WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH, Audi AG v. Thijjs van der Tuin
Case No. D2016-0061
1. The Parties
The Complainants are Red Bull GmbH of Fuschl am See, Austria, and Audi AG of lngolstadt, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Thijjs van der Tuin of Utrecht, the Netherlands, self-represented.
2. The Domain Names and Registrar
The disputed domain names <audi-redbull.com>, <audiredbull.com>, <audi-redbullracing.com>, <audiredbullracing.com>, <redbull-audi.com> and <redbullaudi.com> are registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2016. On January 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 13, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2016. The Response was filed with the Center on February 9, 2016.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on February 12, 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.
On February 15, 2016, the Complainants submitted spontaneously a supplemental filing, to which the Respondent responded on the same date through an additional filing. The Complainants further responded to the Respondent’s additional filing on February 18, 2016.
4. Factual Background
The Complainant Red Bull GmbH is the famous producer of the Red Bull energy drink, which was first sold in Austria in 1987 and internationally since 1992. The Red Bull energy drink is currently sold in 163 countries. In 2014, the Complainant has sold over 5.6 billion serving units and over 116.2 million in the Netherlands where the Respondent is located.
The RED BULL marks are protected in 202 jurisdictions (such as the word trademark IR 961854 registered on March 19, 2008, under classes 25, 28, 32, 41 and 43 with a priority date as of September 27, 2007), and enjoy a worldwide reputation by the public in general, notably through significant media marketing expenditures, amounting to over EUR 530.8 million in 2014, respectively EUR 2.6 million in the Netherlands. According to Eurobrand 2015, the RED BULL mark has been ranked the 62nd most valuable brand in the world.
To promote its Red Bull brand, the Complainant has engaged in numerous sport-related events. While extensively involved in Formula One Racing since 1995, notably through the website “www.redbullracing.com”, the Complainant has also diversified its sports-related activities in the promotion of highly publicized events; the Red Bull Stratos project generated 25 million visits to the Complainant’s websites, over 267,000 Red Bull TV iOS app downloads, 500,000 likes on Facebook and Twitter and 3.2 million tweets.
Overall, the Complainant now enjoys more than 44.2 million fans on Facebook and its videos have received more than 355 million views on YouTube.
The Complainant Audi AG is one of the world’s leading automobile manufacturers and the owner of the AUDI trademarks (such as CTM 000018812, registered on May 25, 2005, under classes 9, 12, 14, 16, 18, 20, 25, 27, 28 and 27 with a priority date as of April 1st, 1996), which enjoy a worldwide reputation.
The Respondent registered all disputed domain names on October 24, 2014. All disputed domain names cover the same content; they provide information about the Complainants in relation to Formula One Racing, including links to third parties’ websites that publish news related to the Complainants in relation to Formula One.
On March, 15, 2015, the Complainant Red Bull GmbH sent a cease-and-desist email to the Respondent, requesting the Respondent to stop using the disputed domain names. The Respondent, then acting through his legal counsel, stated that, absent any trademark infringement, he refused to comply.
5. Parties’ Contentions
The Complainants first argue that the disputed domain names are identical or confusingly similar to the RED BULL and AUDI trademarks, as they incorporate both these brands.
The Complainants then state that the Respondent has no rights nor legitimate interests in the disputed domain names. The Complainants have not licensed or otherwise permitted the Respondent to use any of their trademarks or variations thereof, or to register or use any domain name incorporating any of those marks or any variations thereof. The Respondent not being commonly known by the disputed domain names, the Complainants are of the opinion that the Respondent has registered the disputed domain names to create the misleading impression of being in some way associated with the Complainants, trying to exploit their reputation and fame. In registering the disputed domain names, the Complainants affirm that the Respondent aims at diverting Internet users’ attention from the Complainants’ official domain name <redbullracing.com>.
The Complainants finally affirm that the disputed domain names have been registered and are being used in bad faith. The disputed domain names have been registered and use to attract Internet users. They disrupt the Complainants’ business by diverting users away from the Complainants’ websites. Referring to paragraph 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the Complainants argue that the existence of a disclaimer cannot by itself cure bad faith when bad faith is established by other factors. The fact that the Respondent has registered 27 additional domain names, most of which consist of the famous trademarks AUDI, RED BULL, VOLKSWAGEN and FORMULA ONE would further demonstrate the Respondent’s bad faith.
The Respondent argues that the disputed domain names are neither identical nor similar to the Complainants’ trademarks, as none of the Complainants would have registered any trademark containing both elements “Red Bull” and “Audi” together.
The Respondent asserts that he has registered and uses the disputed domain names in order to develop and maintain websites about Volkswagen, Audi and Red Bull in relation to the Formula One as fan sites, without generating any income. This would in the Respondent’s view be reflected by the content of the related websites which provide news about the relationship between the Complainants, notably triggered by rumors according to which the Complainant Audi AG may have considered entering the Formula One in association with the Complainant Red Bull GmbH. Referring to paragraph 2.5 of WIPO Overview 2.0, the Respondent reiterates that he has never generated any income (including through PPC) from the disputed domain names. He further adds that he has published a clear disclaimer at the top of each of the websites.
The Respondent finally considers that, as a fan site, the disputed domain names have not been registered and used in bad faith, and that his registration of domain names containing third parties’ trademarks cannot be considered as a pattern of conduct, as all are meant to be fan sites with an express disclaimer. Absent any commercial use and financial gain, bad faith would be excluded.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainants must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) The disputed domain names are identical or confusingly similar to a trademark or a service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Prior to turning to the merits, the Panel however has to address two preliminary procedural issues.
A. Procedural Issues: Consolidation of the Complainants and Admissibility of Supplemental Filings
The Panel notes that the Complaint has been jointly filed by two distinct companies, each with distinct respective trademarks. This raises the question whether the Complaint may be brought by more than one Complainant. The Panel refers to paragraph 4.16 of WIPO Overview 2.0, which states in this regard: “WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation […]”.
In this case, all of the disputed domain names incorporate both of the Complainant’s trademarks. As such, and as set out in more detail below, the disputed domain names raise a common grievance against the Respondent. The Panel furthermore considers it in the interests of procedural efficiency and fairness that the Complainants bring the Complaint together.
On 15 February, 2016, the Complainants submitted spontaneously a supplemental filing, to which the Respondent responded on the same date. The Complainants then further submitted a second supplemental filing on February 18, 2016.
As the Respondent spontaneously responded to the first supplemental filing made by the Complainants, the Panel is willing to take them into account. The second supplemental filing made by the Complainants on February 18, 2016, however, shall be disregarded.
B. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainants have to prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
The well-known character of the Complainants’ trademarks is undisputed and has been confirmed by numerous UDRP panels (see, among others: Audi AG v. Mohamed Maan, WIPO Case No. D2015-0756; Red Bull GmbH and Red Bull AG v. ec aka 3.taiwan, WIPO Case No. D2013-1250).
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that a domain name is identical or confusingly similar to a trademark for purposes of the first element of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). The mere addition of the word “racing” in the <audi-redbullracing.com> and <audiredbullracing.com> disputed domain names does not exclude such likelihood of confusion as “racing” is a descriptive term, all the more with regards to brand owners involved in the automobile industry, respectively as an automobile manufacturer and as a company involved in Formula One Racing.
The argument raised by the Respondent, according to which none of the Complainants own a trademark containing both terms “Red Bull” and “Audi”, proves unconvincing, as users may be led to believe that there is a form of affiliation between the Complainants that would be officially displayed and presented through these websites by the Complainants. Such is not the case. Furthermore, each Complainant’s trademark is clearly identifiable within each of the disputed domain names; this fact alone supports a finding of confusing similarity.
As a result, there is no doubt in the Panel’s view that the disputed domain names are all confusingly similar to the Complainants’ trademarks.
Consequently, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
C. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainants have to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names.
As stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in a domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Following that decision, subsequent UDRP panels developed a consensus view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see paragraph 2.1 of WIPO Overview 2.0).
In the present case, the Complainants are the respective owners of the well-known RED BULL and AUDI trademarks. The Complainants have no business or other relationships with the Respondent. As a result, the Panel finds that the Complainants have made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain names.
Consequently, it was up to the Respondent to demonstrate rights or legitimate interests by showing, among other circumstances, any of the following elements (see paragraph 4(c) of the Policy):
(i) Before any notice to it of the dispute, the Respondent used or made preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) The Respondent is commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel considers the arguments raised by the Respondent to be unconvincing.
As rightfully put by the Complainants, it turns out that the Respondent’s behavior has already been put under scrutiny by a prior UDRP panel with regards to the domain names <volkswagen-formula1.com>, <volkswagenformula1.com>, <volkswagen-f1.com> and <volkswagenf1.com> (see Volkswagen AG v. Thijs van der Tuin, WIPO Case No. D2015-2106). The page displayed under the domain name <volkswagenf1.com> was the same as the one currently displayed under the disputed domain names. The panel considered that the site could not be classified as a fan site, first because it did not, at the time of filing, give that appearance, and second because the Respondent had registered 30 domain names combining third-party trademarks.
The Panel in the present case can only opine to such decision. It appears that the Respondent is well aware of the UDRP proceedings and has carefully considered paragraph 2.5 of WIPO Overview 2.0 in taking into accounts the constraints described in this paragraph. One may debate as to whether the websites attached to the disputed domain names can be considered as fan sites, an argument that is doubtful considering the lack of any attempt to interact with and build a community as a fan site would normally do; the Panel need not deal with that though. More than that, as rightfully pointed out by the prior Panel in Volkswagen AG v. Thijs van der Tuin, supra, the registration by the Respondent of 30 domain names combining third-party trademarks was beyond what can be considered bona fide behavior and amounted to unfair exploitation of those domain names rather than a legitimate fan site. The same turns out to be so in the present case, as the Panel cannot find any legitimate interest in the Respondent’s registration of six domain names related to third parties’ trademark rights in order to create websites where exactly the same content is displayed, instead of registering a single website to that effect. Such a behavior excludes in the Panel’s view any rights or legitimate interests in the disputed domain names.
In light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
D. Registered and Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, for the Complainants to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.
Bad faith requires a respondent to be aware of the complainant’s trademarks. In the present case, there is no doubt that the Respondent was fully aware of the Complainants’ trademarks and of their corporate identities when it registered the disputed domain names. The Respondent does not even try to deny his knowledge.
As pointed out above, the sites attached to the disputed domain names cannot be considered as fan sites. The Panel shares the panel’s view in the Volkswagen AG v. Thijs van der Tuin, supra, according to which:
“Registering and using the trade marks of third parties without their authorization in anticipation of future joint business interests between the trade mark owners is a strong indication to the Panel that the registration of the Domain Names [was] in bad faith. The explanations provided by the Respondent do not stand up. The alleged purpose for registering the Domain Names was to set up fan sites that gather information on Audi, Volkswagen and Red Bull in relation to Formula 1. […]. He also registered up to 26 other domain names which combine third party trade marks, e.g., <f1onbbc.com>, <redbull-audi.com> and <audisportf1.com>. Again the Respondent’s explanation is that these were registered to be used as fan sites. But the content of these websites [does] not bear this out.
The Panel accepts the Complainant’s submission that this appears to be a planned blocking strategy of domain names which could potentially be of great value if the Complainant does go ahead with the reported plans. The registration of multiple domain names comprising a combination of trade marks belonging to different parties which may be going into business with one another amounts to a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name, demonstrating registration and use in bad faith.”
The above statement applies mutatis mutandis in the present case. Registration of a domain name including 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. Perloegos Properties, WIPO Case No. D2005-1085). This is further demonstrated by the registration of 26 other domain names consisting of third parties’ trademarks which, unlike the Respondent’s statements, tend to portray his behavior, already sanctioned by prior Panels, as a pattern of conduct. Additionally, the Panel does not view the registration of four domain names comprising only terms identical to the Complainants’ marks as supporting a legitimate fan site as they are names one would normally expect to be registered by the Complainants.
As a result, the Panel considers paragraph 4(a)(iii) of the Policy to be fulfilled.
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 names <audi-redbull.com>, <audiredbull.com>, <audi-redbullracing.com>, <audiredbullracing.com>, <redbull-audi.com> and <redbullaudi.com> be cancelled.
Date: February 25, 2016