WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH and Red Bull AG v. xiangsong

Case No. D2014-1704

1. The Parties

The Complainants are Red Bull GmbH of Fuschl am See, Austria and Red Bull AG of Baar, Switzerland (the "Complainant"), represented by Drzewiecki, Tomaszek & Wspólnicy Sp. Jawna, Poland.

The Respondent is xiangsong of Chengdu, Sichuan, China.

2. The Domain Name and Registrar

The disputed domain name <redbull.wang> is registered with Xin Net Technology Corp. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 30, 2014. On September 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2014, 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.

On October 9, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 in both Chinese and English, and the proceeding commenced on October 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 5, 2014.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 13, 2014. 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 producer of Red Bull energy drink, which 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 the Complainant has sold over 5.2 billion serving units globally in 2012 and over 390 million units in Asia in 2012. The RED BULL mark is protected in 207 jurisdictions worldwide.

The Complainant is the registrant of a large number of domain names containing the RED BULL mark, both under generic and country-code Top Level Domains. The Complainant's main website "www.redbull.com" contains information on the Red Bull energy drink, sport activities, video records of sport events sponsored by Red Bull GmbH and links to other Red Bull websites.

The Respondent registered the disputed domain name <redbull.wang> on June 30, 2014.

5. Parties' Contentions

A. Complainant

First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its marks. The reasons are summarized as follows:

(1) The Complainant is the owner of multiple registrations and applications of trademarks consisting of or containing the famous RED BULL mark.

(2) The various trademark registrations and applications for RED BULL of the Complainant cover an extensive range of goods and services and span all of 45 trademark classes. The Complainant and its subsidiaries hold national and international trademark registrations or applications consisting of or containing the mark RED BULL in Austria and further 206 jurisdictions worldwide such as China, Japan, Brazil, United States of America, Malta, Russian Federation, Canada, Australia, United Kingdom of Great Britain and Northern Ireland, South Africa, Hong Kong, China, Germany, Taiwan Province of China and the Kingdom of Saudi Arabia.

(3) The Complainant has run its business under the mark RED BULL in Austria since 1987 and internationally since 1992. The Complainant operates its main website under "www.redbull.com".

(4) Prior UDRP panels have already stated in various cases that the Complainant's trademark is famous, as it has a very strong reputation and is widely known all over the world.

(5) Although "red" and "bull" are both ordinary words, they form a distinctive combination. This finding was confirmed by prior UDRP panels.

(6) It is common practice with the domain names that blank spaces in trade names or trademarks are omitted to form a domain name, and so did the Complainant for its main website under the domain name "www.redbull.com".

(7) The incorporation of a complainant's mark in full within a domain name is sufficient to establish confusing similarity between the mark and the domain name.

Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The grounds are summarized as follows:

(1) The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of those marks or any variations thereof. 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 to the Complainant.

(2) The Respondent is not commonly known by the disputed domain name or terms: "redbull" or "redbull.wang". Based on the fame and reputation of the RED BULL mark and the activities of the Complainant all over the world, it can be concluded beyond any doubt that the Respondent purposefully created the disputed domain name, which consists of a variation of the Complainant's well-known mark. The Respondent has registered it to create the misleading impression of being in some way associated with the Complainant.

(3) The Respondent had no legitimate reason for registering the Complainant's trademark as a domain name. It has registered and is using the disputed domain name illegitimately.

(4) None of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent is not authorized or related to the Complainant in any way. The Respondent is not commonly known by the disputed domain name. The Respondent is making illegitimate use of the disputed domain name with intent to derive commercial advantage from its registration and prevents the Complainant from exercising its rights to the trademark and managing its presence in the Internet.

Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The grounds are summarized as follows:

(1) The Complainant sent the cease and desist letter to the Respondent on August 13, 2014 and the reminder on September 1, 2014. The Respondent has never responded to this correspondence. Prior UDRP panels have held that this is an indication of bad faith use of the domain name.

(2) The trademark RED BULL is one of the best known trademarks all over the world and the Respondent must have been aware of this fact when it deliberately registered the disputed domain name. The Respondent's obvious intent was to misleadingly divert the consumers to created website, causing confusion among consumers in the way of creating the impression of relation with or sponsorship or endorsement of the Respondent by the Complainant. It is apparent that the intent of the Respondent was to exploit the reputation of the Complainant and the RED BULL trademark.

(3) Both the Respondent's registration and use of the disputed domain name were intentional to attract Internet users to the website. The disputed domain name appears designed to attract Internet users who are looking for the Complainant's products and business activities, appears to cause confusion with the Complainant's marks and websites, and appears to disrupt the Complainant's business by diverting consumers away from the Complainant's websites.

(4) The Respondent has registered and is using the disputed domain name with the purpose to create affiliation to the Complainant, its products and trademarks. The Respondent registered the disputed domain name <redbull.wang> which misleads the Internet users, the Internet users could expect that the disputed domain name is connected in some way with the Complainant or is authorized by the Complainant.

(5) The website under the disputed domain name is inactive. However, prior UDRP panels have held this does not prevent the finding of use of the domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented to the Panel, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. The Complainant has submitted a request that English should be the language of the present proceeding. The Respondent did not comment on the Complainant's request.

After considering the circumstances of the present case and the submission of the Complainant's request, the Panel is of the opinion that the language for the present proceeding shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel's discretion under the Policy

Paragraph 11(a) of the Rules provides:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest that, in the interests of fairness, the language of the proceeding ought to be the English language. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant's allegations.

Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. The Panel decides that the proceeding shall be English and the decision will be rendered in English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

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

(ii) the 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.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the RED BULL mark in connection with energy drinks and an extensive range of goods and services, spanning all of 45 trademark classes in 207 jurisdictions in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the RED BULL mark in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant's RED BULL mark is well known in connection with the goods and services offered by the Complainant in many countries as well as in China.

In assessing the degree of similarity between the Complainant's trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking information about the Complainant's products or services.

The disputed domain name consists of the Complainant's RED BULL mark in its entirety with the addition of the generic Top Level Domain (gTLD) suffix ".wang". The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word "redbull" without a space in it, which is identical to the Complainant's registered trademark RED BULL. Given the fame and notoriety of the Complainant's RED BULL mark, the addition of suffixes such as ".wang"-being a transliteration of the Chinese character (which translates loosely to "net", "network" or "website")".网"-is not typically a distinguishing factor.

Bearing in mind the following factors, in particular the distinctive character of the Complainant's RED BULL mark and the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the RED BULL mark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

(1) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term "redbull".

(2) There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the RED BULL mark.

(3) There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services.

(4) On the contrary, the disputed domain name is currently connected to an inactive website with no demonstrable evidence of use of the disputed domain name for the purpose of bona fide offering of goods or services. The Panel finds that the Respondent therefore does not have the right to use the RED BULL mark in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.

(5) The Complainant and its RED BULL mark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with energy drinks and a wide range of goods and services and are registered trademarks in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, the RED BULL mark is not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1). Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

"(i) before any notice to [the respondent] of the dispute, [the respondent's] 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent 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."

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.

The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel's assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the worldwide reputation of the Complainant and its RED BULL mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name.

Furthermore, the Complainant has established a substantial presence on the Internet. The Complainant has also registered and used domain names which incorporate the RED BULL mark such as <redbull.com>. A simple search on the Internet would reveal the presence of the Complainant's trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products.

Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant's trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the Respondent may show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet. In this case, there is no evidence that the Respondent has used or intends to use the disputed domain name for purposes of bona fide offering of goods and services over the Internet.

The Panel notes that the website at the disputed domain name <redbull.wang> appears to be inactive. In accordance with established precedent, the Panel finds that the passive holding of said disputed domain name does not as such prevent a finding of bad faith. See WIPO Overview 2.0, paragraph 3.2.

The Respondent could have explained its choice of the disputed domain name and its subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.

The Panel notes that the Complainant has adduced evidence and proved that by registering and using a confusingly similar disputed domain name, the Respondent's likely purpose is disrupting the Complainant's business. The Panel finds that given the widespread fame of the Complainant's RED BULL mark, a lack of plausible explanation for the choice of incorporating the Complainant's well-known trademark in the disputed domain name, and the lack of plausible evidence of using the disputed domain name for bona fide offering of goods or services, are certainly relevant factors indicating bad faith registration and use.

Thus, the Panel finds for the Complainant on the third part of the test.

7. Decision

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 <redbull.wang> be transferred to the Complainant Red Bull GmbH.

Susanna H.S. Leong
Sole Panelist
Date: November 27, 2014