WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. Andrew Ayton

Case No. D2012-0709

1. The Parties

The Complainant is Red Bull GmbH of Fuschl am See, of Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.

The Respondent is Andrew Ayton of Fircrest, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <newyorkredbulls.xxx> (the “Domain Name”) is registered with Mesh Digital Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2012. On April 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 4, 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 April 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2012.

The Center appointed Nicholas Smith as the sole panelist in this matter on May 11, 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, based in Austria, is the largest worldwide producer of energy drinks. It produces Red Bull energy drinks, which have been sold internationally since 1992. Currently, Red Bull is sold in 157 countries and the Complainant sold 4.1 billion units of Red Bull in 2010.

The Complainant holds trade mark registrations for RED BULL (the “RED BULL Mark”) in 205 countries. In 2007 the Complainant registered the RED BULL Mark as a trade mark in the United States, where the named Respondent is based.

As part of the promotion of Red Bull, in 2006 the Complainant became the sponsor of a Major League Soccer team based in New York/New Jersey, which was renamed the New York Red Bulls. The Complainant has registered the domain name <newyorkredbulls.com> which resolves to a site that provides information about the New York Red Bulls soccer team.

The Domain Name <newyorkredbulls.xxx> was created on December 6, 2011. It does not revolve to an active Internet site.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s RED BULL Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the RED BULL Mark. It has registered the RED BULL Mark in 205 countries around the world, including the United States. Since the launch of Red Bull in 1987, the Complainant has engaged in extensive advertising and sponsorship to promote the RED BULL Mark. In 2010 the Complainant spent over 338.7 million euros on marketing Red Bull.

In 2006 the Complainant became the main sponsor of the Major League Soccer team based in New York/New Jersey, which it renamed to RED BULL NEW YORK. The team operates a website at “www.newyorkredbulls.com”, with the domain name <newyorkredbulls.com> being owned by the Complainant. By reason of the Complainant’s sales and marketing the RED BULL Mark has a very strong reputation and is widely known throughout the world.

The Domain Name consists of the RED BULL Mark in its entirety with the addition of the geographical term “newyork”. The addition of “newyork” refers to the city of New York and as such does not reduce the likelihood of confusion. There is confusing similarity between the RED BULL Mark and the Domain Name.

The Respondent has no rights or legitimate interests in the Domain Name as the Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use the RED BULL Mark. The Respondent is not commonly known by the Domain Name. Finally there appears to be no legitimate reason for the Respondent to register the Domain Name.

The RED BULL Mark is a famous trade mark worldwide, including in the United States, where the Respondent is based. It is implausible that the Respondent was unaware of the Complainant when he registered the Domain Name. The Respondent has taken no positive action in relation to the Domain Name since it was registered. However, Panels have found that in certain circumstances, passive holding can amount to use of a domain name in bad faith, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Respondent’s registration of the Domain Name in bad faith and his passive holding of the Domain Name amounts to use in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the RED BULL Mark, having registrations for RED BULL as a trade mark throughout the world, including in the United States, where the Respondent is based.

The addition of a geographical term to a trade mark is not sufficient to provide any distinctiveness to a domain name – see Carlsberg A/S v. Persona / decohouse, decohouse, WIPO Case No. D2011-0972. This is especially so when a complainant has a particular connection to or presence at that location. The Complainant sponsors a football team known as the New York Red Bulls, with an active website at the domain name <newyorkredbulls.com>, a factor that increases the likelihood of confusion between the Domain Name and the Complainant’s RED BULL Mark.

The Domain Name consists of the RED BULL Mark, the prefix “newyork”, and an “s” after the RED BULL Mark. Neither the prefix “newyork” nor the addition of the “s” distinguishes the Domain Name from the RED BULL Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s RED BULL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“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 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))”.

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the RED BULL Mark or a mark similar to the RED BULL Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.

The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

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 the Domain Name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 trade mark 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 its website or other online location, by creating a likelihood of confusion with the 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 Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the RED BULL Mark at the time the Domain Name was registered. The RED BULL Mark has been extensively promoted by the Complainant in the United States, making it a well-known mark. Furthermore, the Domain Name precisely replicates the name and domain name associated with the New York Red Bulls, the professional soccer team sponsored by the Complainant. The combination of the words “New York” “red” and “bull” is purely arbitrary, in that nobody would legitimately choose the combination of words unless seeking to create an association with the Complainant. Furthermore, the Respondent has provided no alternative explanation, either in this proceeding or in correspondence with the Complainant, for his registration of the Domain Name.

The registration of the Domain Name in awareness of the Complainant’s Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.

The Domain Name is currently inactive, and there is no evidence that it has been used by the Respondent for any purpose. It is, in essence, being passively held by the Respondent. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 established that, in certain circumstances, the passive holding of a domain name could amount to use of the domain name in bad faith.

A panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. In this case the following circumstances exist:

a) The Respondent was aware of the Complainant, and the soccer team sponsored by the Complainant at the time he registered the Domain Name;

b) The Domain Name precisely replicates the domain name for the New York Red Bulls Soccer team, with the generic top level domain (gTLD) “.com” being substituted for the gTLD “.xxx”; and

c) The Respondent has failed to respond to this proceeding or the initial cease and desist letter sent by the Complainant on January 30, 2012.

On the basis of the circumstances outlined above, the Panel is prepared to conclude that the Respondent is using the Domain Name in bad faith.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

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 Domain Name <newyorkredbulls.xxx> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Dated: May 14, 2012