WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Mario Deely
Case No. D2017-2559
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 Mario Deely of Pacifica, California, United States of America ("United States") (incorrectly listed as China in the registrant details).
2. The Domain Name and Registrar
The disputed domain name <nyredbullsstore.com> (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 21, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name, and 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 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 25, 2018.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 31, 2018. 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.
Due to an administrative oversight, it appears that the Center's Written Notice of the Complaint was not sent to the Respondent's WhoIs-listed fax number. The Panel issued a Panel Order on February 21, 2018, in which the Panel ordered the Center to forward Written Notice of the Complaint to the abovementioned fax, granting the Respondent a five day period (i.e., through February 26, 2018) in which to indicate whether it wished to participate to this proceeding. No reply was received from the Respondent. As such the Panel proceeds with its decision.
4. Factual Background
The Complainant is a worldwide producer of the Red Bull energy drink. It was first sold in Austria in 1987 and internationally since 1992. Currently, the RED BULL Energy Drink is sold in 172 countries all over the world. Its sales volume has grown from 113 million serving units in 1994 to over 6 billion worldwide in 2016. In the United States, the numbers rose from approximately 1.9 billion serving units in 2012 to over 2.3 billion serving units in 2016. In 2016, Red Bull invested over EUR 707.9 million worldwide in media marketing. The Complainant has also acquired reputation in the media sector and as the organizer of sport, music, fashion and cultural events. In 2016, Red Bull organized 950 events in more than 80 different countries with approximately 510,000 participants. In March 2006, Red Bull became the first operator of a Major League Soccer team, Red Bull New York, commonly known as the "New York Red Bullsˮ. In March 2015, Red Bull began operating New York Red Bulls II, a United Soccer League professional team, with the Red Bull Arena as its home ground.
The Complainant is the owner of multiple registrations and applications of trademarks consisting of or containing the RED BULL mark and covering an extensive range of goods and services, such as
- International Registration No. 961854 RED BULL, registered on March 19, 2018;
- United States Trademark No. 3999209 RED BULL NEW YORK, registered on July 19, 2011;
- United States Trademark No. 4578384 Double Bull Device, registered on August 5, 2014.
The Complainant runs the RED BULL channel on YouTube and it has reached a cumulative total of over 5.7 million subscribers. Red Bull videos received more than 522 million views on YouTube in 2016. Currently, Red Bull has more than 48.5 million fans on Facebook.
The Complainant is the Registrant of a large number of domain names (over 1,611) containing the
RED BULL mark, both under generic and country-code Top-Level Domains, including six domain names containing the words "New York" or "NY".
According to the Registrar, the Respondent registered the Domain Name on March 24, 2017, which resolves to an unauthorized online shop for clothing bearing the Complainant's trademarks.
5. Parties' Contentions
The Complainant provides trademark registrations, and submits with reference to former UDRP cases that its trademark is internationally famous. The Complainant argues that the Domain Name reproduces the Complainant's trademark. The Complainant argues that the generic wording "store" used in the Domain Name, would not prevent a finding of confusing similarity. Likewise with "ny" as it is merely an abbreviation of New York. It does not provide additional specification or sufficient distinction from the Complainant or its mark. The addition of the letter "s" to the word "redbull" does not significantly affect the appearance or pronunciation, and it should, according to the Complainant, be considered as typo-squatting to take advantage of a common typing error. Hence, the Domain Name is confusingly similar to the Complainant's trademark.
The Complainant argues that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant's trademark. The Respondent has no prior rights or legitimate interests in the Domain Name. The Respondent is not making a fair or legitimate non-commercial use of the Domain Name. On the contrary, according to the Complainant, the Respondent has picked the Domain Name to create the misleading impression of being in some way associated with the Complainant. The Respondent is making an illegitimate use of the Domain Name, with intent to divert Internet users to its website and prevents the Complainant from exercising its rights to the trademark and managing its presence on the Internet.
As to bad faith, the Complainant argues that it is implausible that the Respondent was unaware of the Complainant when it registered the Domain Name. The Complainant is famous throughout the world. The Complainant's mark is unique and it has been used for many years. The Respondent is using the Domain Name to set up an unauthorized online shop for clothing (jerseys) bearing RED BULL registered trademarks and trademarks related to the NEW YORK RED BULLS. By using the Domain Name this way, the Respondent has intentionally attempted to attract, 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. Such use tarnishes the distinctiveness and reputation of the Complainant's trademarks and it disrupts the Complainant's business by diverting consumers away from the Complainant's official domain names and websites.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark RED BULL.
The test for confusing similarity involves the comparison between the trademark and the domain name. In this case, the Domain Name is confusingly similar to the Complainant's trademark. Neither the addition of the word "store", nor the addition of "ny" for New York, provides sufficient distinction from the Complainant's mark. The same is the case with the addition of the letter "s". For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ".com", see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.11.
The Panel finds that the Domain Name is confusingly similar to trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing its trademarks or otherwise make use of its marks. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. As documented by the Complainant, the Respondent uses/has used the Domain Name to an unauthorized online shop for clothing (jerseys) bearing RED BULL registered trademarks and trademarks related to the NEW YORK RED BULLS.
The Respondent diverts consumers from the Complainant's official websites. The Panel refers to Red Bull GmbH v. liuke, liu ke, WIPO Case No. D2017-1433 (<nyredbullsjersey.com>): "Bearing in mind the long, prior and extensive use, promotional activities and reputation of the Complainant's RED BULL trademarks, 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 trademarks. 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 Bull". This is neither a bona fide offering nor a legitimate noncommercial or fair use within the meaning of the Policy.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
WIPO UDRP panels have already stated in various cases, that the Complainant's trademark has a very strong reputation and is widely known all over the world; see e.g., Red Bull GmbH v. Jinsoo Yoon, WIPO Case No. D2016-2351.
Taking into account the content of the Respondent's website at the Domain Name, and the fact that the Complainant is famous throughout the world, it is likely that the Respondent was aware of the Complainant's trademark and its business when the Respondent registered the Domain Name.
The Respondent is using the Domain Name to set up an unauthorized online shop for clothing (jerseys) bearing Red Bull registered trademarks and trademarks related to the NEW YORK RED BULLS. By using the Domain Name this way, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to its source, sponsorship and affiliation. This Panel agrees with the Complainant that such use diverts consumers from the Complainant's official websites. It constitutes bad faith pursuant to the Policy. The bad faith is supported by the fact that the Respondent has not responded to the Complainant's contentions.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning 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 Domain Name <nyredbullsstore.com> be cancelled.
Date: March 2, 2018