WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Markus Bernhardt
Case No. DTV2001-0019
1. The Parties
1.1 The Complainant is Red Bull GmbH, a company incorporated in Austria with its registered office in Fuschl am See, Austria.
1.2 The Respondent is Markus Bernhardt, with business address at Anigma Film, Trabrennplatz 1, 1020 Wien, Austria
2. The Domain Names and Registrar
The domain name upon which this Complaint is based is <redbull.tv>. The registrar of the domain name is at the date of the Complaint .TV Corporation International, 1100 Glendon Ave. 8th Floor, Los Angeles, CA 90024, USA.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Name and Numbers ("ICANN") on October 24, 1999, (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the Center") by email on August 17, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint states that a copy of the Complaint together with the cover sheet as prescribed by the Supplemental Rules have been sent to the Respondent and that a copy of the Complaint has been sent to the Registrar of the domain name in dispute.
3.3 On August 19, 2001, the Center sent to the Complainantís representative an Acknowledgment of Receipt of Complaint.
3.4 The Center sent a Request for Registrar Verification to .TV Corporation International on August 20, 2001, by email. .TV Corporation International responded to the Centerís request on the same day, stating:
(a) that .TV Corporation International was the registrar for the domain names in dispute;
(b) that the .TV Corporation International was the current registrant of the domain names in dispute;
(c) the Respondentís contact details;
(d) that the Uniform Dispute Resolution Policy was applicable and
(e) that a copy of the Complaint was sent to .TV Corporation International as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy.
3.5 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on August 28, 2001, to the Respondentís representative by post/courier (with enclosures), and by email (without attachments), and to the Complainantís representative by email (without attachments).The Center advised the Respondent that the Response was due no later than September 17, 2001.
3.6 No Response was filed by the Respondent within the time specified in the Notification of Complaint.
3.7 On September 19, 2001, the Center notified the Respondent and the Complainantís representative that the Respondent failed to comply with the deadline indicated in the Notification of Complaint and that it would proceed to appoint an Administrative Panel. The Center further notified the Respondent that it would be in the discretion of the Panelist to decide whether to consider the Response if submitted later.
3.8 On September 24, 2001, the Center received an fax from the Respondent in which he claimed that he "always pressed the reply button to send e-mails to the Center and that "obviously the Centerís email did not work properly. The fax contained the copy of an e-mail that was sent from the Respondentís e-mail administrator (firstname.lastname@example.org) to the Respondent. The e-mail contained the following message:
"Your message was not delivered because the destination computer was not reachable within the allowed queue period. The amount of time a message is queued before it is returned depends on local configuration parameters. Most likely there is a network problem that prevented delivery, but it is also possible that the computer is turned off, or does not have a mail system running right now.
Your message was not delivered within two days. Host wipo.int is not responding. The following recipients did not receive this message: email@example.com. Please reply to Postmaster@chello.at if you feel this message to be in error."
The Respondentís fax also contained the Respondentís Response to the Complaint that according to e-mail header was sent to the Center on September 17, 2001.
3.9 On September 25, 2001, the Center asked the Respondent to resend the e-mail containing the Respondentís response. The Respondentís Response was received by the Center on the same day.
3.10 On September 28, 2001, the Panel invited Dr. Torsten Bettinger to serve as a Panelist in this Administrative Proceeding. Having received the Panelistís Declaration of Impartiality and Independence, the Center issued a Notification of Appointment of Administrative Panel and set a decision date, with the Panelistís deadline for issuing a decision of October 17, 2001.
3.11 On October 3, 2001, the Center sent a Notification of Appointment of Administrative Panel to the Complainantís Representative and to the Respondent by email.
3.12 The Center sent a Transmission of Case File to Administrative Panel by e-mail on October 3, 2001. The documentation was received in hard copy, together with a copy of a videotape by the Panel on October 6, 2001. On October 17, 2001, the Panelist asked for an extension to render the decision. The Center accepted the Panelistís request setting the new date for rendering the decision of October 22, 2001.
4. Factual Background
4.1 Activities of the Complainant
The following information is asserted as fact in the Complaint.
The Complainant is the largest worldwide producer of energy drinks. It is the producer of the Red Bull energy drink, which was first sold in Austria in 1987 and in Germany in 1994. In 2000, the Red Bull energy drink was sold in 55 countries all over the world and the Complainant has sold approximately 900 million units in 2000. Currently, Red Bull has an annual turnover of approximately EURO 790 million. Additionally, the Complainant has since 1995 sponsored and co-owned Formula One racing cars, the RED BULL SAUBER PETRONAS team, which have been televised on a world wide basis and which have made the trademark RED BULL well-known all over the world.
4.2 The Complainantís trademarks
The following information is asserted as fact in the Complaint.
The Complainant has traded under the name "Red Bull" in Austria since 1987, and outside Austria since 1992 (the international launch date of the Red Bull energy drink).
The Complainant is the proprietor of more than 12 registrations and applications in Austria of trademarks consisting of or containing the mark "RED BULL", details of which are set out in Annex F to the Complaint. The various trademark registrations and applications cover an extensive range of goods and services, and span all of the 42 trademark classes. As well, the Complainant has registered, or applied to register, a range of trademarks consisting of or containing the words "RED BULL", in a large number of countries such as U.S.A., Canada, Russian Federation, United Kingdom, Germany, France, Spain, Italy, Ireland, China, South Africa, Saudi Arabia and also Tuvalu. In addition, the Complainant has obtained various registered Community Trademarks including the mark "RED BULL", details of which are set out in Annex G to the Complaint.
The Complainant also states that it is the registrant of numerous domain names incorporating the words <redbull>", including <redbull.com>, <redbull.org> and <redbull.co.uk>. The Complaint states that the principal website operated by the Complainant (at <www.redbull.com>) contains information on the Red Bull energy drink, sports events sponsored by the Complainant and links to other Red Bull websites, all of which are evidence of the entertainment activities of the Complainant.
4.3 Activities of the Respondent
The Respondent is an private individual. The Respondent asserts to have registered the domain <redbull.tv> in order to launch a game where a bull plays an important role and which can be played via the Internet. The Respondent concedes that he knew of the existence of the Red Bull trademark and that he was willing to transfer the domain name <redbull.tv> for ATS 30.000 (EURO 2180) when he was contacted by the Complainant.
5. The Complainantís contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the relevant part of the domain names in dispute is the expression "Red Bull", which is clearly identical with or confusingly similar to the various trademarks and trademark applications "RED BULL", which are registered and/or owned by the Complainant. The Complaint refers to the Administrative Panel Decision, WIPO Case No. D2000-0766, Red Bull GmbH v. Harold Gutch and to the Administrative Decision, WIPO Case No. D2001-0584, Red Bull GmbH v. Manuel Sousa and WIPO Case No. D2001-0522, Red Bull BmgH v. Tony Marinelli)
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint states that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks. The Complaint further states that combination of the words "Red Bull" is a purely fanciful combination of words, as there does not exist a red-coloured bull and, therefore, no trader would legitimately choose this mark unless seeking to create an impression of association with the Complainant. The Complaint alleges that in this respect, the Respondent seeks to create the false and misleading impression that he acts in accordance with the Complainant conducting entertainment activities. The Complainant further alleges that has never used the domain name in connection with a bona fide offering of goods or services and that the Respondent offered to sell the domain name to the Complainant for a sum of ATS 30.000 to the Complainant in a telephone call between the Complainantís trademark counsel, Mrs. Jennifer Powers and the Respondent. The Complainant alleges that the sole purpose of registering the disputed domain name was to sell it to the Complainant. The Complaint refers to the Administrative Panel Decision, WIPO Case No. D2000-0766, Red Bull GmbH v. Harold Gutch.
5.4 In reference to the element in paragraph 4(a)(iii) of the Policy, the Complaint recites paragraph 4(b) of the Policy and sets out the circumstances, which shall be evidence of the registration and use of a domain name in bad faith under this paragraph. The Complaint goes on to state that evidence of bad faith registration and use of the domain names in dispute in this case is established by the following circumstances:
- The trademark "RED BULL" is one of the best known trademarks not only in Austria but all over the world, and it is inconceivable that the Respondent would not be aware of the fact.
- By virtue of the widespread use and reputation of the trademark "RED BULL", members of the public in Austria would believe that the Respondent was the Complainant or in some way associated with the Complainant. In addition, Internet-users in countries such as Austria and Germany, where the trademark "RED BULL" is very well-known by the public, would immediately believe that the disputed domain names are in some way associated with the Complainant.
- Any realistic use of the domain names in dispute must misrepresent an association with the Complainant and its goodwill, resulting in passing off, breaches of Unfair Competition legislation and trademark infringement.
- The domain names in dispute is not yet functional. There is no evidence that a website or other on-line presence is in the process of being established which will use these domain names. There is no evidence of advertising, promotion or display to the public of the domain name. As the Administrative Panel correctly stated in Telstra and Red Bull, "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 circumstances of the case, it can be said that the Respondent is acting in bad faith: "..... the concept of a domain name Ďbeing used in bad faithí is not limited to positive action; inaction is within the concept. .... it is possible .... for inactivity by the Respondent to amount to the domain name being used in bad faith.".
The Complaint states that the requirement of registration and use of the disputed domain names by the Respondent in bad faith is therefore fulfilled.
6. The Respondentís contentions in its e-mail response dated September 17, 2001.
6.1 In his email to the Center dated September 17, 2001, the Respondent states:
"We registered the domain to launch the game that we had developed. We asked for ATS 30 000 (EURO 2180) for our development expenses if we transferred the domain to Red Bull. If we would have registered the domain in order to sell it we would have most likely contacted Red Bull an made them an offer but they contacted us half a year after we had registered the domain. If we would have had the plan to sell the domain to Red Bull which spends EURO 427 Million on marketing in 2001, we would have asked a higher price. The EURO 2180 we asked for only reflect part of the costs of developing a concept for the homepage we were planing to launch. We never had the plan to transfer the domain to a third party."
7. Discussion and Findings
A. Procedural Matters
7.1 The Center received the Respondentís Response after the deadline indicated in the Notification of Complaint. The Panel therefore finds that it does not comply with paragraph 5 of the Rules.
The Respondent claims that he had tried to submit his Response on September 17, 2001, and that "most likely network problems" have prevented delivery in due course. The Respondent provided evidence for his claim through an E-Mail from his Service provider who confirms the Respondentís claim.
7.2 The Panel has no possibility to verify the Respondentís contentions but sees no reason for the conclusion that they are incorrect. The Panel further notes that he can accept submissions which do not comply with the time period specified in the Rules in exceptional cases (Rule 14). The Panel finds that the Respondentís contentions represent an exceptional case pursuant to Rule 14 and thus has decided to accept the Respondentís submissions.
B. Substantive Matters
7.3 Pursuant to paragraph 4(a), the Complainant must prove that each of the following three elements are present if the Complaint is to prevail:
(i) The Respondentís 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
7.4 Domain Name identical or confusingly similar to Complainantís trademark
The domain name in dispute is <redbull.tv>. The Complainant has numerous trademark applications and registrations in Austria and various other countries of the world of the words "RED BULL". Therefore, apart from the gTLD suffixes forming part of the domain name, which do not have a relevant distinguishing function in determining whether a domain name is identical or confusingly similar there is no difference between the disputed domain name and the Complainantís "RED BULL" trademarks.
The Panel thus finds that the Complainant has proven paragraph 4(a)(i) of the Policy.
7.5 The Respondent has no rights or legitimate interests in the Domain Name
The Complaint asserts that the Respondent has no rights or legitimate interests in
the domain name. The Respondent has not presented before the Panel any evidence of its use of or preparation to use the disputed domain name which would support a finding that the Respondent has a legitimate interest or rights in the domain and admits that he has no rights or legitimate interest in the domain name <redbull.tv>
Accordingly the Panel finds that the Respondent does not have any rights or legitimate interests in the domain name <redbull.tv>.
7.6 Domain Name has been registered and is being used in bad faith
The Panel notes that paragraph 4(b) of the Policy states:
"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:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
In order to show that the Respondent registered the domain name in bad faith, the Complainant has alleged: first, that it is likely that when the Respondent registered the domain name it knew or should have known of the existence of the Complainantís "RED BULL" trademarks; secondly, that as a result of the widespread use and reputation of the "RED BULL" trademarks, members of the public in Austria would believe that the Respondent was associated with the Complainant; and thirdly, that any realistic use of the domain names results in passing off, breaches of unfair competition legislation and trademark infringement. The Complainant further asserts that the fact that the <redbull.tv> domain name are not yet being positively used is not a bar to the domain names having been registered and used in bad faith; finally, the Complainant alleges that the Respondent has registered the disputed domain primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of his out-of-pocket expenses directly related to the domain name.
7.7 As regards to the bad faith registration and use of the disputed domain name by the Respondent, in the Panelís opinion, the circumstances set out in paragraph 4(b)(i) of the Policy exist in respect of this dispute: namely, that the Respondent registered the disputed domain name <redbull.tv> primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a competitor of the Complainant for valuable consideration in excess of his out-of-pocket expenses directly related to that domain name.
The Respondent has claimed that he registered the domain to launch a game in which a red bull an important role, but did not provide any credible information concerning the existence of the game. The only response from the Respondent in any time in this proceeding was the Respondentís e-mail to the Center dated September 17, 2001. No supporting facts such as a copy of the game, the website on which it could be reached or any other documentary evidence were provided by the Respondent. The lack of documentary evidence proving the Respondentís claims makes it impossible for the Panel to rule that he has made a legitimate use of the domain name, but leads the Panel to the conclusion that the reason propounded by the Respondent for registering the domain name is a pretext.
The Respondent has admitted that he was aware of the existence of the Complainant.
Given the widespread use and notoriety of the "RED BULL" mark, the Panel is convinced that the Respondent must have known that the use of the Domain Name for his Website would attract people looking for the official site of the Complainant and thus would mislead and deceive users on the Internet and that this inevitably and to the Respondentís knowledge would be able to disrupt or otherwise harm the reputation of the Complainant.
In the circumstances, the only possible explanation for the Respondentís selection of the Domain Name is that the Respondent has registered the Domain Name primarily for the purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainantís trademark or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name (paragraph 4(a)(i) and (iv).
The Respondentís argument that if he had had the plan to sell the domain to the Complainant, he would have asked a higher price does not contradict this conclusion.
The Panel thus decides that:
1) the Domain Name <redbull.tv> is confusingly similar to the trademark "RED BULL";"
2) The Respondent has no rights or legitimate interests in respect of the Domain Name <redbull.tv >;
3) the Domain Name <redbull.tv > has been registered and used in bad faith by the Respondent.
Pursuant to paragraph 4(i) of the Policy and pursuant to paragraph 15 of the Rules, the Panel requires that the Registrar, .TV Corporation International, transfers the Domain Name <redbull.tv> to the Complainant.
Dr. Torsten Bettinger
Dated: October 22, 2001