WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Isaac Goldstein, Domain for Sale Check Afternic.com
Case No. D2019-0957
1. The Parties
Complainant is Red Bull GmbH, Austria, represented by TALIENS, Germany.
Respondent is Isaac Goldstein, Domain for Sale Check Afternic.com, Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <redbullsoundclash.com> (“Domain Name”) is registered with DropCatch.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2019. On April 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 23, 2019.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on June 3, 2019. 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
Complainant is the producer of the Red Bull energy drink, which has been sold in Austria since 1987 and internationally since 1992. The drink is currently sold in 172 countries. In 2017, 6.3 billion “serving units” of 250 ml each were sold around the world. Complainant has actively promoted its RED BULL trademark through substantial marketing expenditures, including through operating a RED BULL channel on YouTube; hosting events, sponsoring sporting events and organizing and sponsoring cultural events.
“Red Bull Sound Clash” refers to a competition hosted by Complainant in which rival live musical acts perform before audiences in a competitive setting. Complainant has hosted numerous such competitions since 2006 in Europe, the United States of America, South America, Asia and the Middle East.
Complainant is the proprietor of numerous trademark registrations (“Complainant’s Marks”), including the following:
- International trademark No. 961854 for RED BULL (combined mark) in classes 32 and 41, with a priority date of September 27, 2007 and a registration date of March 19, 2008;
- Hong Kong, China trademark No. 301831554 for RED BULL (combined mark) in class 32, with a registration date of February 11, 2011;
- International trademark No. 1202495 for SOUND CLASH (word mark) in classes 9, 25 and 41, with a registration date of June 6, 2013.
Complainant operates its main website at the domain “www.redbull.com”.
Respondent registered the Domain Name on December 2, 2018. The Domain Name resolved to a website featuring various links, including those labeled “Redbull” and “Energy drink”.
5. Parties’ Contentions
Complainant submits that the RED BULL trademark is famous worldwide, due to the longstanding presence of the product in the market, the extensive marketing expenditures and visibility enhanced by sponsorship and organization of many events (1,320 events in 2017, for instance), including the “Red Bull Sound Clash” contests. As a result, RED BULL trademark has developed considerable reputation and goodwill worldwide, and previous UDRP panels have since 2000 recognized the RED BULL trademark as being distinctive or with a strong reputation, or well-known. Complainant attaches several such decisions to the Complaint. Complainant’s trademark rights significantly predate the registration of the Domain Name, which contains Complainant’s Marks in their entirety, and that the confusing similarity is enhanced by the combination of two of Complainant’s Marks, thereby suggesting proximity to the “Red Bull Sound Clash” event.
Complainant submits that Respondent has no rights nor legitimate interests in respect of the Domain Name, as Complainant has not granted permission to Respondent to use its trademarks or register any such domains; Respondent was not using the Domain Name in connection with any bona fide offering of goods or services, nor is Respondent commonly known by that name. Rather, the Domain Name previously resolved via redirect to a German website commercializing mobile audio devices. Complainant alleges that Respondent offered the Domain Name for sale for the amount of USD 12,250 but such offer was no longer visible after Complainant sent Respondent a cease and desist letter. Complainant states that use for promoting commercial websites and offering the Domain Name for sale cannot be considered noncommercial use.
Complainant submits that Respondent has registered the Domain Name primarily for the purpose of selling or renting it for valuable consideration far in excess of the actual cost of maintaining the registration. Further, Complainant asserts that Respondent engaged in a pattern of registering domain names that infringe third parties’ trademarks and has indeed been named a respondent in more than 20 prior UDRP cases involving well-known trademarks. Since previous panels have acknowledged that Complainant’s Marks are known all over the world, Respondent knew or should have known about the RED BULL trademark at least. The combination of two of Complainant’s Marks is among the further circumstances cited by Complainant as demonstrative of Respondent’s bad faith. Respondent failed to reply to Complainant’s cease and desist letter and failed to provide any evidence of actual or contemplated good faith use. The Domain Name was registered and used in bad faith and Complainant requests transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the reasonable contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the trademarks RED BULL and SOUND CLASH, through at least international and Hong Kong trademark registrations, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s Marks with the Domain Name, the Panel finds that the Domain Name <redbullsoundclash.com> wholly incorporates and is identical to the combination of both Complainant’s Marks being confusingly similar to each of Complainant’s Marks. It is the consensus view of UDRP panels that the addition of a gTLD to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s Marks (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that the materials in the case file indicate that Respondent is not an agent or an employee authorized by Complainant, nor is Respondent a licensee or a subsidiary thereof. There is no evidence that Respondent is commonly known by the Domain Name or is pursuing a legitimate business activity under this name. Complainant’s rights in the trademarks predate the registration of the Domain Name by many years.
The Domain Name contains two of Complainant’s Marks, which tends to suggest sponsorship or endorsement by the trademark owner and therefore is incompatible with a finding of fair use. See WIPO Overview 3.0, section 2.5.1.
The Domain Name resolves to a website containing pay-per-click links, and previously resolved to a commercial website offering sound equipment for sale. Moreover, Respondent had offered the Domain Name for sale. None of these uses supports a finding of rights or legitimate interests in the Domain Name. See WIPO Overview 3.0, section 2.5.3.
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see L’Oreal v. Zhao Jiafei, WIPO Case No. D2015-1458). Respondent has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of fair use of Complainant’s Marks.
The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith. As previous UDRP panels have confirmed, the RED BULL trademark is well-known ( See, for instance, Red Bull GmbH v. Mohammed Elhemed, Red Bull Effects, WIPO Case No. D2018-0321; Red Bull GmbH v. WhoisGuard Protected, WhoisGuard, Inc. / Diannia Hallclutts, WIPO Case No. D2018-0245; Red Bull GmbH v. Jinsoo Yoon, WIPO Case No. D2016-2351; Red Bull GmbH v. Hulmiho Ukolen/Whis protection, this company does not own this domain name s.r.o., WIPO Case No. D2015-2238).
The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of attracting Internet users seeking information about Complainant and its “Red Bull Sound Clash” events. Complainant’s rights in the RED BULL trademark predates the registration of the Domain Name by more than 10 years. Complainant’s rights in the SOUND CLASS trademark also predate the registration of the Domain Name. The Domain Name contains two of Complainant’s Marks in their entirety, without any alterations. Complainant’s significant activities to popularize both of these trademarks through, among other activities, sponsorship and organization of high profile events including the “Red Bull Sound Clash” concerts, are well-documented. There can be no question that Respondent chose the Domain Name in full awareness of Complainant’ s Marks and for the purpose of attracting Internet users for its own commercial gain.
The Domain Name resolves to a website offering pay-per-click links including links labeled “Redbull” and “Energy Drink”. Previously, the Domain Name was offered for sale at a significant premium over the actual cost of procuring and maintaining registration, and the Domain Name resolved to a commercial site offering goods that could be of interest to those interested in live music events. In the absence of any evidence to the contrary, all these activities demonstrate bad faith.
Respondent’s pattern of activity in registering domain names that are identical to third-party marks, and his failure to submit a response or to provide any evidence of actual or contemplated good faith use in this case, further demonstrate bad faith.
The totality of the circumstances, supported by the evidence supplied by Complainant, clearly demonstrate bad faith in the registration and use of the Domain Name.
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 <redbullsoundclash.com> be transferred to Complainant.
Date: June 17, 2019