WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. PrivacyProtect.org/Kim Bum
Case No. D2013-1542
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 PrivacyProtect.org of Nobby Beach, Queensland, Australia; Kim Bum of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <redbullskatearcade.com> is registered with Media Elite Holdings Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2013. On September 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 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 September 11, 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 September 12, 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 September 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2013.
The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on October 9, 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
4.1. The Complainant is the largest worldwide producer of energy drinks. It is the producer of the famous 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 159 countries all over the world and the Complainant has sold over 5.2 billion serving units globally in 2012 and over 138.0 million units in Australia in 2012. The RED BULL marks are protected in 207 jurisdictions worldwide.
4.2. Since its launch in 1987, the Complainant´s marketplace penetration has been focused on TV, cinema and radio. In 1987, Red Bull invested over € 577,000 in advertising and by 2012 this number had grown to over € 1.7 billion worldwide. Over € 49.6 million were spent in Australia alone in 2012.
4.3. 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.
4.4. 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 a further 206 jurisdictions worldwide such as Australia, Malta, the United States of America, the Russian Federation, Canada, Germany, the United Kingdom, Brazil, South Africa, Hong Kong, China, Taiwan, Japan and Saudi Arabia. In addition, the Complainant holds various registered Community Trademark registrations or applications. As examples, the Complainant submits copies of several trademark registrations as Annex G.
4.5. The involvement of the Complainant in sports and other events such Red Bull Stratos, Red Bull X Fighters, Red Bull Flugtag, Red Bull Music Academy, Red Bull Sauber Petronas, Red Bull Salzburg, and Red Bull New York has contributed to make the mark RED BULL extremely well-known all over the world. Currently Red Bull has more than 37.5 million fans on Facebook and in 2012 Red Bull videos have received more than 280 million views on YouTube.
4.6. 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 extremely 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. In a survey conducted in 2011 by the monthly magazine Magic Numbers, 94% of the worldwide respondents knew the brand Red Bull.
4.7. 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.
4.8. These facts are evidenced by an affidavit of Ms. Powers, Intellectual Property Counsel of the Complainant, provided as Annex E with enclosures. Further evidence of the Complainant’s activities can be found on the Complainant’s main website at “www.redbull.com”.
5. Parties’ Contentions
5.1. The Complainant asserts that the Respondent is the owner of the disputed domain name <redbullskatearcade.com>.
5.2. The Complainant contends that the disputed domain name incorporates the famous RED BULL mark in its entirety and that the Respondent is using the disputed domain name in bad faith. In particular, the disputed domain name was registered and is being used for running a private business of the Respondent and gaining profits from misleading Internet users searching the official website “www.redbull.com”.
5.3. The Complainant also contends that under the disputed domain name the Respondent is providing pay-per-click advertisements of third party products and that the Respondent derives advertising revenues based on the amount of the Internet traffic directed to its site.
5.4. Thus the Complainant states that the above confirms that the Respondent registered the contested domain name intentionally to promote his own business. The print-screens of the domain name <redbullskatearcade.com> as of September 3, 2013 are provided as Annex F.
5.5. Furthermore, the Complainant states that although “red” and “bull” are both ordinary words, they form a distinctive combination. In Red Bull GmbH v. MakeMySMS Pvt Ltd, WIPO Case No. D2012-2251, the Panel correctly stated that “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. D2001-0522, 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.” (Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035)
5.6. The Complainant asserts that the distinctive part of the disputed domain name is “redbull”, which is identical with the various trademarks and trademark applications containing the RED BULL mark owned by the Complainant. The additional wording “skatearcade” 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 WIPO Panel in Red Bull GmbH v. firstname.lastname@example.org, WIPO Case No. D2013-0806 (<redbullprotein.com>, <redbullprotein.net>): “The disputed domain names incorporate the Complainant`s trade mark in its entirety. The addition of the suffix ‘protein’ does not impact the overall impression of the words ‘red bull’. Previous UDRP panels have held that adding common terms (as is the case here) to a registered trade mark and registering the result as a domain name does not mitigate the confusing similarity between the domain name and the mark (see Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Deustche Telekom AG v. Gems N Pearls International Holding, WIPO Case No. D2005-0820)”. 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 Panel 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.”
5.7. Moreover the Complainant states that the addition of the suffix “skate arcade” refers to the game Red Bull Skate Arcade, created by the Complainant, and to many national websites referring to the game, such as the following: “www.redbullskatearcade.pl”, “www.redbullskatearcade.es”, and “www.redbullskatearcade.it.”
5.8. Furthermore the Complainant alleges that “‘It 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 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 case Roust Trading Limited v. AMG LLC ( WIPO Case No. D2007-1857).
5.9. The Complainant argues that the content of the website “www.redbullskatearcade.com”, as the consensus view of the WIPO Panelists shows, is irrelevant in the finding of confusing similarity. In particular, in Arthur Guiness Son & Co. (Dublin) Limited v. Dejan Macesic, ( WIPO Case No. D2000-1698) the Panel correctly 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.”
5.10. The Complainant insists that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domains 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 with the Complainant.
5.11. The Complainant asserts that the Respondent is not commonly known by the disputed domain name or the terms: “redbull” or “redbullskatearcade”. On the other hand, the Complainant is known by the game Red Bull Skate Arcade and by delusively similar websites “www.redbullskatearcade.pl”, “www.redbullskatearcade.es”, and “www.redbullskatearcade.it.” This confirms that the Respondent registered the contested domain name intentionally. 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 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 possible aim 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 or she has registered and is using the disputed domain name illegitimately.
5.12. The Complainant contends that none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are present. The Respondent is not authorized or related to 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 derive commercial advantage from its registration and to prevent the trademark holder from exercising its rights to the trademark and managing its presence in the Internet.
5.13. The Complainant alleges that it sent a Cease and Desist Letter to the Respondent on August 22, 2013. The correspondence is provided as Annex I. The Respondent has never responded to the warning letters. In the case Nintendo of America, Inc. v. Garrett N. Holland et al, WIPO Case No. D2000-1483, the Panel stated that ignoring such warning letters is evidence of bad faith. – “The sole Panelist concludes that, in the instant case, it is a likewise permissible inference to conclude bad faith use of the domain name since Respondent´s domain names are composed entirely of Complainant´s trademark and the impossibility of conceiving of a legitimate use of the Domain Name. Moreover, despite Complainant´s efforts to persuade Respondent to cease its unauthorized use of the Character Name Marks, Respondent has continued to violate Complainant´s trademark rights.” This is also applicable in a current case – the Complainant sent the Cease and Desist Letter to the Respondent stating that the usage of the contested domain is unlawful. However, the Respondent did not respond and still uses the domain name.
5.14. The Complainant states that 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. It is also certain that the Respondent deliberately did not cancel or propose to transfer the disputed domain name at a time when he was aware that such domain name was infringing the Complainant´s rights (i.e., when he or she received a warning letter from the Complainant). The Respondent´s obvious intent was to misleadingly divert consumers to the Respondent’s 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.
5.15. The Complainant alleges that on the website “www.redbullskatearcade.com” the Respondent displayed a large number of sponsored links and pay-per-click advertising, which proves the bad faith of the registration and use of the disputed domain name. Previous WIPO Panels have correctly pointed out that such activity constitutes bad faith. E. g., in L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, the panel considered that “many internet users, who type in one of the Domain Names 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 Respondent’s website is not connected with the owner of the mark. However, even where internet users realize when they view the Respondent’s web page that it is not connected with the owner of the mark, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on the sponsored links.”
5.16. In this sense the Complainant insists that “‘[r]egistration 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’ ”, as the Panel stated in case Société pour l´Ouvre et la Mémoire d´Antoine de 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 word RED BULL, as evidenced by the facts established in paragraphs 5.1 and 5.2, it is obvious that the Respondent was well aware of the Complainant´s trademarks and their reputation.
5.17. Finally, the Complainant contends that, with respect to the indicia of bad faith set out in section 4(b) of the Policy, the Panel in Arthur Guiness Son & Co. (Dublin) Limited v. Dejan Macesic, supra, correctly stated: “The circumstances set out in paragraph 4(b) of the Policy are not exhaustive. They are to be taken as evidence of both bad faith registration and bad faith use. Even if, contrary to the panel’s finding, the respondent’s Website were noncommercial, the panel would make the following separate findings:
- the respondent registered the disputed domain name in bad faith because he must have known of the Complainant´s famous mark before he registered the domain name; and
- the domain name is being used in bad faith because it is being used intentionally to mislead Internet users into visiting the Respondent´s Website in the belief that they are visiting the Complainant´s Website.”
5.18. In this case the Respondent also registered and used the domain name in bad faith because he or she knew of the Complainant´s trademark and was using the disputed domain name with the intent to make Internet users convinced that they were visiting the Complainant´s Website. Such behavior is considered as bad faith, especially if with commercial intent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Paragraph 4(a) of the Policy, as affected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the registrant (the 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.
6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy.
6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”.
A. Identical or Confusingly Similar
6.4. The Complainant has exclusive rights in the mark RED BULL and has provided evidence of this fact.
6.5. The Complainant’s mark has received worldwide recognition. The disputed domain name incorporates the entirety of the mark RED BULL adding the term “skatearcade” as a common term that does not distinguish the disputed domain name from the Complainant´s well known trademark. This Panel accepts the decisions in Red Bull GmbH v. email@example.com, WIPO Case No. D2013-0806 and Red Bull GmbH v. MakeMySMS Pvt Ltd., WIPO Case No. D2012-2251 which establish that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s well-known and widely-registered trademark RED BULL, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and commercial use of the same for several years. The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
6.6. According to paragraph 4(c) of the Policy, the burden of demonstrating respondent’s lack of rights or legitimate interests rests with Complainant.
6.7. In this case, the Panel finds based on the record that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name which incorporates the Complainant’s RED BULL mark. Therefore, the burden of production shifts to the Respondent to bring forward evidence of its rights or legitimate interests, if such evidence exists.
6.8. The Respondent has failed to rebut the Complainant’s arguments and to provide evidence of its rights or legitimate interests in the disputed domain name, as demonstrated by the Respondent’s default.
6.9. Such failure by the Respondent contributes to admitting the truth of the Complainant’s version, according to Red Bull GmbH v. MakeMySMS Pvt Ltd., supra and cases mentioned therein.
6.10. The Complainant states that the Respondent has no license, authorization or granted permission to use the RED BULL mark, and there is no evidence to the contrary. Considering that the Complainant’s mark has achieved worldwide fame, it is highly unlikely that the Respondent chose the disputed domain name just by chance.
6.11. Therefore, for all the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
6.12. Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:”
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or
(ii) that the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s web site or location.
6.13. In regard to registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark RED BULL is clearly established, and the Panel finds that the Respondent knew or should have known of the Complainant’s trademark because the disputed domain name incorporates the RED BULL mark in its entirety, adding the term “skatearcade”.
6.14. 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 may 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.
6.15. 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.
6.16. In this scenario, the Panel finds that the Complainant has presented evidence to satisfy its burden of proof as to whether the Respondent has registered and is using the disputed domain name in bad faith.
6.17. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <redbullskatearcade.com> be transferred to the Complainant.
José Pio Tamassia Santos
Date: October 14, 2013