WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Maxwell Arnold
Case No. D2014-1589
1. The Parties
Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
Respondent is Maxwell Arnold of Toronto, Ontario, Canada, self-represented.
2. The Domain Name and Registrar
The disputed domain name <rumandredbull.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 16, 2014. On September 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing 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 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2014. The Response was filed with the Center on October 13, 2014.
On October 16, 2014, the Center received a Supplemental Filing from Complainant. The Center acknowledged receipt of the Supplemental Filing on October 16, 2014. On October 22, 2014, the Center received a Supplemental Filing from Respondent, which was forwarded to the Panel on October 23, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 21, 2014. 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 Panel will consider Complainant and Respondent's Supplemental Filings in the interest of ensuring that each Party has a fair opportunity to present its case. The Panel considers its decision to be in accordance with paragraphs 10 and 12 of the Rules, which in effect grant the Panel discretion to determine the admissibility of supplemental filings received from either Party.
The panel has found it necessary to extend the Decision due date to at least November 24, 2014.
4. Factual Background
Complainant is the producer of the well-known 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 and Complainant has sold over 5.2 billion serving units globally in 2012, with over 115 million units sold in Canada in 2012, where Respondent is located.
Since its launch 1987, Complainant's marketplace penetration has been focused on TV,cinema and radio. In 1987, Complainant invested over EUR 577,000 and already in 2012, this number has grown to over EUR 1.7 billion worldwide. Over EUR 35.3 million was spent in Canada in 2012. Complainant sponsors various events and sports teams as part of its advertising and marketing strategy, including:
- Sponsorship of Felix Baumgartner's freefall where he climbed up to 128,100 feet (39,045 meters) in a capsule carried by a helium-filled balloon and jumped out. The feat broke the speed of sound reaching an estimated speed of 833.9 mph (1,342.8 km/h).
- Red Bull X-Fighters, a freestyle motocross competition involving stunts and jumps between 12 riders.
- Red Bull Air Race World Championship, which is televised through 87 TV channels around the world.
- Red Bull Flugtag, where participants attempt to fly in homemade flying machines.
- Red Bull Racing, a racing team in the Formula One racing event.
- FC Red Bull Salzburg football team.
- Red Bull New York, a New York Major League soccer team.
- Red Bull Music Academy, with workshops on music history, technology and business in various countries. It was first held in 1998 in Berlin and has been extended to include Dublin, New York, London, Sao Paulo, Cape Town, Rome, Toronto, Melbourne, Barcelona, and Seattle.
This involvement of Complainant in sports, culture and other events, as well as other sales activities, television broadcasts, Internet activities, has contributed to make the RED BULL trademark well-known all over the world. Currently, Red Bull has more than 38.4 million fans on Facebook and in 2012 Red Bull Videos have received more than 280 million views on YouTube. The mark's reputation is confirmed by the statistics of studies conducted in 2003 in Germany and Austria, where 83.7% and 90% of the general public, respectively, spontaneously associated the RED BULL mark with Complainant's Red Bull energy drink.
Complainant is the registrant of a large number of domain names containing the mark RED BULL, both under generic and country code top-level domains. Complainant operates its principle website at "www.redbull.com", where the site contains information on the Red Bull energy drink, sport and other events sponsored by Complainant, and links to other Red Bull websites, all of which are evidence of the marketing activities of Complainant in relation to its RED BULL mark. The Red Bull websites received approximately 430 million page views in 2013. RED BULL was ranked number 61 of the 100 most valuable brands worldwide according to the "Eurobrand 2012" published by The European Brand Institute in September 2012.
Complainant's trademark registrations and applications for its RED BULL mark cover an extensive range of goods and services and span all of the 45 Nice Classification classes. Complainant and its subsidiaries hold national and international trademark registrations or applications containing the RED BULL mark in 207 jurisdictions worldwide, such as Canada, the United States of America, Malta, Russian Federation, Brazil, Australia, the United Kingdom of Great Britain and Northern Ireland, South Africa, Hong Kong, Germany, Taiwan, Japan and Saudi Arabia. In addition, Complainant holds various registered Community Trade Mark registrations or applications.
The Domain Name was registered by Respondent on May 17, 2014.
5. Parties' Contentions
(i) Identical or confusingly similar
Complainant emphasizes that previous UDRP panels have found in various cases that Complainant's RED BULL trademark is famous, as it has a very strong reputation and is widely known around the world.
As to confusing similarity, Complainant refers to the case of Red Bull GmbH v. Winkel, WIPO Case No. D2013-1659, which concerned the domain name <redbullnewera.com>. The panel there found that Complainant's well-known RED BULL trademark comprised the first 7 letters of the disputed domain name and this was sufficient to establish confusing similarity with Complainant's trademarks, even where other words were added after Complainant's mark. Complainant urges that the same should apply to this case, where the only difference between Complainant's mark and the Domain Name is the addition of the term "rumand" before Complainant's mark. Such an addition does not diminish the confusing similarity between the Domain Name and Complainant's trademarks. Further, as regards the content of the website linked to the Domain Name, the consensus view of UDRP panelists is that it is irrelevant in the finding of confusing similarity.
(ii) Rights or legitimate interests
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name. Complainant states it has not licensed or otherwise permitted Respondent to use any of its RED BULL trademarks nor to register or use any domain name incorporating them. Respondent is not commonly known by the Domain Name and was obviously trying to exploit the fame and reputation of Complainant's marks. 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 Complainant.
Complainant argues that based on the fame and reputation of the RED BULL mark and the activities of Complainant all over the world, it is beyond doubt that Respondent registered the Domain Name to create the misleading impression of being in some way associated with Complainant. Complainant asserts that Respondent is trying to exploit the fame and reputation of Complainant's trademarks. Complainant urges therefore that Respondent had no legitimate reason for registering Complainant's trademark as part of the Domain Name and has done so illegitimately.
Complainant states that Respondent could be known by "fashionqs.com", "fashionqs" or "cranberrywithice," as Respondent registered the domain name <fashionqs.com> and stated that he holds the Instagram user name, "cranberrywithice". Further, there is nothing to suggest that Respondent is using the Domain Name in connection with any bona fide offering of goods or services, so there does not appear to be any possible basis for Respondent to claim a right or legitimate interest under paragraph 4(c)(i) of the Policy. Respondent has not conducted any activity under the Domain Name, as the only content of the website linked to it provides:
"Maxwell Arnold's Blog - rumandredbull.com. I am proudly the living embodiment of "not normal". Doubt it? Read my blog and you'll see what I mean."
Complainant asserts that Respondent did not start writing a blog. Consequently, there is no evidence of legitimate use of the Domain Name by Respondent. Respondent is not entitled to register and use the Domain Name referring to Complainant's trademarks. The trademarks registered by Complainant are not connected in anyway with Respondent's activity. However, Internet users while searching for the official website of Complainant could be misled. Complainant cites a previous UDRP case to make the point that a domain name is not merely an address; it is also a means of identification. The adoption by Respondent of an Internet address substantially identical or confusingly similar to that of the name, Internet address and trademarks of Complainant must inevitably mislead and divert consumers to that address and have the effect of tarnishing the RED BULL marks. None of the circumstances under the Policy, paragraph 4(c) are present. Respondent is making illegitimate use of the Domain Name with intent to derive commercial advantage from its registration and to prevent Complainant from exercising its rights to the trademark and managing its presence on the Internet.
(iii) Registered and used in bad faith
As for bad faith, Complainant submits that as set out above, the Domain Name was registered only because it contains the famous RED BULL mark. Respondent must have chosen the Domain Name in full knowledge of Complainant's mark and for the purposes of trading off on the goodwill attaching to that mark. Complainant sent a cease and desist letter to Respondent on July 31, 2014, and a reminder on August 27, 2014. According to Complainant, Respondent ignored this correspondence and is still using the Domain Name. Prior UDRP panels have found that ignoring warning letters is evidence of bad faith.
Complainant emphasizes that the trademark RED BULL is one of the best known trademarks in the world and Respondent must have been aware of that fact when it registered the Domain Name. Complainant argues that Respondent's intent must be to misleadingly divert consumers to his website, causing confusion among the consumers in the way of creating the impression of relation with, or sponsorship or endorsement by, Complainant for commercial gain. Complainant urges that Respondent has registered and is using the Domain Name with the purpose to create an affiliation to Complainant, its products and trademarks. The Domain Name misleads Internet users, who could expect that the Domain Name is connected in some way with, or is authorized by, Complainant.
Complainant states that the website linked to the Domain Name seems to be under the construction. Referencing a prior UDRP case, Complainant argues that to have to wait for some future use of the Domain Name to occur in order to demonstrate Respondent's bad faith use is to render intellectual property law into instrument of abuse by Respondent. The result would be the likelihood of the accumulation and use of disputed domain names for the implicit, if not explicit, purpose of misappropriating or otherwise unlawfully undermining Complainant's goodwill and business. The fact that this misappropriation may occur in an as yet undetermined manner and at an uncertain future date does not negate Respondent's bad faith. On the contrary, it raises the specter of continuing bad faith abuse by Respondent of Complainant's mark, name and related rights and legitimate business interests. Respondent only mentioned on the website linked to the Domain Name that he will write a blog, but the content of this potential blog is unknown.
Respondent is passively holding the Domain Name, which alone is sufficient to constitute bad faith. Furthermore, 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, as previous UDRP panels have found. Therefore, given Complainant's numerous trademark registrations and wide reputation in the RED BULL mark, it is obvious that Respondent was well aware of Complainant's trademarks and their reputation.
Respondent states he is a freelance writer who has had a history of blogging. He claims to have used the following criteria as the basis for choosing the Domain Name:
- Respondent wanted to start a personal blog with his own domain name and he began to look for suitable domain names available for registration. Both of Respondent's personal name variations in the ".com" top-level domain (i.e., <maxwellarnold.com> and <maxarnold.com>) were held by other registrants. This created a need for Respondent to seek an alternative.
- Respondent is fond of the reggae track, "I'm drinking rum and Red Bull", by Jamaican reggae artist Beenie Man, which was released in 2010. Multiple YouTube videos featuring the song have view counts in the millions and the official version has close to five million views. Stemming from his adoration of this track, Respondent chose to use the phrase "Rum and Red Bull", stylized as "rumandredbull", as the namesake of his soon-to-be blog, as well as other corresponding social media pages.
- Respondent's use of a term that stems from this reggae track is consistent with his previous choice, in November of 2013, to register the Instagram username "cranberrywithice", which also comes from a song. The use of "cranberrywithice", as opposed to "rumandredbull", was made in the absence of the availability of the "rumandredbull" Instagram username, which had been taken by another Instagram user, possibly due to the popular use of the term in pop culture.
- Additionally, Respondent acquired the Facebook page username "rumandredbull.com" as an additional facet to the name that Respondent sought to use in his blogging. Simpler versions of the term, such as "rumandredbull",are already in use presumably for the same reasons as the Instagram username not being available; that is, the popular usage of the term "rum and Red Bull".
Respondent states these social media usernames are mentioned to indicate that Respondent's use of terms relevant to the "rum and Red Bull" song track have been established previously in good faith. Respondent believes that Complainant's claim lacks validity for a number of reasons, including numerous websites and social media pages exist online, which use the term Red Bull in some manner. Most notably, there is a fan page for the cocktail "Vodka Red Bull" on Facebook having some 171,000 fans.
Respondent argues that Complainant asserts its dominance of the energy drink market; however, it is this dominance that causes people to use the term "Red Bull" as a general reference to energy drinks, regardless of the brand. Respondent asserts that this occurs in a manner that is akin to a trademark becoming "genericized" – just as was the case in Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921), holding that the term "aspirin" had become a generic reference to a type of drug, as well as in King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963), where the term "thermos" was determined to be a generic reference to vacuum sealed containers. On the same principle, songs such as "Rum and Red Bull" have come about not to insinuate endorsement nor to infringe on a trademark holder's rights, but rather to make a reference to the use of products pertaining to the trademark in real life. While previous UDRP cases have held that other registrations of domain names containing the term "Red Bull" were unfair or malicious, Respondent's claims his choice of the Domain Name was done on the basis of a song lyric.
(i) Identical or confusingly similar
Respondent states it would be pointless to discuss whether or not the Domain Name bears an identical appearance to a mark in which Complainant has rights. Respondent acknowledges the "Red Bull" term does appear in the Domain Name, which may create the appearance of prima facie identicalness, which is largely the basis of Complainant's claim. Respondent states it has been proven overwhelmingly in past cases under the UDRP that claims of a domain name being "confusingly similar" are almost impossible for a respondent to defeat, although Respondent urges the scope of this should be open to interpretation for the sake of neutrality.
For this reason, Respondent states that it does not contest Complainant's contention that elements that may be construed as "confusingly similar" are present in the Domain Name. As Respondent's arguments rely primarily on the use of the term "Red Bull" as a lyric in the "rum and Red Bull" song track, no response is put forth by Respondent for this particular section, as this type of analysis is not appropriate for a dispute of this nature.
Respondent, however, does raise that Complainant does not produce or market beverages containing rum or any alcoholic beverage. Respondent states that as such beverages are outside of the scope of Complainant's product offerings, the addition of "rum and" to the beginning of the Domain Name does not "step on the toes of" Complainant in its course of business.
Respondent argues also that the facts of this case do not bear sufficient similarity to Red Bull GmbH v. Winkel, WIPO Case No. D2013-1659 (concerning <redbullnewera.com>), for that case to be relevant. The domain name in that case contained the NEW ERA trademark, bearing no conceivable connection to the term "Red Bull". By contrast, the Domain Name <rumandredbull.com> forms a coherent sentence comprised of a song lyric. Thus, the Red Bull GmbH v. Winkel case is not a suitable precedent, as it does not take into consideration what role a trademarked term may play when combined with generic words, particularly from a song lyric.
(ii) Rights or legitimate interests
Respondent contends that previous UDRP cases, such as Warner Bros Entertainment v. R Schwartz d/b/a Virtual Dates Inc., NAF Claim 608636,have concluded that domain names consisting of song lyrics do not, in themselves, infringe on the intellectual property of entities that may have obtained rights to certain terms or phrases. This notion effectively places song lyrics such as "rum and Red Bull" in the public domain. Respondent claims that as a result, registration of the Instagram username "cranberrywithice" was Respondent's first step in creating a social media presence that relates to the term "rum and Red Bull", thereby establishing a legitimate interest in the Domain Name. Having made an extensive quantity of postings on the Instagram feed, Respondent has established actual (and not speculative) use of the term as a social media identifier. Respondent's blog has not been contributed to yet, as Respondent was too busy throughout the spring and summer of 2014 involved in an overseas internship with limited Internet access.
For the reasons above, Respondent contends that he has satisfied both paragraphs 4(c)(i) and (ii) of the Policy, having been known by the term (or terms relating to it) in advance of the Complaint having been received, as well as having made demonstrable preparations. Additionally, Respondent states that paragraph 4(c)(iii) of the Policy has been satisfied, as the usage of the Domain Name at present is entirely noncommercial in nature: there are no advertisements nor is there any method through which revenue or commercial recognition can be realized. According to Respondent, the RED BULL mark is utilized no differently than the reggae artist Beenie Manused it in the "Rum and Red Bull" song. Thus, the Domain Name does not tarnish the RED BULL mark in anyway. Respondent contends also that there is no evidence that he was "quite obviously trying to exploit the fame and reputation of the complainant's trademarks", as stated by Complainant.
(iii) Registered and used in bad faith
Respondent states that the Complaint's allegations are incorrect concerning Respondent's response to Complainant's cease and desist letters. Respondent replied promptly to the cease and desist letter sent by NetNames (a firm acting on behalf of Complainant) on August 6, 2014. Respondent also replied to all further correspondence from NetNames. As a result, Respondent was in no way negligent in corresponding with Complainant in advance of this case. Respondent places emphasis on this point, as it is unfair for Complainant to make an allegation based on false information in an attempt to satisfy an element of bad faith.
Additionally, Respondent argues there is no evidence to support Complainant's theory that it was Respondent's "obvious intent" to "misleadingly divert the customers…causing confusion among consumers in the way of creating the impression of relation with or sponsorship or endorsement of the Respondent by Complainant". Respondent's use of the Domain Name is noncommercial in nature. Nowhere on the webpage or in its metatags does Respondent's website bear any resemblance to an entity that is connected to or endorsed by Complainant. The website to which the Domain Name resolves (the framework for Respondent's personal blog) does not bear any component of Complainant's trade dress. Respondent states this is entirely consistent with the intended personal use, and furthermore inconsistent with Complainant's claim that Respondent has purposely attempted to confuse visitors. During Respondent's correspondence with Complainant's agent, Respondent offered to place a disclaimer on the blog, confirming that Respondent is not in any way endorsed by or connected to Complainant. Respondent states that it has made an effort to be respectful of Complainant's brand, which is the opposite of behavior typically defined as "bad faith."
For similar reasons, Respondent challenges Complainant's contention that Respondent registered the Domain Name "with the purpose to create affiliation to the complainant, its products and trademarks." Respondent registered the Domain Name for use with a personal blog, which does not fall within the scope of what Complainant has alleged, nor does it create an affiliation with Complainant and its products and trademarks. Respondent asserts that he is concerned by the unsubstantiated claims that have been made in the Complaint and this ought to be considered by the Panel as malicious conduct. Again, the words that comprise the Domain Name are song lyrics, which by their very nature cannot interfere with Complainant's RED BULL trademarks.
Finally, Respondent addresses each of the four "bad faith" elements as provided in paragraph 4(b) of the Policy:
- (i) Respondent states that he has no intention to sell the Domain Name, as it is going to be used for a personal blog. As the blog is noncommercial in nature, it is not possible for Respondent to realize consideration as a result of the Domain Name's registration.
- (ii) Respondent has not engaged in any pattern of conduct attempting to prevent a trademark holder from acquiring a given domain name. In fact, Respondent claims his conduct has been exactly the opposite. In 2011, Respondent submits that he secured the <underarmor.ca> domain name for the apparel manufacturer Under Armour and contacted the company, offering to transfer the domain name, which they accepted. Additionally, in 2013, Respondent acquired the <napta.org> domain name and provided it at no cost to the Connecticut not-for-profit organization, National Association for the Prevention of Teenage Addiction. Given that Respondent has relinquished domain names to suitable owners on multiple occasions, Respondent has not been engaged a pattern of behavior as described in paragraph 4(b)(ii) of the Policy.
- (iii) The nature of Complainant's business and the nature of the song lyric used in the Domain Name for Respondent's personal blog are two things that cannot conflict with one another. For that reason, it is not possible for the Domain Name to have been registered so as to disrupt the business of a competitor.
- (iv) As described throughout Respondent's Response, the blog that the Domain Name resolves to is entirely noncommercial in nature. Thus, it is not possible for Complainant to satisfy this element of "bad faith".
C. Complainant's Supplemental Filing
Complainant maintains that Respondent's arguments in the Response are irrelevant because they do not prove that the Domain Name is not confusingly similar to Complainant's trademarks; that Respondent has any rights or legitimate interest in the Domain Name; or that Respondent registered and uses the Domain Name in good faith.
Complainant asserts that there is no dispute between the Parties that the Domain Name is confusingly similar to Complainant's RED BULL trademarks. Complainant has exclusive rights in the marks and has provided evidence that they enjoy worldwide recognition. The Domain Name incorporates the entirety of the RED BULL mark, while the term "rumand" does not distinguish the Domain Name from Complainant's well-known marks in a way which would eliminate the risk of confusion. Complainant claims that Respondent has admitted that the Domain Name is confusingly similar to Complainant's marks. Thus, there is no doubt of confusing similarity between Complainant's trademarks and the Domain Name.
As to rights or legitimate interests, Complainant argues that:
(i) before any notice of the dispute, Respondent did not "use," or "make" demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Instead, Respondent only stated that he registered the Domain Name because he wants to start a blog; however, citing prior UDRP cases, Complainant maintains that concrete evidence is needed instead of mere assertions. Respondent has failed to prove that he is a fan of Red Bull with rum, or Red Bull, or even Beenie Man. Respondent did not produce and provide any plans for the blog; Respondent did not provide evidence that he entered into talks with anyone regarding construction of the blog; Respondent did not submit evidence that the blog is going to be connected with a bona fide offering of goods or services; and Respondent did not explain what context and content the blog will possess in the future. According to Complainant, the burden of production shifts to Respondent to show by concrete evidence that he has rights or a legitimate interest in the Domain Name.
(ii) even assuming Respondent chose the Domain Name to serve freedom of speech, which is not the present case, Respondent is still not authorized to use Complainant's renowned RED BULL marks. Complainant emphasizes that, as prior UDRP panels have found, Respondent's right to exercise freedom of speech does not extend to an entitlement to disseminate views by deliberately and misleadingly cloaking himself in the name of Complainant in order to maximize the numbers in his audience. That is an inherently deceptive practice. Further, it is for this reason that it is no answer for Respondent to claim that once the Internet user arrives at his website, it becomes apparent (whether as a result of disclaimers or otherwise) who is running the site. In this case, there is no disclaimer at the site linked to the Domain Name.
(iii) consistent with prior UDRP cases, if Respondent claims that he was planning to set up a fan site but there is no evidence of "demonstrable preparations" to use the Domain Name, a mere allegation of intention to use the Domain Name does not on its own create a valid defense. Here, there is no fan site linked to the Domain Name. The website linked to the Domain Name makes no mention of Red Bull. There has been no execution of any purported business plan or demonstrable preparations to supply Internet users with information about Red Bull. Thus, it cannot be asserted that the site is intended for Internet user information about Red Bull. Complainant cites a UDRP case to question whether the website is a pretext designed to avoid a finding of cybersquatting by inventing a purported fair use.
(iv) Respondent has not been commonly known by the Domain Name and has not provided any evidence proving that he has been known by the term "rum and Red Bull". Respondent's use of a term "cranberrywithice" on the Instagram profile is irrelevant to this case, as the public in general does not see a connection between terms "rumandredbull" and "cranberrywithice". Respondent's name is Maxwell Arnold and according to his previous websites, his major interests are new technologies and fashion. In his previous activity there is no sign of the alleged admiration for the song "I'm drinking Rum and Red Bull" by Beenie Man. Complainant stresses that prior UDRP panels have held that it is insufficient for a respondent to merely assert that he has been commonly known by the domain name in order to show a legitimate interest. Instead, Respondent must produce evidence to show that he has been "commonly known" by the domain name.
(v) Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or tarnish Complainant's RED BULL trademark. While Respondent claims that he does not try to exploit the fame and reputation of Complainant's trademarks, Complainant argues it is not a mere coincidence that Respondent, a person who manages a fashion and new technologies blog, registered the Domain Name consisting of Complainant's well-known RED BULL trademark. Complainant urges that Respondent registered the Domain Name to attract and confuse Internet users. There is no other rational or legal explanation for the registration.
(vi) according to prior UDRP cases, while paragraph 4(c)(i) of the Policy refers to "preparations to use" a domain name in the context of offering goods or services, paragraph 4(c)(iii) refers only to the active "making" of a "legitimate noncommercial or fair use". Complainant states that the express language of the Policy indicates that its drafters intended to limit the circumstances in which legitimate noncommercial or fair use could successfully be claimed. Applying this language to Respondent, he has not proved that he is making a legitimate noncommercial or fair use; instead, Respondent submitted only assertions that he intend to create a blog.
Complainant repeats the argument that 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. Given Complainant's numerous trademark registrations and the wide reputation of its RED BULL marks, Complainant states it is obvious that Respondent was well aware of Complainant's trademarks and their reputation.
Further, Complainant states that its trademarks are not in the public domain as claimed by Respondent. Prior UDRP cases confirm that Complainant's trademarks have not evolved into colloquial speech similar to the terms "aspirin" or "thermos". The fact that somebody wrote a song and used the RED BULL mark does not have the effect of placing this mark in the public domain. Moreover, in the present proceedings, there is no evidence that "Red Bull" is a term commonly used in relation to all energy drinks, as suggested by Respondent. In particular, the video for the song referenced by Respondent, "I'm drinking Rum and Red Bull" by Beenie Man, repeatedly shows only Red Bull cans and not any other energy drink. Complainant emphasizes that it makes every effort to protect its trademarks, which prevents the RED BULL mark from becoming a generic term. Permitting third parties to use the RED BULL mark in connection with goods or activities not at all related with Complainant, which is what Respondent is trying to do, would jeopardize the strength of RED BULL mark.
Moreover, Complainant argues the registration and use of the Domain Name reeks of commercial use and consequently of bad faith. The website linked to the Domain Name appears to be under construction, without content. However, if the Internet user clicks the "About Me" link, the user is redirected to a website where there are links to the other domain names registered by Respondent, including the <fashiongs.com>.domain name where Respondent allegedly promotes third-party products and services. Respondent runs a blog at this site with articles referring to brands such as eBay, Louis Vuitton, Coco Chanel, Budweiser and Bic, and the services of Wordpress.
With reference to Respondent's declaration that he is willing to negotiate placing a disclaimer on the site linked to the Domain Name, Complainant urges that according to the consistent view in previous UDRP cases, the existence of a disclaimer cannot cure bad faith when it has been established by other factors. Furthermore, the disclaimer itself proves knowledge of Complainant's mark. Complainant refers to a prior UDRP case where the panel found that a disclaimer did not dispel initial interest confusion on the part of the Internet user. Respondent accomplishes much of its purpose in using Complainant's mark by initially drawing consumers to the website. A disclaimer only dipels confusion once the user reaches the site.
D. Respondent's Supplemental Filing
Respondent contends that Complainant made an inaccurate assertion in its Supplemental Filing that Respondent has admitted to confusing similarity in this case. Respondent states that he only admitted to the presence of the "Red Bull" term in the Domain Name and this, in itself, does not constitute confusing similarity.
Respondent argues that many UDRP cases have held that the addition of terms to a trademark can, in fact, differentiate a domain name from whatever implied message a trademark might bear on its own. This is especially true if the additional words imply the lack of a relationship. Respondent contends that one would not assume that the website linked to the Domain Name <rumandredbull.com> relates to products of Complainant because Complainant sells non-alcoholic energy drinks, not drinks blended with rum. Thus, adding the term "rum and" to "Red Bull" forms the phrase "rum and Red Bull", referring to a cocktail that is alcoholic and different nature from Complainant's product. Further, Respondent does not engage in the business of being a distributor of drinks. Instead, Respondent states he is fond of a song that goes by the name "rum and Red Bull," and he is also fond of the rum and Red Bull cocktail, having submitted a photo of himself with a friend allegedly enjoying a rum and Red Bull in October 2013, before registration of the Domain Name.
Regarding rights or legitimate interest, Respondent claims he has made an attempt to prepare his blog and submits a copy of a screenshot of his Google Drive application, where a "rumandredbull.com" file with the "first posting" document has allegedly been stored there since May 29, 2014. Respondent claims this is evidence of demonstrable preparations to use the Domain Name with his website.
Additionally, Respondent states he can prove that he is a fan of both "rum and Red Bull" and the music artist Beenie Man who recorded "I'm drinking rum and Red Bull". He submits copies of webpages showing Respondent has "liked" pages on Facebook that pertain to these subjects on March 30 and July 24, 2014. Thus, in response to Complainant's allegation that Respondent did not provide any plans for his blog, Respondent states that they have been provided in abundance. Regarding Complainant's allegation that Respondent did not provide evidence that he entered into talks with somebody regarding construction of his blog, Respondent argues that such talks are not necessary for a noncommercial personal blog. Moreover, because the blog is noncommercial, Respondent need not provide evidence that the blog is connected with a bona fide offering of goods or services.
As to his intentions for the blog, Respondent states that his interests go beyond fashion and new technologies. As an experienced blogger, Respondent will use the blog as a personal blog, as demonstrated by the title, "Maxwell Arnold's Blog – rumandredbull.com". This title has remained unchanged for the duration of the website's existence. Further, the additional message on the site, "I am proudly the living embodiment of "not normal". Doubt it? Read my blog and you'll see what I mean", implies that the content will be about Respondent, not about any particular niche topic. Respondent states that it is only natural that there is no mention of the word "Red Bull" on the website, as the site does not relate to Red Bull. The purpose of the blog is to contain Respondent's personal musings, not to act as an advertising or information vehicle for Complainant. Given his track record of blogging for nearly eight years, in addition to evidence provided that preparations have been made, Respondent urges that he should be considered serious in undertaking the blog, as opposed to perpetually postponing it.
As to whether Respondent is known by the Domain Name, Respondent states that evidence has been provided that he is a fan of the song "I'm drinking rum and Red Bull" by Beenie Man and the cocktail consisting of rum and Red Bull. While this is not evidence that Respondent is known by the Domain Name, it demonstrates fandom, which is something that Complainant has denied with regard to Respondent.
Respondent acknowledges that to have engaged in active use of the Domain Name would have been helpful to provide concrete evidence that there is a legitimate use for it. However, the Domain Name was registered on May 17, 2014, two days prior to Respondent's departure on a two-month trip to a remote part of Italy where Internet access was limited. Respondent received the notice of claimed infringement from NetNames on July 31, 2014, giving him less than two weeks with Internet access to have been able to get started on the blog. It would not have been reasonable for Respondent to have started postings after receipt of this notice, as he risks losing the blog and he did not want to alter it for evidentiary reasons.
Respondent seeks to distinguish a number of UDRP cases cited by Complainant. Respondent emphasizes that he does not claim the term "Red Bull" is in the public domain. However, as the beverage is mixed with vodka or rum, colloquial use of terms such as "rum and Red Bull" is a natural outcome, which could put the name of this cocktail into the public domain over time. Respondent claims retail purveyors of beverages and people refer to energy drinks in general as being "Red Bull", just as people refer to tissues as "Kleenex" and to cola drinks as "Coke". According to Respondent, if a brand name does not identify one particular product (e.g., Ikea, Microsoft), it is easier to show bad faith given that such brands distribute hundreds of different products. As the Red Bull brand identifies one product (notwithstanding ancillary goods such as apparel, which serve to promote the primary product of Complainant), it is much easier for the term to become generically used, especially in the case of a reference to a mixture of liquor and energy drink, as in Beenie Man's song.
Respondent also challenges Complainant's allegation that the Domain Name "reeks of commercial use and consequently bad faith." There is no commercial element to Respondent's blog. Further, the websites that are linked in Respondent's "About Me" profile, such as the "www.fashionqs.com" site, are separate from Respondent's personal blogging. The <fashionqs.com> website is a joint venture between Respondent and a fellow fashion student. The contents of this website are not relevant for analyzing whether the Domain Name has been used in bad faith, as it is a separate website and addresses a different subject. Further, the trademarked terms mentioned there are used to discuss fashion-related topics, not to promote products as Complainant contends.
Respondent maintains that, as the Domain Name contains differentiating terms (i.e., "rumand" added to "Red Bull"), potential visitors are given advance notice that Respondent is not affiliated with Complainant, because Complainant does not sell beverages containing rum. As a result, the facts of this case are different from UDRP cases cited by Complainant. Besides Respondent's operation being noncommercial in nature, visitors are given advance notice that they are not about to visit a website of Complainant. As to disclaimers, Respondent argues that the Domain Name itself serves as a disclaimer that the website is not associated with Complainant. Thus, there is no "initial interest confusion" to mislead visitors to Respondent's website and therefore no "bad faith.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has very strong trademark rights in its distinctive and well-known RED BULL mark, including in Canada where Respondent is located.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name…."). As the panel explained in Red Bull GmbH v. Paul Battista, WIPO Case No. D2010-0353 (quoting SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648), "[c]onfusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: "Is it likely that, because of the similarity between the domain name on the one hand and the Complainant's trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?"
Respondent has argued that Complainant does not sell alcoholic beverages and therefore the Domain Name cannot be considered confusingly similar to Complainant's RED BULL mark. The Panel has not gone beyond the Parties' submissions in this case to verify whether or not Complainant sells alcoholic beverages. However, assuming that it does not, the Domain Name is nonetheless confusingly similar to Complainant's well-known RED BULL marks. Based on the evidence presented, the Panelist determines that Internet users may actually believe there is a real connection between the Domain Name and Complainant, its RED BULL trademark, and its related goods, services and activities. Complainant has provided evidence to show that Complainant sponsors all variety of sports, music, cultural, commercial and other events and activities. Further, Complainant has registered its marks in all of the 45 classes of goods and services covered by the Nice Classification, covering an extensive range of commercial activities. Thus, Complainant has demonstrated that its trademarks are strong, licensed and used in a wide variety of contexts.
As Respondent has observed, Red Bull is served in cocktails containing alcoholic beverages such as rum. This may often involve a commercial use of Complainant's product (e.g., sale of Red Bull at a restaurant or other establishment) in combination with other alcohol products. The Panel finds that it is likely that consumers would wonder whether the Domain Name is associated in some way with Complainant. The terms "rum and" added to Complainant's RED BULL mark do not diminish, but instead reinforce confusing similarity. See e.g., WIPO Overview 2.0 (UDRP panels have found that the mere addition of descriptive terms to a complainant's mark does not adequately distinguish the disputed domain name from the mark pursuant to the Policy, paragraph 4(a)(i)); Red Bull GmbH v. Paul Battista, WIPO Case No. D2010-0353 (finding <cookingwithredbull.com> confusingly similar to the RED BULL mark); HSBC Holdings Plc v. David H. Gold, WIPO Case No. D2001-0343, (finding <bankwithhsbc.com> confusingly similar to HSBC); and F. Hoffmann-La Roche AG v. WhoIs Defender, Inc., WIPO Case No. D2006-0717 (finding <weightlosswithxenicalinfo.info> confusingly similar to XENICAL).
Accordingly, the Panel concludes that the Domain Name is confusingly similar to Complainant's RED BULL trademarks.
B. Rights or Legitimate Interests
The Panel finds that despite Respondent's detailed arguments, it has no rights or legitimate interests in the Domain Name. Complainant has confirmed that it did not license or otherwise permit Respondent to use its RED BULL trademarks or to register a domain name incorporating them. Complainant has also demonstrated that Respondent is not commonly known by the Domain Name. Respondent's name is Maxwell Arnold and he has used websites linked to the domain names <fashionqs.com> and <maxwell.me>. Neither of these websites uses the branding "Red Bull", "RumandRedBull" or "RumandRedBull.com."
Moreover, there is no dispute that Respondent specifically had in mind Complainant and its RED BULL mark and related products when he registered the Domain Name. Respondent has indicated that he is fond of the song, "I'm drinking rum and Red Bull" by the reggae artist Beenie Man, and also of the cocktail consisting of Red Bull and rum. However, assuming both of these points are true, they do not establish any right or legitimate interest of Respondent in the Domain Name. Numerous consumers are very fond of certain products that they have previously used. However, this does justify the consumers' registration and use of confusingly similar domain names incorporating the trademarks for those products.
Respondent makes the argument that the RED BULL mark has possibly become generic in relation to energy drinks, or at least when used in reference to a cocktail such as rum and Red Bull; however, there is no evidence in the record to suggest that this is the case. Prior UDRP cases all view Complainant's RED BULL mark as well-known, strong and protectable, not generic. Further, Respondent has submitted a Chicago Tribune newspaper article from 2008 which goes against Respondent's point. That article describes a lawsuit in which Red Bull successfully enforced its trademark (awarded USD 576,000 in damages to Red Bull) against the owner of a Chicago bar that was trying to pass off generic energy drinks as Red Bull. If the RED BULL mark had been considered generic, the lawsuit by Red Bull would not have been successful. The fact that Respondent has used the RED BULL mark in a confusing manner in connection with the generic terms "rum and" does negate Complainant's protectable trademark rights.
Respondent also claims that his use of social media has established a right or legitimate interest in the Domain Name. The Panel disagrees. Respondent's registration of the Instagram username "cranberrywithice", as well as use of a Facebook page with a username "rumandredbull.com", apparently stemming from his fondness for the song by Beenie Man, does not establish a right or legitimate interest in the Domain Name, which incorporates Complainant's well-known RED BULL mark in a confusing manner. Use of a trademark in a song lyric, such as referring to Red Bull in Beenie Man's song, is fundamentally different from use of a trademark in a domain name. The Panel does not need to decide whether use of a trademark in a song lyric may infringe on the rights of the trademark owner or otherwise constitute a form of nominative fair use. However, domain names registered in the ".com" generic top-level domain fall under the rules for registration and use governed by the Policy. Respondent, who by his own evidence indicates that he has regular involvement with domain names and invests in them, should be aware of this. Paragraph 2 of the Policy is particularly apt here, as it provides guidance to domain name registrants: "It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."
Complainant has challenged that Respondent, by registering the Domain Name, is trying to exploit the fame and reputation of Complainant's trademarks; that Respondent is not using the Domain Name in connection with any bona fide offering of goods or services; and that Respondent has not conducted any activity under the Domain Name, as the website linked to it appears to be under construction. Respondent does not dispute that the Domain Name is not being used in connection with a bona fide offering of goods or services. Instead, Respondent has asserted that use is intended to be noncommercial as the Domain Name, registered recently in May 2014, will be used for a personal blog but Respondent has been travelling and was not able to get started before receiving the Complaint.
As indicated by the evidence, Respondent has posted a website containing a simple template for his alleged personal blog (using a freely available Google-based tool, "Blogger"), but nothing else. There were no postings on the blog or other development of it at the time the Complaint was filed. Respondent has referenced only a file in one of his Google applications that allegedly contains a first posting for the blog. On this record, the Panel finds that Respondent has not yet been "making" any substantial noncommercial or fair use of the Domain Name that would give rise to any rights or legitimate interest in it. See e.g., Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000. Moreover, Respondent has also stated that the intended activity for his blog is not connected with Complainant or its trademarks in anyway. Assuming this to be true, Respondent's point further undercuts any right or legitimate interest in the Domain Name that is confusingly similar to Complainant's famous RED BULL trademarks. The right to express one's views is not the same as the right to use another's well-known trademark in a confusing manner (in a domain name) to identify one's self as the source of those views. See e.g., Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; Monty & Pat Roberts Inc. v. J. Bartell, WIPO Case No. D2000-0300.
Thus, in balancing the rights of Complainant in its well-known RED BULL mark, and the rights of Respondent to choose freely a domain name for expressing his views in a personal blog on subjects yet to be identified, the Panel concludes that Respondent has impermissibly taken advantage of Complainant's commercial interests in its mark. The Panel is of the view that Respondent registered the Domain Name because of its connection to Complainant, its trademark and products, even as they are also referenced in a popular song that refers to a cocktail. Respondent's use of the Domain Name linked to Complainant's RED BULL mark will generate a larger audience (at least initially) than would likely have been the case if Respondent chose a domain name that was not confusingly similar to a famous mark.
In view of all of the facts and circumstances in this case, the Panel determines that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Finally, the Panel determines that the Domain Name has been registered and used in bad faith. In this case, where Complainant's RED BULL trademarks are so strong and distinctive, including in Canada where Respondent is located, the Panel finds that Respondent registered the Domain Name in order to exploit Complainant's goodwill in its RED BULL marks. In so doing, he registered the Domain Name in bad faith. Red Bull GmbH v. Paul Battista, WIPO Case No. D2010-0353; David Foox v. Kung Fox and Bill Hicks, WIPO Case No. D2008-0472; Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085.
With regard to use, Respondent is using the Domain Name, which falsely conveys an association with Complainant, to lead Internet users to his website, where he allegedly intends to create a personal blog. The inevitable consequence is that there will be confusion, as a substantial proportion of Internet users visiting the site will be doing so in the expectation of reaching a site of, or authorized by, Complainant. When they reach the site they may realize that they have been mistaken, but in any event the objective of bringing them there will have already been achieved. As discussed in the analysis in David Foox v. Kung Fox and Bill Hicks, WIPO Case No. D2008-0472, this amounts to impersonation of the mark owner with a view to expanding coverage of the respondent's views. Respondent is illegitimately identifying himself as Complainant in a confusing manner and attracting visitors to his site by trading off on Complainant's goodwill in its RED BULL trademarks.
Thus, the Panel finds that in this case, by using the Domain Name, Respondent has intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with Complainant's well-known RED BULL mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. This amounts to bad faith use within the broad ambit of the Policy. Although there is no finding that Respondent has, as of yet, acted for commercial gain, the Panel nonetheless finds that, given all of the facts and circumstances of this case, whether or not Respondent's motives were for commercially exploiting Complainant's mark, the registration and use of the Domain Name was in bad faith. If Respondent wishes to develop a personal blog to publish his views on various topics, he can do so in any number of ways without taking advantage of Complainant's name or RED BULL trademarks. See David Foox v. Kung Fox and Bill Hicks, WIPO Case No. D2008-0472 (the manipulation of the complainant's name as a domain name is an abuse within the broad ambit of the Policy, where the intentions of respondent are to cause initial interest confusion with a view to expanding coverage of the respondent's views; the panel sees no reason why the right to free speech should justify the deception of Internet users); Red Bull GmbH v. Paul Battista, WIPO Case No. D2010-0353 (although there is no finding that the respondent acted for commercial gain, the panel found that given all of the facts and circumstances, whether or not respondent's motives were for commercially exploiting the complainant's RED BULL mark, the registration and use of the domain name was 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 <rumandredbull.com> be cancelled.
Christopher S. Gibson
Date: November 24, 2014