WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Jonathan Jackpot
Case No. D2013-1538
1. The Parties
Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
Respondent is Jonathan Jackpot of Sydney, Australia.
2. The Domain Name and Registrar
The disputed domain name <redbullxtra.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2013. On September 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 30, 2013.
The Center appointed Dinant T.L. Oosterbaan as the sole panelist in this matter on October 4, 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
According to the evidence submitted by Complainant, Complainant has numerous national and international trademark registrations for RED BULL, including various Community trademark registrations and registrations in Australia, the country where Respondent is located. Complainant is a leading worldwide producer of energy drinks. In addition Complainant has a large number of domain names and websites containing the RED BULL name and mark, in particular its main website under “www.redbull.com”. The trademark registrations of Complainant have been issued prior to the registration of the Domain Name.
The Domain Name <redbullxtra.com> was registered on June 11, 2013.
5. Parties’ Contentions
Complainant submits that the Domain Name is identical or confusingly similar to its RED BULL trademark as it contains the RED BULL trademark in its entirety. The addition of the generic and descriptive word “xtra” to the RED BULL trademark is not sufficient to distinguish the Domain Name from the RED BULL trademark.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name as Respondent is not affiliated or related to RED BULL in any way, nor is Respondent licensed or authorized to use the RED BULL trademark. Respondent is also not commonly known by the Domain Name and has not acquired any trademark or service mark rights in the name or trademark. Internet users are directed to a website under <redbullextra.com> of a business partner of Complainant located in Thailand. Respondent did not demonstrate use of the Domain Name in connection with a bona fide offering of goods or services. Respondent has registered the Domain Name to create the misleading impression of being associated with Complainant.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith as Respondent no doubt had knowledge of the well-known trademark of Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that the Domain Name should be transferred or cancelled:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the Domain Name is Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by Complainant in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established that it is the owner of numerous trademark registrations for RED BULL. The Panel notes that Complainant’s registrations predate the creation date of the Domain Name.
The Domain Name <redbullxtra.com> incorporates the entirety of the RED BULL trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety. The addition of the common, descriptive and non-distinctive element “xtra” is insufficient to avoid a finding of confusing similarity.
As already decided by other panels in other UDRP cases concerning the RED BULL trademark and domain names containing the RED BULL trademark to which generic and/or descriptive words were added, the Panel considers here that the Domain Name is confusingly similar to the RED BULL trademark. See, e.g., Red Bull GmbH v. Madummal K Durganand, WIPO Case No. D2007-1613; Red Bull 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.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register domain names incorporating its marks. Respondent is not 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 of Complainant. Based on the evidence provided by Complainant, Respondent only uses the Domain Name in order to redirect Internet users to a website of a partner of Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name in this case. Respondent is not commonly known by the Domain Name nor has it acquired trademark rights.
Respondent did not submit any response.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. Complainant has longstanding rights in the RED BULL trademark. Respondent knew or should have known that the Domain Name included Complainant’s famous mark. .
The Panel notes in this respect that Complainant’s RED BULL trademark can be considered as having a strong reputation and as being widely known all over the world as was held by previous panels. See, e.g., 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 Panel also notes that the Domain Name currently redirects or auto-forwards Internet users to a website of a partner of Complainant. The Panel further notes that the Domain Name incorporates Complainant’s well-known trademark in its entirety, which indicates, in the circumstances of this case, that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademark of Complainant as per paragraph 4(b)(iv) of the Policy.
The Panel finds that Complainant has proven that the 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 Domain Name <redbullxtra.com> be cancelled.
Dinant T.L. Oosterbaan
Date: October 11, 2013