WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Stefan Kozak
Case No. D2015-2143
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 Stefan Kozak of Houston, Texas, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <usrredbull.com> 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 November 25, 2015. On November 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on December 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 28, 2015.
The Center appointed Daniel Peña as the sole panelist in this matter on January 14, 2016. 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 the largest worldwide producer of energy drinks, in particular of the energy drink known as Red Bull which was first sold in Austria in 1987 and internationally since 1992.
The Complainant states that the Red Bull energy drink is sold in 163 countries worldwide and that the Complainant sold over 5.6 billion units globally and over 2.1 billion units in the United States in 2014.
Since its launch in 1987, the Complainant's advertising has focussed on TV, cinema and radio. In 2014, the Complainant invested over EUR 530.8 million in worldwide media marketing. In 2010, approximately EUR 50.3 million were invested in media in the United States, whereas in 2014 more than EUR 95.8 million were spent.
The Complainant has sponsored a number of sporting and media events that have received worldwide coverage. Among other things, these include the sponsorship of a leading football club, motorcar racing events, the 2012 Stratos project (with Felix Baumgartner jumping from a helium-filled balloon at over 128,100 feet) and the Red Bull X-Fighters event which began in 2001.
The Complainant is the owner of multiple trademarks for the words "red bull" on their own and with the accompanying two bull logo in 202 jurisdictions worldwide, including marks registered since 2003 on the principal register of the United States Patent and Trademark Office ("USPTO"). These trademark registrations include the following:
- International Registration No. IR 961854 RED BULL with priority date September 27, 2007;
- United States Registration No. 4647395 RED BULL with priority date January 24, 2013; and
- International Registration No. IR 1108568 RED BULL with figurative element designating inter alia the European Union with priority of March 7, 2013.
The Complainant is also the owner of a large number of domain names containing its mark RED BULL. The Complainant points to previous decisions by UDRP panels which recognize that the Complainant's trademark is famous and widely known all over the world, and is distinctive in a trademark sense.
The disputed domain name was registered on October 8, 2015.
5. Parties' Contentions
The expressions "red" and "bull" are ordinary on their own, in combination however they are inherently distinctive.
The disputed domain name <usrredbull.com> incorporates famous RED BULL trademark in its entirety. The only difference between the disputed domain name and the Complainant's trademarks is the use of the prefix "usr", which most likely will be perceived by the Internet users as a link to the United States, one of the countries in which the Complainant operates.
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of those marks or any variations thereof.
The Respondent is not commonly known by the disputed domain name <usrredbull.com>.
The Respondent had known RED BULL trademarks when he has registered the disputed domain name.
The Respondent by using email addresses which stem from the disputed domain name <usrredbull.com> is trying to impersonate unlawfully the Complainant's directives and employees.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has evidenced registrations for the trademark RED BULL in several countries including, among others, the United States. The Complainant's trademarks are registered mainly in several international classes including the protection of energy drinks.
The disputed domain name <usrredbull.com> contains the Complainant's distinctive trademark RED BULL in its entirety. Neither the addition of the prefix "usr" nor the inclusion of the generic Top-Level Domain (gTLD) ".com" alters the fact that the disputed domain name is confusingly similar to the Complainant's trademark. On the contrary, the similarity between the Complainant's trademarks and the disputed domain name is reinforced by the fact that the prefix "usr" used together with the expressions "red" and "bull" in the disputed domain name is likely to be interpreted by the consumers as an indication of a potential relationship of the Complainant's trademark with the United States.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademarks. The requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several manners in which the respondent may demonstrate rights or legitimate interests in a disputed domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that (1) it has not licensed or otherwise authorized the Respondent to use its RED BULL trademarks or to incorporate them into a domain name; (2) that, given the extensive use of the Complainant's marks, product images and copyrighted materials and the fact that it is uniquely linked to the Complainant, the Respondent must have been aware of this when it registered the disputed domain name; and (3) that the current use of the disputed domain name <usrredbull.com> does not relate to a bona fide offering of goods or services or any legitimate noncommercial or fair purpose.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) 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;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location.
In the Panel's view, a finding of bad faith may be made where the Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark RED BULL including in the United States is such that the Respondent, must have had knowledge of the trademark before registering the disputed domain name.
The Complainant has demonstrated that its trademarks are widely recognized and that the disputed domain name incorporates in full its trademarks with the mere addition of the prefix "usr" and that the Respondent has no relationship to the RED BULL trademarks. In the Panel's view, the Respondent is using the disputed domain name with the mentioned prefix to intentionally attract, for commercial gain, Internet users to the website linked to the disputed domain name in a manner that confuses and misleads Internet users. Thus, the Panel infers the Respondent's bad faith based on the fact that the Respondent is most likely trying to gain profit from the reputation of the Complainant's trademark.
Moreover, the evidence shows that having registered the disputed domain name the Respondent has been using it to impersonate the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives. Such conduct shows the Respondent registered and is using the disputed domain name primarily for the purpose of disrupting the business of the Complainant.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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 <usrredbull.com> be transferred to the Complainant.
Date: January 23, 2016