WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Li Ning
Case No. D2017-1092
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 Li Ning of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <shopredbulls.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 June 2, 2017. On June 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 4, 2017, 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 June 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 7, 2017.
The Center appointed Martin Schwimmer as the sole panelist in this matter on July 28, 2017. 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 Red Bull GmbH ("Red Bull") is the producer of the Red Bull energy drink, first sold in 1987. In addition to energy drinks, the Complainant sells a very broad range of licensed merchandise, and operates, inter alia, a website at "www.shopredbull.com". It operates the United States of America ("United States") Major League Soccer team "Red Bull New York", also known as the "New York Red Bulls".
The Complainant is the owner of several trademark registrations, including, e.g., International Trademark Registration No. 961854A for RED BULL, registered on March 19, 2008.
The Respondent registered the Domain Name, <shopredbulls.com> on September 2, 2016. The Domain Name is used to purportedly sell jerseys bearing "New York Red Bulls" insignia. The Respondent's website at "www.shopredbulls.com" identifies itself as "the Official New York Red Bulls Online Store".
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's RED BULL mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the RED BULL trademark. It has registered the RED BULL trademark in 205 jurisdictions around the world, including the United States of America and China. Since the launch of the Red Bull energy drink in 1987, the Complainant has engaged in extensive advertising and sponsorship to promote the RED BULL mark.
The Complainant operates a website at "www.redbullshopus.com", which displays a wide range of merchandise bearing the RED BULL mark.
In 2006 the Complainant became the main sponsor of the Major League Soccer team based in New York/New Jersey, which it renamed "Red Bull New York" (commonly known as "New York Red Bulls"). The team operates a website at "www.newyorkredbulls.com". By reason of the Complainant's sales and marketing, the RED BULL mark has a very strong reputation and is widely known throughout the world.
The Complainant alleges that it authorizes the sale of apparel bearing the RED BULL New York logo and related marks. Major League Soccer's website and other websites that promote the sale of licensed RED BULL soccer merchandise, as well as media that report on Major League Soccer, often refer to the team as the "New York Red Bulls".
The Respondent has no rights or legitimate interests in the Domain Name as the Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use the RED BULL mark. The Respondent is not commonly known by the Domain Name. Finally there appears to be no legitimate reason for the Respondent to register the Domain Name.
The Domain Name was registered and is being used in bad faith to intentionally attract, for commercial gain, Internet users to the Respondent's website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is the owner of the RED BULL trademark, owning registrations for RED BULL as a trademark throughout the world, including in the United States and China where the Respondent purports to reside.
The Domain Name consists of the RED BULL mark, the prefix "shop" and an "s" after the RED BULL mark. The Panel finds that the addition of the term "shop" and the letter "s" to the Domain Name do not distinguish the Domain Name from the Complainant's RED BULL mark. The Complainant's RED BULL mark is clearly recognizable in the Domain Name. The fact that the Domain Name also incorporates the name of the Complainant's "Red Bulls" sport team also serves to reinforce the confusing similarity.
The Panel finds that the Domain Name is confusingly similar to the Complainant's RED BULL mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel notes that the Respondent's website bears the following wording:
"Shop the new 2016 New York Red Bulls jerseys now at the Official New York Red Bulls Online Store. Show your team pride with new authentic and replica New York Red Bulls jerseys available for men, women, and kids."
The Respondent's website also prominently displays the RED BULL New York logo. The Respondent's website offers for sale soccer jerseys bearing the Complainant's RED BULL mark, and other trademarks associated with the Complainant's soccer team.
The Complainant states that the Respondent's website is not authorized in any manner. As the Respondent did not respond, the Panel may assume that the Respondent is not in fact authorized by the Complainant.
Once a complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made by the Complainant. It is undisputed that the Respondent has not been authorized to use the Complainant's marks.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights or legitimate interests in a domain name by demonstrating, inter alia, that "(iii) the respondent is 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."
As stated, the record reflects that the Respondent's website under the Domain Name purports to sell RED BULL branded soccer gear. While a reseller of a complainant's trademarked products, could, in theory, be making a "bona fide offering of goods or services" (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter "Oki Data")), here, the Respondent does not satisfy the conditions set out in Oki Data.
The panel in Oki Data set out a four part test. Two factors potentially come into play here: (1) "the respondent must actually be offering the goods or services at issue"; and (2) "the site itself must accurately disclose the respondent's relationship with the trademark owner".
The Complainant has not indicated whether or not the merchandise on the Respondent's website is authentic, so the Panel cannot determine whether the Respondent is actually offering the goods or service at issue.
However, the Respondent has run afoul of the fair use factor, in that by utilizing the Complainant's logo, and by falsely stating that its site was the official website of the Complainant, the Respondent has not accurately described its relationship with the trademark owner.
The Panel notes that the Complainant wins by more than one goal in this factor. The Panel also finds that the name "Shop Red Bull" without other elements that might suggest the source is a third party other than the trademark owner (such as the terms "Used" or "Unofficial"), suggests endorsement by the trademark owner. The Respondent has thus exceeded the nominative fair use defense in this regard as well. This is especially the case, where, as here, the Complainant has shown use of an official domain name <shopredbull.com>, differing only by a single letter from the Domain Name of the Respondent.
As the Respondent has not been authorized to use the Complainant's RED BULL mark, has not been commonly known by the Domain Name, and has not otherwise demonstrated rights or legitimate interests in the Domain Name, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant owns the famous RED BULL trademark and various trademarks associated with its "Red Bull New York" soccer team. The Respondent clearly has targeted the Complainant, as it is selling New York Red Bulls jerseys that purport to originate from the Complainant. Even if such jerseys were authentic (and there is no evidence that suggests that they are), the Respondent's registration and use of the Domain Name is in bad faith, as the use of a domain name reflecting the Complainant's trademark without distinguishing elements, as well as the Respondent's false declaration that its website is the official website of the Complainant, exceeds any possible concept of nominative fair use. If the jerseys are not authentic, or if the Respondent does not actually ship jerseys ordered over the site, then again, the Respondent is clearly acting in bad faith.
As the Respondent is likely acting for commercial gain with obvious knowledge of the Complainant's rights in its famous RED BULL trademark, the Panel finds that the evidence establishes bad faith registration and use under paragraph 4(b)(iv) of the Policy. Therefore, 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, <shopredbulls.com>, be transferred to the Complainant.
Date: August 1, 2017