WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. MakeMySMS Pvt Ltd.
Case No. D2012-2251
1. The Parties
The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by “Drzewiecki, Tomaszek & Wspólnicy” Spólka Komandytowa, Poland.
The Respondent is MakeMySMS Pvt Ltd. of Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name <redbullsms.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on November 15, 2012. On November 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 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 November 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2012.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on December 18, 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 following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant produces the RED BULL energy drink, which was first sold in Austria in 1987 and internationally since 1992. It is currently sold in 159 countries all over the world. In 2011, the Complainant sold over 4.6 billion units of RED BULL energy drinks.
4.2 The Complainant consistently invests in advertising its RED BULL brand and products. In 2011, it spent over EUR 412.8 million compared to EUR 577,000 in 1987 when the brand was first launched.
4.3 The Complainant also sponsors various events and sports teams as part of its advertising and marketing strategy. These events and sports teams attract a lot of attention and spectators. They include the following:
(a) Sponsorship of Felix Baumgartner’s freefall where he climbed up to 128,100 feet (39, 045 metres) in a capsule carried by a helium-filled balloon and jumped out. The feat broke the speed of sound reaching an estimated speed of 833.9 mph (1,342.8 km/h).
(b) Red Bull X-Fighters, a freestyle motocross competition involving risky stunts and jumps between 12 riders.
(c) Red Bull Air Race World Championship, which is televised through 87 TV channels around the world.
(d) Red Bull Flugtag where participants attempt to fly in homemade flying machines.
(e) Red Bull Racing (and previously the RED BULL Sauber Petronas racing team) racing team in the Formula One racing event.
(f) FC Red Bull Salzburg football team.
(g) Red Bull New York, a New York Major League soccer team.
4.4 The Complainant also organises the Red Bull Music Academy (workshops on music history, technology and business) in various countries. It was first held in 1998 in Berlin and has been extended to include Dublin, New York, London, Sao Paulo, Cape Town, Rome, Toronto, Melbourne, Barcelona, and Seattle.
4.5 Through sales activities, television broadcasts, Internet activities and events sponsored by the Complainant, the RED BULL energy drink and the RED BULL trademark have become extremely well-known worldwide. In statistics conducted in 2003 in Germany and Austria, 83.7% and 90% of the general public spontaneously associated the trademark RED BULL with the Complainant’s RED BULL energy drink.
4.6 The Complainant also promotes RED BULL energy drinks using the common marketing materials such as sales folders, consumer information leaflets, retail displays, crowners, flyers, packaging material, sampling cards and clothing apparel.
4.7 In India, the Complainant’s first sales of RED BULL energy drinks commenced in 2000. Since its launch, the sales volume in India has grown rapidly from more than 5 million units in 2006 to more than 19 million units in 2010. The Complainant is also involved in the sponsorship of local sports and cultural events such as the ATP Tennis Open, Moto Extreme Run, Jaipur Polo Championship, National Shooting Championship, Auto Expo 2007, Star Screen Awards, Filmfare Awards and the Bartender’s Academy.
4.8 The Complainant has registered many generic and country-code top level domain names comprising the RED BULL trademark.
4.9 The Complainant’s main website located at “www.redbull.com” contains information on the RED BULL energy drink, sports activities, videos of sports events sponsored by the Complainant and links to other authorised RED BULL websites. In 2010, the main website received approximately 85.8 million page views.
4.10 The RED BULL trademarks, comprising the RED BULL words and the device of two fighting bulls are protected in 205 jurisdictions worldwide including India, Russian Federation, Canada, Germany, United Kingdom of Great Britain and Northern Ireland, United States of America, Australia, Brazil, South Africa, China, Japan and Saudi Arabia. The trademark registrations and applications cover an extensive range of goods and services and span all 45 trademark classes.
4.11 In India, the RED BULL trademark has been publicly confirmed by the Indian Patent and Trademark Office as a well-known trademark.
4.12 The Respondent is the registrant of the disputed domain name <redbullsms.com>. The Respondent uses the disputed domain name to offer bulk SMS services i.e. the ability to send group short electronic messages to a large number of people simultaneously.
5. Parties’ Contentions
5.1 The Complainant asserts that RED BULL is a well-known trademark and that it has the rights to the RED BULL trademark on a worldwide basis including India. The Complainant further asserts that the disputed domain name is identical or confusingly similar to the Complainant’s distinctive RED BULL trademark by incorporating the RED BULL trade mark in its entirety.
5.2 The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name because:
(a) the Complainant has not licensed, authorised 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.
(b) the Respondent is not commonly known by the disputed domain name as the Respondent’s economic activities are undertaken under the name “MakeMySMS Pvt Ltd”. The Respondent is not known by the name “redbullsms” or “redbull”.
5.3 The Complainant further contends that the Respondent has registered and is using the disputed domain name in bad faith and relies on the following:
(a) the Respondent’s consistent failure or refusal to respond to the Complainant’s cease and desist letters dated June 5, 2012, June 13, 2012 and September 3, 2012;
(b) the notoriety of the Complainant’s well-known RED BULL trademark and the reputation thereof;
(c) the services offered by the Respondent through the disputed domain name seeks to provide the ability for users to send bulk SMS. The selection and use of the disputed domain name is intentional as the Respondent seeks to mislead and to confuse Internet users of an affiliation between the Complainant’s business and activities and the Respondent’s business and activities, where in fact there is none; and
(d) the distinctive nature of the RED BULL trademark which comprises a combination of the words “red” and “bull” and that no person would select such a combination unless seeking to be associated with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) that the disputed domain name has been registered and is being used in bad faith.
6.1 Identical or Confusingly Similar
The Panel is satisfied with the evidence adduced by the Complainant to evidence its rights to the trademark RED BULL. The trademark is not only registered by the Complainant in numerous jurisdictions but it has also been used extensively by the Complainant on a worldwide basis through the sales of its main product, namely energy drinks, and extensive marketing and advertising efforts including the sponsorship of inter alia sports and cultural events.
The Complainant’s RED BULL trademark has also been recognised as a famous and well-known mark in previous UDRP decisions (see Red Bull GmbH v. Pregio Co Ltd, WIPO Case No. D2006-0909 and Red Bull GmbH v. Web Wax Designer, WIPO Case No. D2006-0746).
The Panel agrees with the Complainant’s contention that although “red” and “bull” are both ordinary words, they form a distinctive combination. In the case Red Bull GmbH v. Tony Marinelli, WIPO Case No. D2006-0909, the panel 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 finding was also confirmed in Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035.
The additional letters “sms” do not alter the overall impression of the designation as being a domain name connected to the Complainant and does not reduce the likelihood of confusion (see Red Bull GmbH v. Domains by Proxy Inc/New Gold Mine, WIPO Case No. D2007-0684 and Red Bull GmbH v. Emory Virgil, WIPO Case No. D2005-0381).
In the case of Red Bull GmbH v. Russell Snyder, WIPO Case No. D2007-0915 involving the domain names <betterthanredbull.com> and <betterhtenredbull.com>, the panel stated that:
“[p]otential customers would, in the view of the panel and based on the evidence of the Complainant’s General Counsel, instantly recognise 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 recognised.”
As such the Panel finds that the disputed domain name is confusingly similar to the Complainant’s RED BULL trademark for the purpose of the Policy.
6.2. Rights or Legitimate Interests
The Complainant’s allegations have not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests in respect of the disputed domain name.
There was also no evidence to indicate that the Respondent was known by the disputed domain name or the names “red”, “bull” or “sms”.
The Complainant further confirmed that the Respondent is not associated with the Complainant nor had the Respondent been authorised to use any of the Complainant’s trademarks including the RED BULL trademark.
On the contrary, the evidence seems to suggest that the Respondent has registered and is using the disputed domain name in order to exploit the fame and reputation of the Complainant’s RED BULL trademark for economic reasons. In all likelihood, the Respondent is using the disputed domain name to confuse Internet users of a connection or affiliation between the Complainant’s products and services or activities and those being offered by the Respondent. Through this initial impression confusion, the Respondent sought to provide bulk SMS services from which it could derive revenue.
The failure of the Respondent to reply to the Complaint and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel could not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain name.
Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
6.3. Registered and Used in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant’s trademark when it registered and started using the disputed domain name. The degree of similarities between the disputed domain name and the Complainant’s distinctive RED BULL trademark lend weight to the Complainant’s assertion that the Respondent had knowledge of the Complainant’s trademark when it registered the disputed domain name.
The Panel notes that in India, the trademark RED BULL is a publicly certified well-known mark by the Indian Patent and Trademark Office. The Panel is also convinced that the RED BULL trademark enjoys significant goodwill and reputation on a worldwide basis.
In light of the strength of the evidence adduced, the Panel is of the considered view that the Respondent was aware that the Complainant was the owner of the RED BULL trademark when it sought to register the disputed domain name. In the case of Kahn Lucas Lancaster, Inc v. Marketing Total S.A, WIPO Case No. D2007-1236 it was held that:
“The Panel does not hesitate to find that Respondent knew of Complainant’s RED BULL mark when Respondent registered the disputed domain name, since the trade mark had been in existence and widely used before registration of the dispute domain name. In the words of another panel, “[i]t seems [highly] unlikely … that Respondent would have chosen this name randomly.”
Upon receiving several notices and demands from the Complainant to cease use of the disputed domain name, the Panel notes that the Respondent refused or failed or neglected to respond to such notices. Although mere neglect, refusal or failure ought not amount to bad faith per se, it does indicate that the Respondent had knowledge of the Complainant’s claim to the disputed domain name and the RED BULL trademark. The continued use by the Respondent of the disputed domain name in such circumstances does suggest an element of bad faith on its part.
The Panel also agrees with the contention by the Complainant that the Respondent registered the disputed domain name to exploit the Complainant’s reputation and goodwill in the RED BULL trademark and to gain an unfair economic advantage by misleading Internet users by using the Complainant’s trademark in its economic activity. There does not seem to be any other plausible reason as to why the Respondent selected the distinctive RED BULL trademark to undertake its commercial Internet activities.
In light of the above, the Panel finds that that the Respondent has registered the disputed domain name and is using the disputed domain name in bad faith.
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 <redbullsms.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Date: January 7, 2013