WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Stuart McColl
Case No. D2010-1509
1. The Parties
The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy, Poland.
The Respondent is Stuart McColl of Sequim, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <redbullcaps.com> (the “Domain Name”) is registered with Melbourne IT Limited, dba/ Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2010. On September 8, 2010, the Center transmitted by email to Melbourne IT Limited, dba/ Internet Names Worldwide a request for registrar verification in connection with the Domain Name. On September 16, 2010, Melbourne IT Limited, dba/ Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details, and indicating that the Domain Name <redbullcaps.com> has been placed on lock to prevent any transfers or changes to the registration information during the proceedings.
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”).
The undersigned Panel has independently determined and agrees with the Center’s assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and 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 September 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2010. The Center received an email communication from the Respondent on September 17, 2010, to which the Center acknowledged receipt on September 20, 2010. However, the Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on October 8, 2010.
The Center appointed Pedro W. Buchanan Smith as the sole panelist in this matter on October 21, 2010. 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.
This Panel further considers that the Complaint was properly notified to the registered Domain Name holder, as provided for in paragraph 2(a) of the Rules.
The Panel has not received any further requests from the Complainant or the Respondent regarding submissions, waivers or extensions of deadlines and the Panel has not found it necessary to request any further information, statements or documents from the Parties, nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of Domain Name dispute proceeding.
The language of this proceeding is English, pursuant to paragraph 11(a) of the Rules.
4. Factual Background
According to the information provided by the Complainant, and due to the fact that the same was not disputed by the Respondent, the following facts and circumstances are recognized within this proceeding:
The Complainant is one of 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 internationally since 1992. Currently, the Red Bull energy drink is sold in 157 countries all over the world and the Complainant has sold over 3.9 billion units in 2009.
Since its launch in 1987, the Complainant’s marketplace penetration was focused on television, cinema and radio. In 1987, the Complainant invested over EUR 577,000 and already in 2009, this number has grown to over EUR 244.7 million worldwide. Based on these figures, the brand has become the unchallenged market leader in all its markets.
Additionally, the Complainant has promoted the RED BULL trademark and the device of two fighting bulls by very substantial international advertising. Much of this advertising by its nature is global or regional.
Furthermore, 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-time reports through 87 TV channels around the world. The Complainant also organizes the RED BULL Flutag event during which competitors attempt to fly in homemade flying machines. The event was first held in Vienna, Austria, in September 1992 and attracted around 25,000 spectators.
First held in 1998 in Berlin, the RED BULL Music Academy (workshops on music history, technology and business) was established in Dublin, New York, London, Sao Paulo, Cape Town, Rome and Seattle, increasing the international mix of students to 32 countries.
Another essential part of the Complainant’s marketing activities is sponsorship of sports events. In particular, the Complainant has been extensively involved in Formula One Racing. In 1995 the Complainant began its participation in Formula One Circuit/Racing, sponsoring the RED BULL Sauber Petronas team which it co-owned until 2001. In January 2005, Red Bull took over the former Jaguar team and re-named it “Red Bull Racing”. In addition, the Complainant has been sponsoring a large number of other sports events around the world which attract a large public audience.
In June 2005, the Complainant agreed to take on the role as football club FC Red Bull Salzburg's main sponsor. In 2006, the Complainant became the main sponsor of New York's Major League Soccer team, re-naming it “Red Bull New York”.
This involvement of the Complainant in sports and other events has contributed to make the mark RED BULL well-known all over the world.
Therefore, through sales activities, television broadcasts, Internet activities and events sponsored by the Complainant, the RED BULL energy drink and the trademark RED BULL have become well-known in many countries and famous in Austria. That reputation is confirmed by the statistics of studies conducted in 2003 in Germany and Austria, where 83.7% and 90% of the general public spontaneously associated the trademark RED BULL with the Complainant’s Red Bull energy drink.
Apart from the media, the Complainant also promotes the RED BULL energy drink in other marketing materials such as sales folders, consumer information leaflets, retail displays, crowners, flyers, packaging material, sampling cars, clothes and so on. These facts are evidenced by an Affidavit of the General Counsel of the Complainant, which was provided with the Complaint as Annex E. Further evidence of the activities of the Complainant can also be found on the Complainant’s main website at “www.redbull.com”.
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, all of which regard marketing activities in relation to the famous trademark RED BULL. In 2009, the Complainant’s website “www.redbull.com” received approximately 271 million page views. It includes the Complainant’s local country and events websites. One single page view causes an average of 8 hits on the Complainant’s websites. The Complainant’s merchandising website “www.redbullshop.com” offers for sale a range of Red Bull sports-related goods like clothes, shoes and caps.
The various trademark registrations and applications 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 202 jurisdictions worldwide such as the United States of America, Canada, Germany, the United Kingdom of Great Britain and Northern Ireland, the Russian Federation, Australia, Brazil, South Africa, Hong Kong, SAR of China, People’s Republic of China, Taiwan, Province of China, Japan and Saudi Arabia. In addition, the Complainant holds various registered Community Trademark registrations or applications. As examples, the Complainant submits copies of the following registrations as Annex G to the Complaint:
1. Community Trademark 005225611 RED BULL (stylized) with priority date July 27, 2006;
2. International Trademark Registration 961854 RED BULL with priority date September 27, 2007;
3. International Trademark Registration 972114 RED BULL with priority date September 27, 2007;
4. United States Trademark Registration 3479607 RED BULL ENERGY DRINK and design in color with priority date October 29, 2007;
5. United States Trademark Registration 3092197 RED BULL with priority date December 31, 2003;
6. International Trademark Registration 945573 RED BULL and design with priority date of July 25, 2007.
The Complainant has run its business under the name Red Bull in Austria since 1987 and internationally since 1992. The Complainant operates its main website under “www.redbulI.com”.
5. Parties’ Contentions
The Complainant’s trademark is famous, as it has a very strong reputation and is widely known all over the world (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).
The Respondent is the registrant of the Domain Name <redbullcaps.com>. The Domain Name incorporates the RED BULL mark in its entirety. The Domain Name was registered and is being used for running private business of the Respondent and gaining profits from marketing and advertising third parties’ products and services. On the website “www.redbullcaps.com” the Respondent displays sponsored links and pay-per-click advertising.
Although using the RED BULL mark in the domain name, it is obvious that the Domain Name is not used for marketing relations, products or services related to, and authorized by the Complainant. Screen-prints of the website under the Domain Name were provided as Annex F to the Complaint.
The Domain Name is identical with or confusingly similar to trademarks in which the Complainant has rights. The Complainant is the owner of multiple registrations and applications of trademarks, consisting of, or containing the RED BULL mark.
Although “red” and “bull” are both ordinary words, they form a distinctive combination. In Red Bull GmbH v. Tony Marinelli, WIPO Case No. D2001-0522, the panel correctly stated that the “Complainant’s 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.” This was confirmed in Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035.
The distinctive part of the Domain Name <redbullcaps.com> is “redbull”, which is identical with the various trademarks and trademark applications containing the RED BULL mark owned by the Complainant. The additional word “caps” as a common term does not change the overall impression of the designation as being a domain name connected to the Complainant and does not reduce the likelihood of confusion, as stated by the panel in the case of the <redbullgames.com> domain name (Red Bull GmbH v. Domains by Proxy lnc./New Gold Mine, WIPO Case No. D2007-0684), and <redbullscasino.biz> (Red Bull GmbH v. Emory Virgil, WIPO Case No. D2005-0381). As the panel stated in Red Bull GmbH v. Russell Snyder, WIPO Case No. D2007-0915 (<betterthanredbull.com>,<betterthenredbull.com>): “Potential customers would, in the view of the [p]anel and based on the evidence of the Complainant’s General Counsel, instantly recognize the combined expressions in the domain names as being concerned with Red Bull. Indeed, it is probably the only part of the domain names that would be recognized”.
Furthermore, “[i]t is well-established that the incorporation of a complainant’s mark in full within a disputed domain name, may be sufficient to establish confusing similarity between the mark and the disputed domain name – see, for example, Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, referred to in the three-member panel decision The Ritz Hotel Ltd v. Damir Kruzicevic, WIPO Case No. D2005-1137, and Quintessentially UK v. Mark Schnoreberg / Quintessentially Concierge, WIPO Case No. D2006-1643” - as the panel stated in the case of Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
While seeking the Complainant’s commercial website Internet users are intentionally diverted to the Respondent’s website for the purposes of commercial gain by creating confusion as to the Complainant’s affiliation with the Respondent’s websites. Internet users worldwide would associate the Domain Name with the name of the Complainant’s well-known marks, in particular because Red Bull is famous for organizing and sponsoring sports events worldwide in connection with which official Red Bull merchandise (including Red Bull caps) is available. Moreover, the Complainant is substantially using its trademarks also for merchandising products such as caps.
By registering the Domain Name the Respondent is therefore misrepresenting itself as being somehow connected with Red Bull GmbH or with the Complainant in general.
As regards the content of the website under the <redbullcaps.com> Domain Name, the consensus view is that it is irrelevant in the finding of confusing similarity. In particular, in Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2001-1698, the panel correctly stated that “there is an important distinction between the domain name on the one hand and the [w]ebsite on the other. The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the [w]ebsite, they have already been confused by the similarity between the domain name and the [c]omplainant's mark into thinking they are on their way to the [c]omplainant’s [w]ebsite”. Nevertheless, in the present case the Respondent displays a large number of sponsored links and pay-per-click advertising on its website and as a result gains commercial profits.
For all these reasons, there is a confusing similarity between the Complainant’s trademarks and the Domain Name.
The Respondent has no rights or legitimate interests in respect of the Domain Name. 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 or with the Complainant.
The Respondent is not commonly known by the Domain Name. 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 a domain name which wholly contains the Complainant’s RED BULL trademark and varies it slightly by adding the purely descriptive and common term “caps” at the end.
The Respondent has registered the Domain Name to create the misleading impression of being in some way associated with the Complainant, which is not the case. The Respondent was and is quite obviously trying to exploit the fame and reputation of the Complainant’s trademarks. The possible aim was to attract to the Respondent’s website Internet users looking for information on the Complainant and its activities (particularly in relation to original Red Bull caps) and divert them from legitimate websites of the Complainant.
The Respondent had no legitimate reason for registering the Complainant’s trademark as a domain name. He has registered and is using the Domain Name illegitimately.
Furthermore, the panel correctly stated in case CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071, “A domain name is not merely an address, it is also a means of identification.”
As noted in the Final Report of the First WIPO Internet Domain Name Process: “Domain names were intended to perform a technical function in a manner that was convenient to human users of the Internet. They were intended to provide addresses for computers that were easy to remember and to identify without the need to resort to the underlying IP numeric address. Precisely because they are easy to remember and to identify, however, domain names have come to acquire a supplementary existence as business or personal identifiers.” The adoption by the Respondent of an Internet address substantially identical or confusingly similar to that of the name, Internet address and trademarks of the Complainant must inevitably and misleadingly divert consumers to that address and have the effect of tarnishing the trademarks. This is the same in this case - 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.”
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 Domain Name. The Respondent is making illegitimate use of the Domain Name with intent to misleadingly divert Internet users to his website.
The Domain Name was registered and is being used in bad faith. The trademark RED BULL is widely known and the Respondent must have been aware of this fact when it deliberately registered the Domain Name. The Respondent’s obvious intent was to misleadingly divert consumers to his website, causing confusion among consumers by creating the impression of a 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 trademarks.
Both the Respondent’s registration and use of the Domain Name were intentional to attract Internet users to the website. The Domain Name appears designed to attract Internet users who are looking for the Complainant’s products (particularly Red Bull merchandising articles like official Red Bull caps) 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.
On the website “www.redbullcaps.com” the Respondent displays a large number of sponsored links and pay-per-click advertising which proves the bad faith of registration and use of the Domain Name. A panel has rightly pointed out that such activity constitutes bad faith, e.g. in case L’Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, “[t]he [p]anel considers that many Internet users, who type in one of the [d]omain [n]ames seeking information about the owner of, or products sold under, the corresponding mark, are liable to click on one of the sponsored links without realizing that the [r]espondent’s website is not connected with the owner of the relevant mark. However, even where internet users realize when they view the [r]espondent’s web page that it is not connected with the owner of the mark, the [r]espondent is liable to profit from their initial confusion, since they may still be tempted to click on the sponsored links.”
The content of the website “www.redbullcaps.com” includes a wide search function. On the website there are many links parked on the Respondent’s website. Furthermore, this website also contains links to the official Red Bull local website (e.g. <redbullmobile.at>, <redbull.pl> - depending on what country the visitor is from) and thus heightens confusion since users will be reinforced in their assumption that Domain Name <redbullcaps.com> is in some way officially related to Red Bull in the light of the fact that the website also contains links to official Red Bull domains. As the panel stated in the case Compart AG v. Compart.com I Vertical Axis, Inc., WIPO Case No. D2009-0462, “[t]he [r]espondent is deriving a financial benefit from web traffic diverted through the [d]omain [n]ame to linked websites on the domain parking page. The [p]anel therefore also accepts that the [r]espondent has intentionally attracted Internet users to its websites or other on-line locations for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. Accordingly, the [p]anel finds that the [d]omain [n]ame was registered in bad faith and is being used in bad faith”. The screen-print of the Respondent’s website presenting the link to “www.redbullmobile.at” was attached as Annex F1 to the Complaint.
“Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorisation and no legitimate purpose to use the mark is a strong indication of bad faith”, as the panel stated in Société pour l’Oeuvre el la Mémoire d'Antoine de Saint Exupéry - Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. Therefore, given the Complainant’s numerous trademark registrations for, and its wide reputation in, the phrase “Red Bull”, it is obvious that the Respondent was well aware of the Complainant’s trademarks and their reputation.
Furthermore, in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, the panel stressed that: “use which intentionally trades on the fame of another can not constitute a “bona fide” offering of goods or services. To conclude otherwise would mean that a [r]espondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” Again, this applies equally to this particular case.
In light of all of the above, the requirement of registration and use of the Domain Name by the Respondent in bad faith is fulfilled for the Domain Name
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel considers that the Respondent, by registering the Domain Name with the Registrar (an Internet Corporation for Assigned Names and Numbers –ICANN– accredited Domain Name Registrar), agreed to be bound by all terms and conditions of the Domain Name Registration Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registrar’s Agreement by reference), which mandates that proceedings be conducted according to the Rules and the selected administrative dispute resolution service provider’s supplemental rules, in the present case being the Supplemental Rules. Therefore, the disputed subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner, by entering into the above mentioned Registration Agreement, the Respondent agreed and warranted that neither the registration of his Domain Name nor the manner in which it may intend to use such Domain Name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, the Respondent’s Domain Name registration services may be suspended, cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the Parties and particularly the Respondent in this case be given adequate notice of proceedings; that the Parties may have a fair and reasonable opportunity to exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the Parties be notified of the appointment of this Panel; and that both Parties be treated with equality in these administrative proceedings.
In the case subject matter of this proceeding, the Panel is satisfied that these proceedings have been carried out by complying with such fundamental due diligence requirements, and particularly concerning the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This Panel finds that the Respondent’s Domain Name <redbullcaps.com> is confusingly similar to the Complainant’s RED BULL trademark. The Complainant’s trademark was registered significantly earlier than the date of registration of the Respondent’s Domain Name <redbullcaps.com>.
In addition, the Domain Name <redbullcaps.com> wholly comprises the Complainant’s RED BULL trademark, with the addition of the word “caps”. That although the word “caps” is generic, its composition with the Complainant’s trademark makes the Domain Name <redbullcaps.com> confusingly similar to the Complainant’s RED BULL trademark.
Furthermore, the addition of the gTLD “.com” is not a distinctive element, it is just a necessary element required for the registration of a second level domain name. Finally, the blank spaces between trade names or trademarks in Internet domain names are omitted, and therefore do not constitute a distinctive element to any trademark, as being used by the Complainant in its main website “www.redbull.com”.
B. Rights or Legitimate Interests
This Panel finds, in general, from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that the Respondent has any rights or legitimate interests in connection with the Complainant’s RED BULL trademark nor with the Domain Name; that the Domain Name is being used to intentionally misdirect to the Respondent’s website visitors who attempt to visit the Complainant’s website; that the Respondent is not commonly known by the Domain Name as contemplated under paragraph 4(c)(ii) of the Policy; nor that 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 as contemplated under paragraph 4(c)(iii) of the Policy. The Panel therefore 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
The Panel finds, from the information and facts that were analyzed, and from the lack of evidence to the contrary, that the registration and use of the Domain Name <redbullcaps.com> by the Respondent was in bad faith pursuant to paragraph 4(b)(iv) of the Policy, in particular but without limitation, in view of the fact that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark RED BULL, as to the source, sponsorship, affiliation or endorsement of the website “www.redbullcaps.com”.
Therefore, and in consideration of the Complaint’s compliance with the formal requirements for this Domain Name dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in paragraphs 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel orders that the Domain Name <redbullcaps.com> be transferred to the Complainant.
Pedro W. Buchanan Smith
Dated: November 3, 2010