WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. WhoisGuard Protected, WhoisGuard, Inc. / Diannia Hallclutts
Case No. D2018-0245
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 WhoisGuard Protected, WhoisGuard, Inc. of Panama / Diannia Hallclutts of Conway, Arizona, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <redbullsmlsstore.com> (the "Disputed Domain Name") is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 5, 2018. On February 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center sent an additional communication to the Complainant on February 15, 2018, further clarifying the Respondent contact information as provided by the Registrar. The Complainant filed an amendment to the Complaint on February 15, 2018.
The Center verified that the Complaint together with the amendment to 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 February 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 9, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on March 18, 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.
4. Factual Background
The Complainant is a worldwide producer of 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 a 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 operator of a Major League Soccer team, RED BULL New York, commonly known as the "New York Red Bulls". 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 with registration date March 19, 2008;
- United States Registration No. 3999209 RED BULL NEW YORK with registration date July 19, 2011;
- United States Registration No. 4578384 Double Bull Device with registration date August 5, 2014.
These trademarks are referred to collectively in this decision as the "RED BULL trademark".
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 containing the RED BULL mark, both under generic and country-code Top Level Domains, including domain names such as <redbullshop.com> and <newyorkredbulls.com>.
According to the Registrar, the Respondent registered the Disputed Domain Name on February 27, 2017.
The Domain Name currently resolves to a website (the "Respondent's Website") which is an online shop purporting to be the "New York Red Bulls Official Online Store" and which purports to sell approved New York Red Bulls merchandise, such as shirts and other items of clothing.
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 Disputed Domain Name reproduces the Complainant's trademark. The Complainant argues that the addition of the letter "s" being either a plural or a possessive term, the generic wording "store", and the addition of the initials "mls" being a common abbreviation for "major league soccer") used in the Disputed Domain Name would not prevent a finding of confusing similarity. The Disputed Domain Name does not provide additional specification or sufficient distinction from the Complainant's RED BULL trademark. Hence, the Disputed Domain Name is confusingly similar to the Complainant's RED BULL 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 RED BULL trademark. The Respondent has no prior rights or legitimate interests in the Disputed Domain Name. The Respondent is not making a fair or legitimate noncommercial use of the Disputed Domain Name. On the contrary, according to the Complainant, the Respondent has picked the Disputed 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 Disputed Domain Name, with intent to divert Internet users to its website and prevent 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 the Respondent registered the Disputed Domain Name. The Complainant is famous throughout the world. The Complainant's mark is unique and it has been used for many years. Under the website "www.teamredbullsmlsshop.com", the Respondent conducts an unauthorized online-shop for clothing bearing Red Bull registered trademarks and trademarks related to the New York Red Bulls. By this use of the Disputed Domain Name, 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 of the Respondent's website. 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 websites.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to "employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent's failure to file any Response. While the Respondent's failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one of the named Respondents (WhoisGuard Protected, WhoisGuard, Inc.) appears to be a privacy or proxy registration service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent".
In the present case the Panel finds the substantive Respondent to be Diannia Hallclutts – and references to the Respondent should be understood as being to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the RED BULL trademark. UDRP panels have already stated in various cases that the Complainant's trademark has a strong reputation and is known all over the world; see e.g. Red Bull GmbH v. Jinsoo Yoon, WIPO Case No. D2016-2351.
The Disputed Domain Name is confusingly similar to the Red Bull trademark. The test for confusing similarity involves the comparison between the trademark and the Disputed Domain Name. Neither the addition of the letter "s", the dictionary word "store", nor the addition of "mls" (a standard abbreviation for "Major League Soccer"), provide sufficient distinction from the Complainant's RED BULL trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also well established that the generic Top-Level Domain ("gTLD"), in this case ".com", does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(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.
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the RED BULL trademark. The Complainant has prior rights in the Red Bull trademark which precede the Respondent's registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the RED BULL trademark, the extent of the reputation the Complainant enjoys in the RED BULL trademark, the confusingly similar nature of the Disputed Domain Name to the RED BULL trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes the Respondent was aware of the Complainant's RED BULL trademark when it registered the Disputed Domain Name. The Panel concludes that the Respondent selected the Disputed Domain Name because of its similarity with the Complainant's trademark. The addition of only the letter "s" and the terms "mls" and "store" suggests to the Panel that the Respondent was deliberately choosing a name with a close and confusing connection to the New York Red Bulls Major League Soccer Team as sponsored by the Complainant.
The overall impression created by the Respondent's website suggests that the Disputed Domain Name was registered by the Respondent in order to establish an online business which deceived Internet users into believing that the Respondent's website was an officially approved website offering merchandise relating to the New York Red Bulls major league soccer team, and as such was operated by, or with the authority of, the Complainant. The Respondent's actions are clearly directly within paragraph 4(b)(iv) of the Policy: "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location".
In addition, the Respondent has been given an opportunity to provide any legitimate explanation it may have as to its activities. Again, based on the evidence provided by the Complainant, the burden of production in this respect is shifted to the Respondent. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith registration and use of the Disputed Domain Name.
As a result, and applying the principles in the above-noted decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been 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 Name <redbullsmlsstore.com> be transferred to the Complainant.
Nick J. Gardner
Date: April 1, 2018