WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Eric Heyne
Case No. D2015-0578
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 Eric Heyne of Naters, Switzerland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <red-bull.boutique> is registered with united-domains AG (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2015. On April 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2015, 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.
According to information received from the Registrar, the language of the Registration Agreement for the disputed domain name is German. The Complainant was therefore requested to provide at least one of the following: 1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into German; or 3) submit a request for English to be the language of the administrative proceedings. The Complainant submitted a request that English be the language of the proceedings, to which the Respondent did not reply by the specified due date.
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, in English and in German, the Respondent of the Complaint, and the proceedings commenced on April 17, 2015. In its notification, the Center informed the Respondent (in German) that it would accept a Response filed in German. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2015. The Center received, on April 21 and 22, 2015, several informal communications from the Respondent. On April 22, 2015, the Complainant requested the suspension of the proceedings to explore a possible settlement between the parties, and the proceedings were suspended until May 23, 2015. Since no settlement was reached between the parties, the Complainant requested, on May 22, 2015, the re-institution of the proceedings. The new due date for Response was June 9, 2015. The Respondent did not submit any further communications. On June 10, 2015 the Center informed the parties of the commencement of the Panel appointment process.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on June 25, 2015. 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
The Complainant is an Austrian company operating internationally. Whilst its origins lie in the production of energy drinks, it is also active in the media-sector, in the organization of cultural and sport events and in the fashion business. The Complainant states that it has been operating under the name “Red Bull” in Austria since 1987 and internationally since 1992. It is the holder of registered trademarks containing RED BULL in multiple jurisdictions worldwide. Below are details of a few exemplary trademarks:
- IR 961854 RED BULL (word) with priority date September 27, 2007, for goods and services in classes 25, 28, 32, 41 and 43 with extensions of protection into numerous countries worldwide, including Switzerland;
- IR 1228358 RED BULL (device) with priority date August 28, 2013 for goods and services in all 45 Nice classes, with extension of protection into Switzerland, Israel, Indonesia, Mexico, New Zealand, Russian Federation, Singapore, Ukraine and the USA;
- IR 1221409 RED BULL (device) with priority date of August 28, 2013, for goods and services in classes 25, 28, 32, 41 and 43, with extensions of protection into Switzerland, Israel, Indonesia, Mexico, Russian Federation, Singapore and Ukraine.
The disputed domain name was registered on June 25, 2014.
5. Parties’ Contentions
The Complainant claims to be the largest producer of energy drinks worldwide. It states that the RED BULL energy drink is currently sold in 162 countries. In 2014, 5.6 billion serving units were sold globally.
The RED BULL brand has been subject to a high level of marketing expenditure. From 1987 to 2014 an aggregate amount of EUR 4.1 billion was spent on marketing activities in the European Union. In 2010, EUR 18.5 million was spent for marketing purposes only in Switzerland, which increased to EUR 24.1 million in 2014. From these figures the Complainant deduces the brand to be the unchallenged market leader in all its markets. The RED BULL energy drink is not only promoted in the media but also in other marketing materials such as clothes and caps, sales folders, consumer information leaflets, retail displays, crowners, flyers, packaging material, sampling cars, to name only a few.
The Complainant emphasizes that its activities are not restricted to the production and promotion of energy drinks. The RED BULL Media house is in charge of planning, producing, managing and distributing RED BULL content from all over the world. The RED BULL TV Window on ServusTV offers entertainment from the world of sports, art and music. RED BULL Mobile is a telecommunication service. The RED BULLETIN is a print magazine published in twelve countries and five languages. The RED BULL Stratos project featuring Felix Baumgartner’s world record jump caused extensive media attention. With 8 million concurrent viewers on the youtube live stream it was the most viewed live stream so far. It triggered 25 million visits to the Red Bull websites, over 267,000 Red Bull TV iOS app downloads, 500,000 likes on Facebook and Twitter, 20,000 comments and 66,000 shares and 3.2 million tweets with official hashtags. The RED BULL X-Fighters is a freestyle motocross contest which attracts up to 50,000 visitors to each event. The RED BULL Music Academy offers workshops on music history, technology and business. RED BULL Racing is a successful formula one racing team. Red Bull further sponsors athletes in the Dakar Rally Races and in the MotoGP. The RED BULL collection is an exclusive fashion line of T-Shirts, jackets, hoodies, shoes, etc. Also mentioned are the Red Bull Air Race World Championship, the RED BULL Cliff Diving World Series, RED BULL Crashed Ice, RED BULL Thre3Style (a DJ competition), RED BULL Soundclash and the RED BULL BC One World Series.
The Complainant states that this involvement makes the mark RED BULL extremely well-known all over the world. It has more than 42.8 million fans on Facebook. RED BULL videos have received more than 311 million views on Youtube in 2013 with a lifetime total of 914 million views. In Germany, 83.7% of the general public spontaneously associates the trademark RED BULL with the Complainant’s energy drink and even 90% in Austria (2003). In October 2014 Red Bull was ranked 53 of the 100 most valuable brands worldwide in “Eurobrand 2014”.
These contentions remain undisputed by the Respondent and are evidenced by an affidavit of the Intellectual Property Counsel of the Complainant.
With regard to the Respondent’s activities the Complainant states that he is the owner of at least 342 domain names, some of which correspond to well-known third parties’ trademarks, e.g.: <tchibo.boutique>, <tschibo.boutique>, <omegawatches.kaufen>, <edarling.dating>, etc.
The Complainant submits that the disputed domain name is confusingly similar to the trademark RED BULL, in which the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark in its entirety. The addition of a hyphen and the generic Top-Level Domain (“gTLD”) “.boutique” does not diminish the confusing similarity. In fact, the addition of “.boutique” even increases it, for it is a reference to the Red Bull collection online shop.
The Complainant further submits that the Respondent has no rights or legitimate interest in respect of the disputed domain name. The Respondent has neither acquired a license nor has is he otherwise been permitted to use any of the Complainant’s trademarks or any variations thereof. The Respondent is also not engaged in a bona fide offering of goods and services either. He is not known for using the name RED BULL and he had no legitimate reason to register the Complainant’s trademark as a domain name. The registration was merely a means to divert the public from the Complainant’s websites in order to create a likelihood of confusion.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Respondent received two cease and desist letters from the Complainant making him aware of the infringement of trademark rights of the Complainant, yet he continued to unauthorizedly use the disputed domain name. Because of the high level of brand awareness RED BULL enjoys, the Respondent must have been aware of the trademark. The purpose of using the disputed domain name can therefore only be the diversion of consumers from the Complainant’s websites and the creation of an assumed affiliation to the Complainant, its products and trademarks. The Respondent owns at least 342 domains similar to the disputed domain name which indicates that he runs a business selling domain names. The Respondent tries to benefit from a large amount of domain names he has registered which keep trademark owners from reflecting their trademarks in corresponding domain names.
In terms of remedy, the Complainant requests cancellation of the disputed domain name.
The Respondent did not formally reply to the Complainant’s contentions. However, on April 21 and 22, 2015, the Center received informal communications from the Respondent in German stating that he agreed with the cancellation of the disputed domain name.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following requirements to justify the cancellation of the disputed domain name:
(i) That the disputed domain name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the Respondent has registered and is using the disputed domain name in bad faith.
By the Rules, paragraph 5(b)(i), it is expected of the respondent to “[r]espond specifically to the statements and allegations contained in the Complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.
In the present case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given the opportunity to present his case.
In the present administrative proceeding, the Respondent has chosen not to submit a response other than to agree with the cancellation of the disputed domain name. This leads the Panel to conclude that the Respondent has no arguments or evidence to rebut the contentions of the Complainant. The Panel makes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law it deems applicable.
A. Preliminary Matter: Language of the Proceedings
The language of the Registration Agreement for the disputed domain name is German. Pursuant to the Rules, paragraph 11 the language of the administrative proceedings is typically the language of the Registration Agreement.
However, Paragraph 11(a) of the Rules allows the Panel to determine otherwise, having regard to all the circumstances.
In all the circumstances, the Panel finds in its discretion that it is fair and procedurally efficient for English to be the language of the proceeding, and will render its decision in English.
This finding is made for the following reasons:
(1) The disputed domain name is in made up of English words, indicating a familiarity with English;
(2) The Respondent has indicated that he is willing to see the disputed domain name cancelled, and has not otherwise substantively engaged in the proceedings, even after being informed in German that a German language Response would be accepted.
Requiring a translation of the Complaint and annexes into German would be costly and time consuming, and in the circumstances of this case, proceeding in English would not be reasonably calculated to prejudice a respondent who has so explicitly absented himself from the proceedings.
B. Identical or Confusingly Similar
The test for identity or confusing similarity under paragraph 4(a)(i) of the Policy is limited in scope to a direct comparison between the Complainant’s mark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trademark rights in the mark RED BULL (word) which predates the registration of the disputed domain names. The disputed domain name consists of the terms <red-bull.boutique>.
The RED BULL trademark is arguably internationally famous and has a strong reputation (Red Bull GmbH v. Young Jake, WIPO Case No. D2014-2035). Both words “red” and “bull” are ordinary on their own, in combination however they are “inherently distinctive” (Red Bull GmbH v. MakeyMySMS Pvt Ltd., WIPO Case No. D2012-2251). There are only two ways to create a domain name based on a two word trademark either combining the two words into one or write the worded trademark with a hyphen (Axel Springer Verlag AG v. Andy Fritsche, WIPO Case No. D2000-1335). Adding a hyphen therefore does not diminish confusing similarity. Even where a descriptive term is added, confusing similarity is still established if a trademark is included in a domain name in its entirety (Red Bull GmbH v. Winkel, WIPO Case No. D2013-1659).
The RED BULL mark is without a doubt highly distinctive. As it is contained in the disputed domain name in its entirety it is to be considered identical to the trademark in which the complainant has rights, not accounting for the addition of a hyphen and the descriptive gTLD “.boutique”. With the addition of a hyphen and the descriptive gTLD “.boutique” the disputed domain name and the trademark of the Complainant are still confusingly similar. The disputed domain name thus evokes the impression of being owned and/or operated by the Complainant. Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is a consensus view under the UDRP that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent (see Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
In this case, the Complainant has submitted that the Respondent lacks any rights or legitimate interests as he is not a licensee, nor is he otherwise permitted to register and use the disputed domain name, nor is he known by the disputed domain name.
The Panel notes that with respect to paragraph 4(c)(i) of the Policy, there is no evidence in the record that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Rather, as the Complainant has stated and which has remained uncontested, the Respondent has created the disputed domain name to create the misleading impression of being in some way associated with the Complainant. The reputation of the RED BULL mark and the fact that the website is not active are strong indications in favor of that notion.
Additionally, with respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name or has acquired trademark rights in a name corresponding to it.
Furthermore, with respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or name corresponding to it, in connection with a bona fide offering of goods and services.
Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain name.
Hence, the burden of production has been placed on the Respondent. In such case, the Respondent must, by substantial evidence, demonstrate his rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing. In this respect, the Panel notes that in the informal communications of the Respondent, he did not attempt to refute the Complainant’s arguments and allegations, but rather agreed to cancel the disputed domain name.
Consequently, the Panel finds that the Respondent’s failure in refuting the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain name and therefore the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
For the purposes of the Policy, paragraph 4(a)(iii), 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 domain name holder has registered or has acquired the domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the complainant, who is the owner of the trade mark or service mark, or to a competitor of the complainant, for valuable consideration in excess of the domain name holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the domain name holder has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, internet users to the domain name holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on the domain name holder’s website or location.
These criteria are nonexclusive (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Other factors alone or in combination can support a finding of bad faith (Brown & Williamson Tobacco Corp, et. al. v. Dennis Wilkins, WIPO Case No. D2001-0865).
As held in Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236, “[i]t seems [highly] unlikely … that Respondent would have chosen this name [Red Bull] randomly”. With regard to the international reputation of the RED BULL trademark the Panel is convinced that the Respondent knew of the mark. Yet, he registered the disputed domain name. The choice of the name was therefore intentional and not random. “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” (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). The RED BULL trademark is well-known and the Respondent has no connection to the Complainant, is not authorized and does not have a legitimate purpose to use the Complainant’s trademarks. Therefore there is a strong indication of bad faith in the present case. An additional indication of bad faith is the fact that the Respondent has acted similarly with regard to other marks in multiple other cases (e.g. “tchibo.boutique”).
The Respondent received two cease and desist letters from the Complainant but did not cease to keep the registration of the disputed domain name alive, thereby making bad faith use of it for the purposes of the Policy. The Respondent must have known of the world famous RED BULL mark when using it. At the very least he was made aware of his infringing action upon receipt of the repeated cease and desist letters of the Complainant. His continuous holding of the disputed domain name is hence considered to be use in bad faith1 .
The Panel therefore finds that registration and use of the disputed domain name merely served the purpose of creating the false impression of affiliation to the Complainant, its products and trademarks with the intention to misleadingly divert consumers to the website. Based on these considerations, the Panel finds that registration and use of the domain name took place in bad faith. Consequently, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy.
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 <red-bull.boutique> be cancelled.
Date: July 9, 2015
1 The disputed domain name is passively held. It is well-established hat passive holding does not prevent a finding of use in bad faith.
See Telstra Corporation Limited v. Nuclear Marshmallows, Supra.