WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Winkel
Case No. D2013-1659
1. The Parties
The Complainant is Red Bull GmbH, of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spółka Komandytowa, Poland.
The Respondent is Winkel, Schmitz Evelin, of Gottestal, Germany.
2. The Domain Name and Registrar
The disputed domain name <redbullnewera.com> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2013. On September 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2013, 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 October 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2013.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on November 5, 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 Complaint, the Complainant is the largest worldwide producer of energy drinks, and its Red Bull beverage is sold in 159 countries, with more than 5.2 billion servings having been sold in 2012.
The Complaint also states that Red Bull has been actively promoted and advertised since 1987, and that the brand has become the market leader. The Complaint contains fairly extensive descriptions of a number of high-visibility Red Bull promotions in sports events and the like.
The Complainant also has numerous active websites, with the main website being “www.redbull.com”.
The Complainant further states that it holds numerous trademark registrations for RED BULL in all 45 trademark classes and in more than two hundred jurisdictions. Annexes to the Complaint set forth, as examples, four of the registrations that cover Germany, where the Respondent apparently resides, as well as documentation of the Complainant’s intellectual property rights. In particular, the Complainant submits a lengthy affidavit from Ms Jennifer. Powers, the Complainant’s intellectual property counsel, detailing the history and rise of the Complainant’s Red Bull brand and trademarks.
5. Parties’ Contentions
The Complainant maintains that the disputed domain name contains the entirety of its famous trademark and is therefore confusingly similar to such mark. In this respect the Complainant cites and appends a number of analogous cases it brought against other respondents confirming this, the most recent of which is Red Bull GmbH v. Affiliate Master, WIPO Case No. D2013-0804.
The Complainant asserts that this confusing similarity is present notwithstanding the fact that the disputed domain name also apparently contains another well-known mark, NEW ERA, which is held by a third-party manufacturer of baseball caps.
The Complainant further asserts that it has not licensed or permitted the Respondent to use any of its trademarks, or register a domain name including its trademarks. The Complainant also alleges that the Respondent is not known by the name “Red Bull” or “RedBullNewEra”, and that one can only conclude that the Respondent purposely created the disputed domain name to give the misleading impression of a link with the Complainant’s famous name and mark.
As to the bad faith registration and use of the disputed domain name, the Complainant points to the above factors, to the Respondent’s failure to answer a cease and desist letter dated August 5, 2013, and to the sale of goods, notably baseball caps, with the “Red Bull” (and “New Era”) designations or logos on the Respondent’s website. The Complainant’s principal conclusion is that “[t]he Respondent’s obvious intent was to misleadingly divert the consumers to [the] created website, causing confusion… [with the intent] to exploit the reputation of the Complainant and the RED BULL trademarks”.
The Complainant accordingly requests that the disputed domain name be cancelled.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
There is no question that the Complainant’s well-known trademark comprises the first seven letters of the disputed domain name, and that is here sufficient to establish confusing similarity with the Complainant’s trademarks. This is generally true even where, as here, other words are added after the recitation of the Complainant’s trademark. See e.g. Nokia Group v Mr. Giannattasio Maria, WIPO Case No. D2002-0782, Quintessentially UK v. Mark Schnorrenberg/ Quintessentially Concierge, WIPO Case No. D2006-1643. Here also the addition of “New Era” after “Red Bull” does not, in the Panel’s view, substantially diminish the initial confusing similarity. This first element of the Policy is accordingly proven.
A potential issue is raised by the fact that, according to the Complainant, the disputed domain name also contains a well-known trademark to which a third-party has rights. This issue is discussed in Section 7, below.
B. Rights or Legitimate Interests
The Complainant has convincingly asserted, and the Respondent has failed to deny, that the Respondent has been granted no rights or license for the Complainant’s trademarks, and no permission to register the disputed domain name. The Respondent is not known by the disputed domain name and there is no evidence or indicia before the Panel that would suggest that the Respondent has any rights or legitimate interests in such name. The Respondent having not replied to the Complaint, the Panel considers that the Complainant has met its burden on this element of the Policy.
C. Registered and Used in Bad Faith
The Respondent’s bad faith registration and use is evident to this Panel. The Complainant has made a strong showing of the longstanding renown of its RED BULL trademark and products; it is not plausible that the Respondent registered the domain name serendipitously and without knowledge of the Complainant’s rights. The failure to answer or act upon a cease and desist letter is further indicia of bad faith. Bad faith use is apparent inasmuch as the disputed domain name is shown to be used to attract Internet users for commercial gain by trading on the confusion with the Complainant’s trademarks and fame. See Policy, paragraph 4 (b)(iv). Thus this third element of the Policy is also proven by the Complainant.
The Complainant here requests the remedy of cancellation. This distinguishes and simplifies this case from other decisions involving disputed domain names which contain a trademark owned by a third-party. See notably the extensive discussion and citations in Lilly ICOS LLC v. Christina Poe, WIPO Case No. D2006-1155. As the Complainant here does not request the transfer to it of the disputed domain name it is not necessary to consider whether such transfer might here be appropriate in light of the third-party trademark rights that may reside in the disputed domain name. It is likewise unnecessary to consider, as the panel did in Lilly ICOS LLC v. idesigns, WIPO Case No. D2005-0482, whether cancellation might be an ultimately inadequate remedy in the face of repeat registrations – an issue that has not been evoked in this case.
On the facts here the Complainant is entitled to the cancellation remedy it seeks, which remedy will not cause any third-party rights to be transferred to it. This is consistent with the remedies and reasoning in previous UDRP decisions Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313, and Lilly ICOS LLC v. idesigns, WIPO Case No. D2005-0482.
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 <redbullnewera.com> be cancelled.
Date: November 18, 2013