WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. liuke, liu ke
Case No. D2017-1433
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 liuke, liu ke of Dalian, Liaoning, China.
2. The Domain Name and Registrar
The disputed domain name <nyredbullsjersey.com> is registered with Xin Net Technology Corp. (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2017. On July 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 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.
On July 26, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 27, 2017, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in Chinese and English of the Complaint, and the proceedings commenced on August 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 29, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on September 4, 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 is the 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 172 countries. The Complainant's sales volume was over 6 billion serving units in 2016, of which 1.9 million were attributable to China.
The Complainant's brand of products is promoted via television, cinema, radio and other forms of media marketing. The Complainant invested over EUR 707.9 million on a worldwide basis in marketing expenditure. In China alone, more than EUR 211,000 were invested in marketing in 2016.
As a result, the Complainant is not only the manufacturer of the well-known Red Bull energy drink but has also acquired significant reputation in the media sector, and as the organizer of sport, music, fashion and cultural events. The Complainant has been involved in numerous prestigious international and national events such as the formula one racing, the Dakar Rally Races and the Red Bull Air Race World Championship. The Complainant's Red Bull channel on "Youtube" reached a cumulative total of over 5 million subscribers in 2016, and it currently has more than 47.7 million fans on "Facebook".
The Complainant's RED BULL trade mark and other marks containing the "red bull" words have been extensively registered across 202 jurisdictions, including in China. The registrations include international registration no. 961854A, with a priority date of September 27, 2007 and international registration no. 1108568A, with a priority date of November 9, 2010.
The Complainant is the registrant of over 1,611 domain names containing the RED BULL trade mark. Its website at "www.redbull.com" contains information on the Red Bull energy drink, sports activities, video records of sports events by the Complainant, cultural activities, etc. The said webpage received approximately 550 million page views in 2015.
In relation to the soccer club, New York Red Bulls, the Complainant has 44 domain name registrations incorporating the words "red bull" and additional wordings "new york" or "ny". An official online shop related exclusively to the New York Red Bulls team is available to which Internet users are directed from the "www.newyorkredbulls.com" website. At the online shop, one would be able to find the "jersey collection" and "jersey department".
The disputed domain name was registered on April 19, 2016. The disputed domain name is used in relation to an online shop offering the sale of jersey clothing and gadgets related to Red Bull sponsorship of the New York red bulls, which is of the teams playing in major league soccer. The Respondent's website displays the Red Bull figurative logo related to New York Red Bulls, i.e. with an indication "official partner". The Respondent's website was not authorized by the Complainant.
5. Parties' Contentions
1. The disputed domain name is identical and/or confusingly similar to the Complainant's well-known RED BULL trade mark in which it has rights. The mark has been recognized by many UDRP panels to be well known. The RED BULL mark has been reproduced in its entirety. The "s" in the disputed domain name indicates plural, "ny" indicates New York, and "jersey" is the known English generic word. Considering that the Respondent's online shop offers the sale of jerseys, the term "jersey" in the disputed domain name serves to identify the type of goods the Respondent sells. The addition of generic or descriptive words does not prevent a finding of confusing similarity. The addition of the letter "s" is a case of typosquatting.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trade marks or to register any domain name incorporating any of those marks or variations thereof. The Respondent is not commonly known by the name "nyredbullsjersey.com". In the light of the reputation and fame of the Complainant and its RED BULL trade mark, as well as the activities of the Complainant all over the world including in China, it can be concluded that the Respondent purposefully registered the disputed domain name to create the misleading impression of being in some way associated with the Complainant.
3. The Respondent registered and is using the disputed domain name in bad faith. The Respondent must have known of the Complainant's famous RED BULL trade mark when it registered the disputed domain name. The Respondent is using the disputed domain name to operate an unauthorized online shop selling clothes and gadgets bearing the registered RED BULL trade marks related to the New York Red Bulls. The Complainant has intentionally attracted, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship and affiliation. The use of the Complainant's New York Red Bulls logo and the term "official partner" on the website shows the Respondent's comprehensive knowledge of the Complainant's brand and marks.
The Respondent is the owner of 40 domain names, some of which seem to violate proprietary rights of well‑known brand owners. The Respondent seems to use these domain names to operate online shops selling items bearing the trade marks of well-known United States of America ("US") and Canadian hockey teams such as New York Rangers, Chicago Blackhawks, Detroit Red Wings, Montreal Canadiens etc.
The Respondent did not reply to the Complainant's contentions.
6. Discussion And Findings
6.1 Preliminary Issue: Language of the Proceeding
The Rules provide that "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding" (paragraph 11(a)).
The Registration Agreement in this case is Chinese. The Complainant, however, requested that English be applied as the language of the proceeding for the reason that requiring the Complainant to translate all the documents into Chinse would involve substantial costs and a significant delay to the proceeding. The Complainant submitted that the Respondent is very likely familiar with English, which is commonly used in international communication. The disputed domain name comprises words from the Latin alphabet. Furthermore, the evidence submitted shows that the Respondent registered a large number of domain names in English, some of them consisting of the names of famous US sports teams and the word "jersey".
Paragraph 10(c) of the Rules stipulates that "the panel shall ensure that the administrative proceeding takes place with due expedition."
The Panel notes that apart from the composition of the disputed domain name, the content of the Respondent's website to which the disputed domain name resolves is entirely in English. This is strongly indicative that the Respondent is well familiar with the English language. It also indicates that the Respondent is targeting Internet customers from the English-speaking "world".
In any event, the Respondent has been given the opportunity to respond on the issue of the language of the proceeding since all communications from the Center have been sent in Chinese as well as in English. Whilst there is the language requirement provided for in the Rules, at the same time, the Panel has to ensure that the proceeding takes place with due expedition.
Considering the circumstances of this case, the Panel believes that the Respondent would not be prejudiced if English were adopted as the language of the proceeding. The disputed domain name comprises English words and abbreviations and the webpage associated with the disputed domain name is in English. If the language were an issue for the Respondent, it could have raised this with the Center but it has not at any time indicated that it is not able to understand English. On the other hand, to require the Complainant to translate the Complaint and evidence into Chinese would significantly delay the proceeding. The Panel does not consider such a burden on the Complainant to be merited in this instance.
The Panel therefore determines that English should be the language of the proceeding in this case.
6.2 Substantive Issues
Paragraph 4(a) of the Policy prescribes that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established it has registered trademark rights in RED BULL. The question then is whether the disputed domain name is identical or confusingly similar to the said trade marks in which the Complainant has rights.
The Panel is of the view that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trade marks. The RED BULL trade mark is clearly identifiable in the disputed domain name. The element "ny" is a well-known abbreviation for "New York". The addition of the generic elements "ny", "jersey" (which corresponds to the type of goods sold on the Respondent's online store) and the letter "s" (being a plural of "bull") does not serve to remove the confusing similarity with the Complainant's RED BULL marks. It is also a well-established principle that the generic Top-Level Domain ".com" is to be disregarded when considering the issue of identity or confusing similarity under paragraph 4(a)(i) of the Policy since it merely functions as a technical requirement for domain names.
The Panel therefore concludes that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Bearing in mind the long, prior and extensive use, promotional activities and reputation of the Complainant's RED BULL trade marks, even in China where the Respondent is located, it is indeed highly unlikely that the Respondent independently and by pure chance chose to register the disputed domain name without any knowledge of the Complainant and its RED BULL trade marks. The evidence submitted by the Complainant in fact shows very clearly that the Respondent specifically targeted the Complainant's Red Bull brands and sought to profit commercially from the domain name registration, offering seemingly "official" sports jerseys of the New York Red Bulls soccer club. This does not constitute a legitimate or bona fide offering of goods and/or services. The Respondent, not surprisingly, did not file any response and brought nothing to rebut the Complainant's case.
In the absence of any response and evidence from the Respondent which shows, for instance (as set out in paragraph 4(c) of the Policy), that:
(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the disputed domain name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known (as an individual or business) by the disputed domain name; or
(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second element of paragraph 4(a) of the Policy has been established by the Complainant.
C. Registered and Used in Bad Faith
The screenshots of the Respondent's website which were submitted by the Complainant show that the Respondent has sought to give the impression that its website is that of the Complainant's New York Red Bulls website or is endorsed by the Complainant or associated with it. By selecting and registering the disputed domain name which incorporates the well-known RED BULL trade mark of the Complainant and references the New York Red Bulls soccer club, the Respondent's intention must have been to "attract, for commercial gain, Internet users to [the Respondent'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 [the Respondent's] website or location or of a product or service on [the Respondent's] website or location (paragraph 4(b)(iv) of the Policy).
The Respondent's registrations of other domain names incorporating the names of other well-known hockey clubs also indicates opportunistic bad faith and a pattern of conduct from which the Panel draws a negative inference.
The Panel concludes that the disputed domain name has been registered and used in bad faith by the Respondent.
The third element of paragraph 4(a) of the Policy has been established by the Complainant.
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 <nyredbullsjersey.com> be transferred to the Complainant.
Date: September 6, 2017