarding the language of the proceeding. On June 18, 2012, the Complainant confirmed its request that English be the language of the proceeding. On June 20, 2012, the Respondent submitted the objection to the Complainant’s request on the language of proceeding.

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 June 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2012. An emailed correspondence was received by the Center from the Respondent on June 20, 2012, and July 4, 2012.

The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on July 23, 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 a worldwide producer of RED BULL energy drink, which was first sold in Austria in 1987 and have been sold internationally since 1992. The RED BULL energy drink is sold in 159 countries all over the world. The Complainant or its subsidiary companies are the owner of trademark registrations consisting of or containing the mark RED BULL in various classes of goods and services. The Complainant’s representative registered trademarks inter alia are as follows:

International Registration Number: 971949

Countries: Antigua and Barbuda, Armenia, Azerbaijan and 33 other countries

Trademark: RED BULL

Date of Registration: March 19, 2008

Classes of Goods and Services: 25, 28, 30, 32, 33. 34, 41, and 43

International Registration Number: 791989B

Countries: Bhutan, China, Japan, and Singapore

Trademark: RED BULL with a device

Date of Registration: May 21, 2002

Classes of goods and services: Class 1 through Class 45

The Respondent is the representative director of a Japanese corporation established in 2004 providing the business of Internet development, Internet marketing and e-business consulting services. The disputed domain name was registered on January 14, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant contends in the Complaint that:

- The disputed domain name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in the disputed domain name; and

- The disputed domain name was registered and is being used in bad faith, and accordingly the Complainant requests cancellation.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceeding

The Complaint was filed in the English language. It is noted that the language of the registration agreement for the disputed domain name is Japanese. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors. In the present case, the registration agreement for the disputed domain name was made in the Japanese language.

The Complainant has submitted a request that English be the language of proceeding in which it has advanced a number of arguments including that, according to the Complainant, the Respondent can clearly understand the language of Complaint and the Complainant would be forced to translate which is inconvenient.

The Respondent submitted the Response to the Complainant Language Submission that Japanese be the language of proceeding on the ground that the language of the agreement is Japanese and that the only language the Respondent can understand is Japanese.

However, it is apparent from the Respondent’s communication in English dated July 4, 2012 and addressed to Center that the Respondent has a sufficient ability to communicate in the English language. It is also noteworthy that the Center in initially deciding to proceed with acceptance of the Complaint in English indicated that it would accept a Response in either English or Japanese and also indicated it would (and has) appointed a Panelist familiar with both English and Japanese.

In any event, the Respondent failed to submit a Response in either language and declined to participate in the proceeding. On the other hand, the Complainant is not able to communicate in Japanese, and therefore, if the Complainant were to submit all documents in Japanese, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation.

Therefore, in consideration of all of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceeding in this case. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.

B. The Respondent’s default

The Respondent appears to have the ability to communicate in English as discussed above, and the Center gave it the opportunity to file the Response even in Japanese by notifying it of the Center’s preliminary decision to accept a Response in either Japanese or English and appoint a panel familiar with both languages. However, the Respondent did not submit any Response by the due date.

C. Identical or Confusingly Similar

The suffix “-ordertool” in the disputed domain name is considered as being descriptive in relation to the services of products sold and thus not regarded as being a prominent part in determining the confusing similarity to the mark. See Louis Vuitton Malletier v. Enrico Villa, WIPO Case No. D2000-0721; National Collegiate Athletic Association and March Madness Athletic Association, LLC v. Cyberoad Corporation, WIPO Case No. D2000-1378; and Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; Red Bull GmbH v.Domains by Proxy Inc. / New Gold Mine, WIPO Case No. D2007-0684 concerning the domain <redbullgames.com>; Red Bull GmbH v.Emory Virgil, WIPO Case No. D2005-0381 concerning the domain <redbullcasino.biz>.

The addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the Complainant’s trademark and the disputed domain name as well. Therefore, the Panel has found that the disputed domain name is confusingly similar to the Complainant’s trademark RED BULL.

D. Rights or Legitimate Interests

As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in the disputed domain name, it is well accepted that a complainant must only show a prima facie case that there are no rights or legitimate interests on the part of the respondent. The burden of proof production will then shift to the respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Respondent is not affiliated with the Complainant in any way. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using the RED BULL mark in any other way that would give them any legitimate rights in the name. Consequently the Respondent may not claim any rights established by means of common usage. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark RED BULL. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.

Under the circumstance that the Respondent did not reply, the Panel finds that the Complainant has proven a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. See De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005; See also Accor v. Eren Atesmen, WIPO Case No. D2009-0701. The Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain name.

E. Registered and Used in Bad Faith

The Complainant’s RED BULL energy drink is sold in 159 countries all over the world and the Complainant has sold over 4.1 billion units in 2011 and 88 million units in Japan. The Complainant is recognized as having promoted the RED BULL trademark and the device of two fighting bulls by very substantial international advertising by investing over EUR 412.8 million worldwide and over EUR 9.7 million in Japan. The Complainant organizes the RED BULL X-fighters event and the RED BULL AIR RACE WORLD CHAMPIONSHIP which both attract thousands of spectators at each event. The RED BULL AIR RACE WORLD CHAMPIONSHIP is now televised both live and in long-term reports through 87 TV channels around the world. According to the statistics of studies conducted in 2003 in Germany and Austria, 83.7% and 90% of the general public spontaneously associated the mark RED BULL with the Complainant’s RED BULL energy drinks.

In light of the volume of sales activities, television broadcasts and other promotional activities for the mark RED BULL and in view of the recognition degree of the mark RED BULL as shown in studies, the Panel recognizes that the trademark RED BULL had become well known in many countries including Japan (see Red Bull GmbH v.PREGIO Co.,Ltd., WIPO Case No. D2006-0909; Red Bull GmbH v. Web Wax Designer, WIPO Case No. D2006-0746)

As such, it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. See The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; see also Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.

The disputed domain name is resolved to a website which is the Red Hat Enterprise Linux Test Page. Consequently, the Respondent has been using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.

The Respondent’s selection of a well-known trademark with the knowledge of its fame, coupled with its use of the disputed domain name to resolve to a third party’s test page leads the Panel to infer that the Respondent registered and used the disputed domain name for the purpose of maximizing commercial gain by way of trading off the goodwill of the Complainant’s mark. The Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services but instead to divert Internet users searching for the Complainant and its products to a third party’s website. Internet users searching for information regarding the Complainant or its products may mistakenly believe the disputed domain name to be held by the Complainant, leading to consumer confusion or frustration. See Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598; HBP, Inc. v. Front and Center Tickets, Inc., WIPO Case No. D2002-0802; and Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399. Although the Internet users would at the end realize that the website they visited is not the one of the Complainant, it is likely to cause initial interest of confusion from which the Respondent definitely gets more visitors to the website resolved by the disputed domain name.

As such, the Panel concludes that the disputed domain name was registered and used in bad faith.

7. Decision

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

Ho-Hyun Nahm
Sole Panelist
Date: July 31, 2012