WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. WhoisGuard / Marcel Bremers
Case No. D2013-1464
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 WhoisGuard of Los Angeles, California, United States of America (“US”); and Marcel Bremers of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <redbull4free.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2013. On August 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 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 August 21, 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 amendment to the Complaint on August 23, 2013.
The Center verified that the Complaint together with the amendment to 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 August 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2013.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on September 26, 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.
The language of the proceeding is English being the language of the Registration Agreement.
4. Factual Background
The Complainant is the producer of energy drinks, including the famous “Red Bull” energy drink, which was first sold in Austria in 1987 and internationally since 1992. Currently, the Red Bullenergy drink is sold in 159 countries all over the world and the Complainant has sold over 5.2 billion units globally and over 1.9 million units in the US in 2012. The RED BULL marks are protected in 205 jurisdictions worldwide.
The Complainant operates its main website under “www.redbull.com” which 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. The Red Bull websites received approx. 430.0 million page views in 2013. It includes the Complainant's local country and events websites. One single page view causes in average 8 hits on Red Bull websites.
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 is actively involved in sponsorship of sports events.
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 owns also various trademark registrations and applications for RED BULL in 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 205 jurisdictions worldwide such as the US, Canada, Russian Federation, Germany, the United Kingdom of Great Britain and Northern Ireland, Australia, Brazil, South Africa, Hong Kong, China, Taiwan, Japan and Saudi Arabia. In addition, the Complainant holds various registered Community Trademark registrations or applications, inter alia:
- IR 956851 Red Bull & Device with priority date July 25, 2007 - designated for the US
with US registration No. 3718691;
- IR 961854 RED BULL with priority date March 19, 2008;
- US 3479607 RED BULL ENERGY DRINK & Device (in color) with priority date October
29, 2007; and
- US 3092197 RED BULL with priority date December 31, 2003.
5. Parties’ Contentions
The Complainant requested the Panel for the cancellation of the disputed domain name, submitting that all requirements under paragraph 4 (a) of the Policy are fulfilled.
First, the Complainant submitted that the disputed domain name is identical with or confusingly similar to trademarks in which the Complainant has rights since the disputed domain name incorporates the famous RED BULL mark in its entirety. In asserting this, the Complainant put that its trademark is famous, as it has a very strong reputation and is widely known all over the world, which has been confirmed in various UDRP cases (see Red Bull GmbH v. Pregio Co. Ltd., WIPO Case No. D2006-0909; see Red Bull GmbH v. Web Wax Designer, WIPO Case No. D2006-0746). Although “red” and “bull” are both ordinary words, they form a distinctive combination (see Red Bull GmbHv. Tony Marinelli, WIPO Case No. D2001-0522).
The distinctive part of the disputed domain name <redbull4free> is “redbull”, which is identical with the various trademarks and trademark applications containing the RED BULL mark owned by the Complainant. The additional wording “4free” as a common terms do 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 (see also RedBull GmbH v. Domains by Proxy Inc./New Gold Mine, WIPO Case No. D2007-0684; Red Bull GmbH v. Emory Virgil, WIPO Case No. D2005-0381).
Second, the Complainant submitted that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant had 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 the Complainant’s marks. A combination of the words “red” and “bull” is purely fanciful. Therefore, in the Complainant’s view, nobody would legitimately choose this combination or any variation thereof, unless seeking to create an association to the Complainant.
Third, the Complainant submitted that the disputed domain name was registered and is being used in bad faith. To prove this, the Complainant underlined that the Respondent is not commonly known by the disputed domain name or terms “redbull” or “redbull4free”. This confirms, according to the Complainant, that the Respondent registered the disputed domain name intentionally. Based on the fame and reputation of the RED BULL mark and the activities of the Complainant all over the world, the Complainant is of the opinion that the Respondent purposefully registered the disputed domain name, which consists of a variation of the Complainant’s well-known mark. The Respondent has registered it to create the misleading impression of being in some way associated with the Complainant. The Respondent was and is quite obviously trying to exploit the fame and reputation of the Complainant’s trademarks. The only possible aim, in the Complainant’s opinion, 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 Respondent had no legitimate reason for registering the Complainant’s trademark as a domain name. He registered and is using the disputed domain name illegitimately.
Moreover, the Complainant emphasized that the Respondent did not conduct any activity under disputed domain name. First, the fact that currently the domain name is under passive holding does not prejudge that the domain name is not used in bad faith - as stated in Redcats S.A. And La Redoute S.A. v. Tumay Asena, WIPO Case No. D2001-0859. Second, even though the website is inactive, the Respondent is offering under that website the scripts including all “Red Bull” signs used, but without the domain name on e-Bay. The Respondent prepared also a video on Youtube which explained the idea of offering the scripts of website to buy and created the Facebook page. Both were taken down after sending to the Respondent a Cease and Desist letter.
Furthermore, as put by the Complainant, registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith (see Societepour VOeuvre et la Memoire d'Antoine de Saint Exupery - Succession Saint Exupery - 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 word RED BULL it is obvious that the Respondent was well aware of the Complainant’s trademarks and their reputation. The above clearly shows that the Respondent’s registration and use of the disputed domain name were intentional to attract Internet users to the website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(b) the respondent has no rights or legitimate interests in the domain name; and
(c) the domain name has been registered and is being used by the respondent in bad faith.
A complaint may only be admitted if the above criteria are all met.
A. Identical or Confusingly Similar
First, the Complainant has proven that the disputed domain name <redbull4free.com> is identical to the name and trademarks of the Complainant. Since years the Complainant holds worldwide registrations for a number the trademarks containing the mark RED BULL. Its worldwide presence makes the Complainant’s trademark a famous one. It is of note, that the trademark RED BULL was ranked number 61 of the 100 most valuable brands corporations worldwide according to the "Eurobrand 2012" ranking published by The European Brand Institute in September 2012.
The confusing similarity of the disputed domain name <redbull4free.com> to the Complainant’s trademark RED BULL is apparent from a simple visual comparison. The disputed domain name is a replica of the Complainant’s mark. This is sufficient to satisfy the requirement that the disputed domain name is confusingly similar to a mark in which the Complainant has rights (see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 wherein the UDRP panel found that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”). Any added generic words or phrases (“4free”) do not cure this illegitimate use of the Complainant’s trademark RED BULL, neither are they sufficient to establish that the disputed domain name is not confusingly similar to the trademark RED BULL.
The Panel shares the view that as regards the content of the website under the disputed domain name, it is irrelevant in the finding of confusing similarity (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, where the Panel stated that “there is an important distinction between the domain name on the one hand and the Website 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 Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”).
The Panel therefore finds that the disputed domain name <redbull4free.com> is confusingly similar to the Complainant’s trademark and, as a consequence, the Complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorised to use the Complainant’s trademark. There is no evidence of the Respondent’s use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In fact, the Respondent does not run any business under the name “Red Bull”and has never used such expression to identify its products or services.
Nonetheless, the Respondent was given the opportunity to contest the Complainant’s prima facie case against it. However, the Respondent did not submit any evidence that would demonstrate that it has any rights to or legitimate interests in the disputed domain name <redbull4free.com>.
The Panel therefore infers from the Respondent’s default and the Complainant’s contentions that the Respondent has no serious arguments to prove its rights to or legitimate interests in the disputed domain name <redbull4free.com>. The Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
The Complainant is the owner of the trademark and worldwide and famous known mark RED BULL and the owner of a number of domain names and trademark registrations containing the words “Red Bull”. The trademark RED BULL belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. Notably, according to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property, confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered).
Since the trademark RED BULL is one of the best known trademarks all over the world and the Respondent must have been aware of this fact when it deliberately registered the disputed domain name. The Respondent’s obvious intent was to misleadingly divert the consumers to the created website, causing confusion among consumers in the way of creating the impression of 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. The Panel shares the Complainant’s contentions that the disputed domain name appears designed to attract Internet users who are looking for the Complainant’s products 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.
Bad faith is found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith and this clearly is the present case (see LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303). Moreover, the Respondent offers on “www.ebay.de” the scripts of the website design including the all “Red Bull” signs. There is no explanation for this.
It is also widely supported that passive holding of a domain name, which the Panel finds to be the case in the particular circumstances here, can amount to the respondent acting in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decoragóes ME, WIPO Case No. D2009-1335; and LACER,S.A. v Constanti Gómez Marzo, WIPO Case No. D2001-0177).
As a result, the Panel finds that the disputed domain name <redbull4free.com> was registered and is being used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.
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 <redbull4free.com> be cancelled.
Date: October 7, 2013