WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Craig Jackson
Case No. D2002-0068
1. The Parties
The Complainant is Red Bull GmbH, ("Red Bull"), a company incorporated in Austria, whose registered office is at Brunn 115, A-5330 Fuschl am See, Austria ("Complainant"). The Complainant is represented by Dr. Christian Hauer, Schönherr Barfuß Torggler & Partners, with a mailing address of Tuchlauben 13, A-1014 Wien, Austria.
The Respondent is Craig Jackson, with a mailing address of Private bag MBE P 224, Auckland, 1030, New Zealand ("Respondent").
2. The Domain Names and Registrar
The domain names subject to this Complaint are <redbullradio.com> and <redbullradio.net> (hereinafter the "Disputed Domain Names"). The registrar of the Disputed Domain Names is Register.com, Inc., 575 8th Avenue - 11th Floor, New York, NY 10018, United States of America ("Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 23, 2002 (electronic copy) and January 28, 2002 (hard copy) and assigned the case number D2002-0068.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), in accordance with Paragraph 4(a) of the Rules, and Paragraph 5 of the Supplemental Rules. The Administrative Panelist ("Panel") is satisfied that the Complaint satisfied the Rules and Supplemental Rules.
Notification of the Complaint and commencement of the administrative proceeding were given to Respondent by notice dated February 5, 2002. The notification of Complaint and commencement of administrative proceeding were sent by courier, facsimile, and e-mail. The Panel has seen Respondentís acknowledgment of the e-mail notification. There has been no return of the post and the facsimile notification and therefore the Panel is satisfied that the Complaint satisfied the Rules and Supplemental Rules with regard to notification. No substantive response was received by the expiry of the twenty-day deadline on February 26, 2002. Notification of Respondentís default was given on February 26, 2002, by email at the address given in the Complaint. Respondent answered the Notification of Respondentís default on February 26, 2002. The Panel is therefore satisfied that the notification of Respondentís default was effectively given.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers, or extensions of deadlines. The Panel has not found it necessary to request any further information from the parties, as a consequence of which the date scheduled for the issuance of the Panelís decision was April 11, 2002. The Panel has requested additional time to review the information received and the new decision date is April 18, 2002.
4. Factual Background
Under Paragraph 5(e) of the Rules, "[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the [C]omplaint." Since Respondent failed to submit a timely Response, the Panel adopts here the following asserted facts in the Complaint as undisputed facts, and decides the dispute between Complainant and Respondent based on the following undisputed facts and Respondentís non-substantive communications:
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. Currently the Red Bull energy drink is sold in 56 countries all over the world and the Complainant has sold approximately 900 million units in 2000. Currently, Complainant has an annual turnover of approximately EURO 790 million. Additionally, since 1995, the Complainant has sponsored and co-owned Formula One racing cars, the RED BULL SAUBER PETRONAS teams, which have been televised on a worldwide basis and which have made the trademark RED BULL ("Trademark") well known all over the world.
The Complainant has traded under the Trademark 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 Trademark, details of which are set out in Annex G of the Complaint. The various trademark registrations and applications cover an extensive range of goods and services, and span all of the 42 trademark classes. Moreover, the Complainant has registered, or applied to register, a range of trademarks consisting of or containing the Trademark in a large number of countries such as the United States, Canada, Russian Federation, United Kingdom, Germany, France, Spain, Italy, Ireland, China, South Africa, Saudi Arabia and also Australia and New Zealand. In addition, the Complainant has obtained various registered Community Trademarks including the mark "RED BULL."
The Complainant also states that it is the registrant of numerous domain names incorporating the Trademark, including <www.redbull.com >, < www.redbull.org>, <www.redbull.com.au> and <redbullentertainment.com>. The Complaint states that the principal website at <www.redbull.com> operated by the Complainant 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.
On July 11, 2001, Complainant sent Respondent a letter via mail informing the Respondent that the registration of the Disputed Domain Name <redbullradio.com> was an infringement of the Complainantís trademark rights in its "RED BULL" trademarks and trademark applications and demanded that Respondent transfer the Disputed Domain Name. Respondent did not respond to Complainantís letter.
Respondent is the registrant of the Disputed Domain Names <redbullradio.com> and <redbullradio.net>. The Disputed Domain Names were not functional at the time of the Complaint.
On February 5, 2002, Respondent acknowledged receipt of the Complaint by replying to the Center stating "The fact that I purchased > redbullradio.com and > redbullradio.net. Should be of no ones business but my own. There are a number of companies registered in new Zealand that bear the name "red bull" One being a drinks manufacturer (the complaint I believe) another being a mining industry company, My self am in the film television and radio industry, an industry that as fare as I can see has no conflict with any others of the same name" (sic.).
5. Partiesí Contentions
The Complainant contends:
(i) The Disputed Domain Names <redbullradio.com> and <redbullradio.net> registered by Respondent are confusingly similar to the Complainantís Trademark because they incorporate the entire Trademark. Complainant contends that consumers will associate the Disputed Domain Names with the Trademark and are likely to believe falsely that Complainant is affiliated with or endorses Respondent.
(ii) Respondent has produced no evidence to show a right or legitimate interest in the Disputed Domain Names. Complainant has not licensed or otherwise permitted Respondent to use its Trademark or to use any domain name incorporating its Trademark. Complainant further contends that since Respondent registered the Disputed Domain Names, they have not been functional. There is no evidence that a website or other on-line presence is in the process of being established which will use the Disputed Domain Names.
(iii) Respondent registered and used the Disputed Domain Names in bad faith. Citing the "fame" of the RED BULL trademarks, Complainant contends that Respondent necessarily had actual knowledge of Complainantís rights in its Trademark.
Complainant sent Respondent a demand letter on July 11, 2001, to which Respondent did not reply. This failure to respond, according to Complainant, is further evidence of Respondentís bad faith.
The Respondent contends:
Respondentís email response dated February 5, 2002, to the Center stated:
"In reply to your email. The fact that I purchased > redbullradio.com and > redbullradio.net. Should be of no ones business but my own. There are a number of companies registered in new Zealand that bear the name "red bull" One being a drinks manufacturer (the complaint I believe) another being a mining industry company, My self am in the film television and radio industry, an industry that as fare as I can see has no conflict with any others of the same name."
Respondentís email response dated February 26, 2002 to the Center stated:
"Hi, as i am a very small company that neither has the time or the resorses to fight a company the size of Red Bull I am giving up this fight. A fight that i may ad is totally un-fare as i am trying to make a product that has nothing to do with the complainants product. But the bully boy tactic of multi nationals wins out again. Viva la Globalisation."
To the extent either of Respondentís email communications is, more substantive, the Panel will attempt to take them in account. Otherwise, Pursuant to Paragraph 5(e) of the Uniform Rules, in the absence of a timely Response from the Respondent, "the Panel shall decide the dispute based on the complaint." The Panel will independently determine the merits of the Complaint on the basis of all evidence available.
6. Discussion and Findings
(i)The domain name registered by Respondent is confusingly similar to a mark owned by the Complainant.
The domain names in dispute are <redbullradio.com> and <redbullradio.net>. The Disputed Domain Names contain the Complainantís Trademark and imply endorsement by the Complainant.
The Complainant has numerous trademark applications and registrations in Austria and various other countries containing the RED BULL trademark. In Red Bull GmbH v. Tony Marinelli, WIPO Case No. D2001-0522, the Panel found that "Complainantís trademark Red Bull is composed of two common words of the English language, which in their combination are arbitrarily used to distinguish the energy drink sold by the Complainant and therefore are inherently distinctive. Such trademarks are in fact very strong marks." Therefore, apart from the TLO suffixes forming part of the Disputed Domain Names, which do not have relevant distinguishing function in determining whether a domain name is identical or confusingly similar to a trade mark or trade name, the difference between the Disputed Domain Names and the Complainantís RED BULL trademarks is the addition of the word "radio" in the Disputed Domain Names.
While the Disputed Domain Names of the Respondent are not identical with the Complainantís Trademark, the addition of the word "radio" to the Trademark in the Disputed Domain Names has, in the Panelís view, no impact on the viewerís primary focus, namely "redbull."
Prior decisions make it clear that common nouns, such as radio, are rarely distinguishing characteristic of domain names. Even though, the Complainantís principal business is the manufacture of energy drinks and not radio broadcasting, the strength of the Complainantís Trademark and the fact that Complainant sponsors certain broadcast and entertainment events, the Panel finds that the domain names <redbullradio.com> and <redbullradio.net> are confusingly similar to Complainantís Trademark.
The Panel finds for the Complainant on the first element, that Respondentís domain names are confusingly similar to the trademarks in which the Complainant has rights.
(ii)Respondent has no right or legitimate interest in the domain names.
Except for having registered and maintained the Disputed Domain Names, there is no evidence to suggest Respondent has ever used, or demonstrated preparations to use, the Disputed Domain Names, or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods and services. Although Respondent has stated that he is in the "film television and radio industry," Respondent provided no evidence to support this statement or his preparations to use the domain name in such industry. There is no evidence that Respondent has been commonly known by the Disputed Domain Names. There is also no evidence that Respondent is making or intends to make a legitimate non-commercial or fair use of the Disputed Domain Names. The Respondent is not licensed or otherwise permitted to use Complainantís Trademark or to apply for any domain name incorporating Complainantís Trademark. The Respondent has not proven that it has rights or legitimate interests in the Disputed Domain Names.
Based on Complainantís assertions, and Respondentís default, the Panel has no choice but to agree with Complainant that Respondent has no right or legitimate interest in the Disputed Domain Names.
The Panel therefore concludes that Respondent has no right or legitimate interest in the Disputed Domain Names. Mere registration alone cannot constitute such rights.
(iii)The domain names have been registered and are being used in bad faith.
The Panel finds that Respondent registered and used the Disputed Domain Names in bad faith. Paragraph 4(b) of the Policy provides four circumstances that are evidence of registration and use in bad faith: (i) evidence of the registration and use of a domain name in circumstances indicating registration for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant; (ii) evidence of registration of the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that Respondent has engaged in such conduct; (iii) evidence of the registration of the domain name for the purpose of disrupting the business of a competitor; or (iv) evidence of use of the domain name to intentionally attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the website.
The Panel finds that Complainantís Trademarks are well known and Respondent knew or should have known of Complainantís Trademarks. In fact, in Respondentís February 5, 2002 e-mail, Respondent acknowledges his awareness of Complainantís Trademark for drinks, but states that he is trying to make a product that has nothing to do with Complainantís product. While Respondent could have chosen almost any name for its website, it chose a name consisting of Complainantís Trademark. The Panel finds untenable the fact that Respondent chose a name which encompasses Complainantís Trademark without wishing to attract Internet users to Respondentís website by creating a likelihood of confusion with Complainantís mark as to the source, affiliation or endorsement of its products.
Although the Disputed Domain Names are currently inactive, Respondent has made it clear that he is trying to make a product that has nothing to do with Complainantís product. It appears that Respondent wishes to place these products on the websites of the Disputed Domain Names. The Panel assumes this to be true without any additional information from Respondent. The fact that Respondent registered but has not made use of the Disputed Domain Names has no bearing at all on the bad faith elements. It has been established in a number of cases that registration together with "inaction" and other facts can constitute bad faith use. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021, and Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055). The Complainant should not have to wait for Respondent to place its products (possibly competing products) on its websites in order to meet the element of bad faith. Otherwise, people everywhere would be allowed to hold hostage any domain name that they see fit.
The Panel finds that under Paragraph 4(b)(iv) of the Policy that Respondent registered the Disputed Domain Names to attract, for commercial gain, Internet users to Respondentís website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of a product or service on Respondentís website. Consequently, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith.
The Panel finds that the Complainant has succeeded in proving that the Disputed Domain Names were registered and are being used in bad faith.
Thus, Complainant has proven its three submissions in accordance with Paragraph 4(a) of the Policy, and accordingly, Complainant has succeeded in its Complaint.
In light of the foregoing, the Panel decides that the Disputed Domain Names registered by Respondent are confusingly similar to the Trademarks of Complainant, that Respondent has no right or legitimate interest in respect to the Disputed Domain Names, and that Respondentís Disputed Domain Names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(a) of the Policy, the Panel requires that registration of the Domain Names <redbullradio.com> and <redbullradio.net> be transferred to Complainant.
Timothy D. Casey
Dated: April 18, 2002