WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Milena Kasparova, 666 Company s.r.o.
Case No. D2016-1362
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 Milena Kasparova, 666 Company s.r.o. of Prague, Czech Republic.
2. The Domain Names and Registrar
The disputed domain names, <redbulltv.net> and <redbulltv.org>, are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2016. On July 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, 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 proceedings commenced on July 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2016. The Response was filed with the Center on July 29, 2016.
On August 3, 2016, the Complainant requested that the administrative proceedings be suspended, and the administrative proceedings were suspended on the same date. On August 23, 2016, the Complainant requested that the administrative proceedings be reinstituted, and the administrative proceedings were reinstituted on the same date.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 29, 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 manufacturer of the Red Bull energy drink, first sold in Austria in 1987 and currently available in 171 countries around the world (Annex D to the Complaint).
In addition to several other domain name registrations, the Complainant is the owner of the <redbull.tv> domain name which was registered on June 26, 2000.
As regards trademarks, the Complainant is the owner of, in addition to various other registrations around the world, the following international registrations:
- No. 961854 for RED BULL with priority date of September 27, 2007 registered on March 19, 2008, in international classes 25, 28, 32, 41 and 43; and
- No. 1108568 for REB BULL (and device) registered on May 5, 2011, in international classes 25, 28, 32, 41 and 43.
The disputed domain names were registered on November 12, 2012. Currently, parked pages resolve from them.
5. Parties’ Contentions
The Complainant asserts that it is the manufacturer of the Red Bull energy drink whose sales volume in 2015 was of over 5.9 billion units. The Complainant further asserts that it has spent more than EUR 4.6 billion in the promotion of its energy drink in the European Union from 1987 until 2015, what led its trademark to become the market leader and extremely well known all over the world.
In addition to manufacturing its famous energy drink, the Complainant has also acquired significant reputation in the media sector as the organizer of sport, music, fashion and cultural events, having in the year of 2015 organized 1,049 events in 84 different countries.
One of the forms used by the Complainant in the promotion of its activities is “Red Bull TV” which offers entertainment from the worlds of sports, arts and music as well as the Red Bull channel on YouTube which reached over 5 million subscribers and more than 380 million views of its videos in 2015.
As to the disputed domain names, the Complainant asserts that they misappropriate its famous RED BULL trademark also creating a likelihood of confusion with Internet users that are looking for its “Red Bull TV” channel, thus conveying the false and misleading impression that the disputed domain names would identify websites owned or endorsed by the Complainant, what is not true.
Also, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names given that:
- the Complainant has not licensed or otherwise authorized the Respondent to register or use the disputed domain names and there is no connection between the Complainant and the Respondent;
- the Respondent is not commonly known by the disputed domain names;
- the Respondent’s intention was to create confusion with the Complainant’s well-known mark and earlier domain name related to the “Red Bull Television”, <redbull.tv>; and
- the Respondent is not making a legitimate commercial or noncommercial use of the disputed domain names, which prevent the Complainant from exercising its trademark rights in them.
Bad faith in the registration and use of the disputed domain names arises, according to the Complainant, in view of the fact that the Respondent registered and passively used the disputed domain names to take advantage of the goodwill and reputation of the Complainant’s famous trademark. In addition to that, the Respondent also owns other domain names that incorporate third parties’ famous trademarks, such as <facebookgo.com>, <eurosporttv.net> and <eurosporttv.org>.
Lastly, another element to corroborate with the bad faith of the Respondent is that, in an attempt to solve the matter amicably the Complainant sent a cease-and-desist letter to the Respondent requesting the transfer of the disputed domain names. In its reply, the Respondent signaled with its willingness to transfer them, to which the Complainant offered EUR 500. The Respondent, according to the Complainant, rejected such offer and presented the approximate value of USD 5,000 for the <rebulltv.org> depicted at the website “www.domainindex.com”.
On July 29, 2016, the Respondent submitted to the Center its Response stating that the expression “redbulltv” was not registered as a trademark by the Complainant at the time of the registration of the disputed domain names and that its plan was to create a website for young people.
Moreover, the Respondent asserts that the disputed domain names were never used for financial gain and, in stating that the request to transfer them is unjustified, reinstates its offer to sell them to the Complainant at the prices estimated at the website “www.domainindex.com”.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has 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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to it, according to paragraph 4(i) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established its rights in the RED BULL trademark as set out in Section 4 above.
The Panel finds that the disputed domain names <redbulltv.net> and <redbulltv.org> reproduce the Complainant’s trademark in its entirety, used by the Complainant in the promotion of its products and activities together with the addition of the generic term “tv”. The Panel finds that the disputed domain names are confusingly similar to the RED BULL trademark in which the Complainant has rights. The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain names. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable 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 (as an individual, business, or other organization) has been commonly known by the disputed domain names, despite not having acquired 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 Complainant’s trademark or service.
The Respondent, in its Response, merely states that its plan was “to create a website for young people”. No evidence was submitted to support such plan and leads the Panel to the conclusion that the Respondent’s alleged plan could solely rely on the fame of the Complainant’s trademark and its appeal to the young audiences largely targeted by the Complainant in the promotion of sport, music and cultural events promoted at its “Reb Bull TV” channel.
The feeble argument that the Complainant did not own at the time of the registration of the disputed domain names a word mark for RED BULL TV does not make such domain name registrations legitimate given the widely known status of the Complainant’s RED BULL trademark and the Complainant’s use, more than ten years before, of “Red Bull TV” in the promotion of its RED BULL trademark in television and television-related formats.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain names, or any possible link between the Respondent and the disputed domain names that could be inferred from the details known of the Respondent, corroborate the Panel’s finding of the absence of rights or legitimate interests.
In that sense, the Complainant indeed states that it has not licensed or otherwise permitted the Respondent to register or use the RED BULL trademark in the disputed domain names.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the owner of a trademark relating to the disputed domain names or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or
(ii) the Respondent has registered the disputed domain names 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; or
(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of the Complainant; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or location or of a product or service on the Respondent’s websites or location.
The Respondent states that the Complainant’s request for the transfer of the disputed domain names is unjustified. However, considering the evidence submitted, what really is unjustified is the Respondent’s conduct.
In the present case, the registration by the Respondent of other domain names that clearly target other third-parties famous trademarks such as <facebookgo.com>, <eurosporttv.net> and <eurosporttv.org> indicate that the Respondent has engaged in a pattern of abusive bad faith domain name registration.
Such bad faith is also confirmed by the Respondent’s insistence in selling the disputed domain names for clearly excessive amounts.
As to the bad faith in the use of the disputed domain names, the Panel notes the following circumstances:
(i) the Complainant’s trademark is widely known worldwide;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names;
(iii) all of the disputed domain names incorporate the Complainant’s trademark in its entirety, having additions to them (i.e., “tv”) which only link them even closer to such trademark in light of the Complainant’s activities;
(iv) the physical address provided by the Respondent appears to be a false one, the Center not having been able to contact the Respondent through such; and
(v) taking into account all of the above (as the panel did in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate.
For the reasons stated above, the Respondent’s conduct amounts to, in this Panel’s view, bad faith registration and use pursuant to 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 names, <redbulltv.net> and <redbulltv.org>, be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: September 8, 2016