WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Israel Cohen / Domain Privacy Service / WantedPlay Limited
Case No. D2013-1117
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 Israel Cohen of London, United Kingdom of Great Britain and Northern Ireland / Domain Privacy Service of Provo, Utah, United States of America / WantedPlay Limited of Floriana, Malta.
2. The Domain Name and Registrar
The disputed domain name <pokerredbull.com> is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2013. On June 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 4, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 5, 2013.
The Center verified that the Complaint together with the amended 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 July 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2013. A Response was filed on July 29, 2013 by WantedPlay Limited.
The Center appointed Andrew F. Christie as the sole panelist in this matter on August 15, 2013. 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 is the producer of an energy drink sold under the trademark RED BULL. The RED BULL energy drink was first sold in 1987, in Austria. It has been sold internationally since 1992, and is currently available in 159 countries. In 2012, the Complainant sold more than 5.2 billion serving units globally, and more than 347.7 million serving units in Great Britain, of the RED BULL energy drink.
In 2012, the Complainant invested over EUR 1.7 billion in increasing the market penetration of its energy drink. The Complainant has promoted its RED BULL trademark and the device of two fighting bulls by very substantial international global and regional advertising, including through the “Red Bull Stratos project”, the “Red Bull X-Fighters event”, and the “Red Bull Music Academy”. Since June 2005 the Complainant has been the main sponsor of FC Red Bull Salzburg. This involvement in sports and other events has contributed to make the RED BULL trademark well-known all over the world. Currently the Complainant has more than 37.5 million fans on Facebook, and in 2012 Red Bull Videos received more than 280 million views on Youtube. The Complainant also promotes its product in other marketing materials, including sales folders, consumer information leaflets, retail displays, flyers, packaging material, and sampling cars.
The Complainant and its subsidiaries hold national and international registrations for the trademark RED BULL in 205 jurisdictions around the world, including Austria, Malta, the United States of America, the United Kingdom of Great Britain and Northern Ireland, and Australia, dating from at least as early as 2002.
The disputed domain name was registered on November 8, 2012. The Complainant has provided screenshots of the website to which the disputed domain name resolved, which shows it redirected to a website at “www.pokerbigbull.com” providing on-line games such as poker, bingo and casino. Since the filing of the Complaint, it appears that the disputed domain name no longer resolves to any website.
On January 25, 2013, the Complainant sent a cease and desist letter to WantedPlay Limited, this being the entity referred to in the contact details section of the website at “www.pokerbigbull.com”. WantedPlay Limited replied on March 12, 2013, stating that its business was in online gaming and/or betting which was is a market sector completely different to the market sector of the Complainant’s energy drink product. WantedPlay Limited indicated that it would be willing to explore the possibility of removing the word “red” from its domain names. No such change occurred.
On June 19, 2013, a WhoIs search indicated that the registrant of the disputed domain name was “Domain Privacy Service”. On June 20, 2013, the Registrar responded to the Center’s request for registrar verification stating that the registrant of the disputed domain name is “Israel Cohen”. WantedPlay Limited, Domain Privacy Service, and Israel Cohen are listed as the Respondent in the Amended Complaint, and are collectively referred to herein as “the Respondent”. Only WantedPlay Limited submitted a Response.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights because: (i) the distinctive part of the disputed domain name is “redbull” which is identical to its various trademark registrations and applications containing the RED BULL trademark; and (ii) the additional word “poker” is a common term and so its inclusion 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.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Complainant has not licensed or otherwise permitted the Respondent to use any of its RED BULL trademarks or any variations thereof; (ii) a combination of the words “red” and ”bull” is purely fanciful and nobody would legitimately choose this combination or any variation thereof unless seeking to create an association with the Complainant; (iii) the Respondent is not commonly known by the disputed domain name or the terms “redbull” or “pokerredbull”; (iv) based on the fame and reputation of the RED BULL trademark 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 consists of a variation of the Complainant’s well-known RED BULL trademark to create the misleading impression of being associated with the Complainant; and (v) the possible aim of the disputed domain name was to attract to the Respondent’s website Internet users looking for information on the Complainant and its activities and divert them from legitimate websites of the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the trademark RED BULL is one of the best known trademarks all over the world, including in Great Britain where the Respondent Israel Cohen is seated, and the Respondent Israel Cohen must have been aware of this fact when he deliberately registered the disputed domain name; (ii) the Respondent deliberately did not cancel or transfer the disputed domain name after receiving the Complainant’s letters concerning the infringement of the Complainant’s rights; (iii) the Respondent’s obvious intent was to misleadingly divert consumers to its website by creating the impression of relation with, or sponsorship or endorsement of, the Respondent by the Complainant; and (iv) by causing confusion with the Complainant’s trademarks and websites the Respondent is disrupting the Complainant’s business by diverting consumers away from the Complainant’s websites.
On July 29, 2013, the Respondent WantedPlay Limited transmitted by email to the Center a response stating that “WantedPlay operates various types of gaming products such as a Poker network, Casino games, multi-player Bingo network and a live casino”, that it has “commercial agreements with various customers who act as white labels and operate gaming sites under WantedPlay Limited’s license”, that it “provides technological and regulatory services and nothing more”, and that the disputed domain name is owned by one of its customers. The Response concludes by stating that “We ask you to contact the owner of these domain directly as WantedPlay Limited is not a part in the dispute”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s registered trademark RED BULL and adds the word “poker” and the gTLD “.com”. The Panel finds the addition of the word “poker” does not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark. The distinctive component of the disputed domain name is “red bull”, which is the Complainant’s trademark. In the Panel’s opinion, it is highly likely that many Internet users would consider that a domain name containing the string “redbull” was associated with the Complainant’s business. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its RED BULL trademark. The Respondent has provided no evidence establishing that it has trademark or other rights to the string “redbull”, which is the dominant and distinctive component of the disputed domain name. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Furthermore, the Respondent has not provided any evidence that it has been commonly known by the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was first registered many years after the Complainant first registered its RED BULL trademark. The evidence on the record provided by the Complainant with respect to the use of its RED BULL trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s RED BULL trademark, and knew that it had no rights or legitimate interests in the disputed domain name. The evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, or to attempt to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s RED BULL trademark as to the affiliation of that website. For all these reasons, the Panel is satisfied that the disputed domain name has been registered and is being used 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 <pokerredbull.com> be cancelled.
Andrew F. Christie
Date: August 30, 2013