WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. ESIA PTY LTD / Brian Newman
Case No. DAU2012-0029
1. The Parties
The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Davies Collison Cave, Australia.
The Respondent is ESIA PTY LTD / Brian Newman of Redbank, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <redbullracing.com.au> is registered with Crazy Domains Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2012. On November 23, 2012, the Center transmitted by email to Crazy Domains Pty Ltd a request for registrar verification in connection with the disputed domain name. On November 27, 2012, Crazy Domains Pty Ltd 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2012.
The Center appointed Frank R. Schoneveld as the sole panelist in this matter on January 10, 2013. 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 provided copies of status reports of registration in Australia of the RED BULL trade mark on July 28, 2005 in class 32 and for other classes on March 19, 2008, all of which are registered in the name of the Complainant.
Registration by the Respondent of the disputed domain name occurred on March 18, 2012. The Respondent is an Australian company incorporated on March 14, 2008 with Australian Company Number 130 181 412 as evidenced by a copy of an extract of ASIC records.
On October 19, 2012, the Complainant sent by email a letter to the Respondent alleging unauthorized use of the Complainant’s trade mark and requesting the Respondent to transfer the disputed domain name to the Complainant. In an email of October 29, 2012 (but also including a date “1/11/2012”) from the person named as the contact for the Respondent, the Respondent replied stating:
“…You will no doubt be aware that ESIA Pty Ltd. has not populated this domain with any material that might reasonably be described as competing or injuring or infringing on the Red Bull Trade Marks. EISA Pty Ltd. has gained no benefit, real or otherwise from the purchase this domain name to date. We will consider offers for the purchase this domain [sic]. We assess the value of this domain at approximately $2.2 Million…”
The disputed domain name resolves to a website for the domain name Registrar, Cheap Domains.
5. Parties’ Contentions
The Complainant contends that it launched its RED BULL mark in Australia in 1999 and registered as a company with that name in Australia in the same year, with the Red Bull name thereafter used in numerous famous racing events in Australia and globally including the Moto GP in Victoria, Formula 1 Circuit Racing, Dakar Rally, World Rally Championship, Red-Bull X-FIGHTERS in 2011 in Australia and Red Bull FLUGTAG also in 2011 in Australia.
The Complainant states that in 2011 it incurred costs of over AUD 47 million in media and marketing in Australia on the RED BULL mark and associated activities, including sponsorship of prominent athletes in racing events, as well as sponsorship of racing events themselves, both in Australia and globally, such as Red Bull Lighthouse to Leighton Kitesurfing race, Red Bull Air Race and Red Bull Roller Ragers.
The Complainant notes that it is the registered holder of <redbull.com> with links to other national Red Bull sites including <redbull.com.au> and is the registered owner of the RED BULL trade mark in 205 jurisdictions covering “…an extensive range of goods and services and span most of the 45 trade mark classes”.
The Complainant argues that it has acquired substantial goodwill and reputation in and to the “RED BULL” mark and is the owner at common law of the trade mark “RED BULL RACING”. It is argued that such common law trade mark can be concluded from the following:
- it is sponsor of the Formula 1 team RED BULL RACING;
- in 2005 Red Bull took over a Formula 1 team and re-named it RED BULL RACING, now one of two Formula 1 teams owned by the Complainant, noting that 2005 was the year this mark was first used;
- the RED BULL RACING logo and plain word mark appears on RED BULL RACING vehicles, gear, uniforms, and merchandise sold at the website <redbullshop.com>;
- the official website of RED BULL RACING is <redbullracing.com> registered by the Complainant, as well as 14 other domain names (top level and country code domains) that include the name RED BULL RACING, notably <redbullracingaustralia.com.au> and <redbullracingteam.com.au>, one registered as early as March 13, 2007 (i.e. <redbullracingbrasil.com>).
The Complainant states that the Respondent registered with ASIC a company with the name ESIA Pty Ltd. on March 14, 2008, and this company has 80 other registered domain names. The Complainant asserts that a number of these domain names incorporate the marks of third parties without indicating whether the use of such third party marks are legitimate or not. The Respondent’s website <esia.com.au>, according to the Complainant, is registered to Enitiative Pty Ltd. (a company deregistered on May 1, 2010) with this website promoting the Respondent as an “unfair dismissal specialist”.
The Respondent made no reply to the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant contends that the domain name is confusingly similar to its registered trade mark “RED BULL”. The additional word “racing” in the disputed domain name is a common word meaning “any sport that involves competing in races”, “moving swiftly” or “(of a person) following horse racing”. [see http://oxfordaddictionaries.com, accessed 22 Jan. 2013 at 19: 42]. The first two words of the disputed domain name is registered as the trade mark of the Complainant. The Complainant has provided evidence of use of the mark in Australia over a number of years. It is therefore concluded that at least the first two words would cause a reader to associate the disputed domain name with a trade mark in which the Complainant has rights.
The question arises whether the addition of the word “racing” would mean the disputed domain name is confusingly similar to the RED BULL trade mark within the meaning of Article 4(a)(i) of the auDRP. Confusion would arise if a reader of the disputed domain name was misled (inadvertently or otherwise) as to the origin, association with, ownership or control of a domain name and/or its connection with the trade mark that formed a predominant part of the disputed domain name. This would arise, in particular, if the disputed domain name contained a trade mark that had no association at all with the material on the website to which the disputed domain name resolves, and had no association with a person connected to the trade mark. For example, such connection might be a fan site, protest site, discussion site or some other relationship and not necessarily a commercial connection or association.
The predominant part of the disputed domain name is the same as the Complainant’s trade mark. The disputed domain name is then, at least similar to the Complainant’s trade mark, the only difference being the additional word “racing”. The addition of the common word “racing” suggests that the disputed domain name has some relationship, association or connection (whether positive, negative or otherwise) with the RED BULL trade mark in the context of racing. The Complainant has denied, and there is no evidence, that there is any such association, connection or relationship, and the website to which the disputed domain name resolves has no such relationship or connection. In such circumstances the disputed domain name would be likely to confuse a reader because of its similarity with the Complainant’s trade mark RED BULL.
In the absence of any submission by the Respondent, and given the above considerations, the Panel concludes that the disputed domain name is confusingly similar to the RED BULL trade mark in which the Complainant has rights.
In view of this finding, the Panel does not need to, and does not, consider the Complainant’s submissions concerning the name “Red Bull Racing”.
B. Rights or Legitimate Interests
The Complainant contends that the disputed domain name is not a match, an acronym or abbreviation of the Respondent’s company or trading name, organization or association and is not otherwise closely and substantially connected with the Respondent.
The Complainant also submits that the Respondent:
- does not own any trade mark applications or registrations in Australia
- does not provide goods or services related to Red Bull or racing, and is a service provider in a completely unrelated industry
- does not have any relationship with the Complainant that would entitle the Respondent to use the Complainant’s trade mark and name
- has no trading presence using the Red Bull or Red Bull Racing names
- is not known by the disputed domain name
- has not been authorized or given consent by the Complainant to use the Red Bull or Red Bull Racing names
The Complainant further states that the Respondent has not made any bona fide use of the disputed domain name in connection with an offering of goods or services, with no operational website and therefore no commercial use of the disputed domain name in relation to goods or services of the Respondent.
The Complainant argues that the mere parking of pages on the website to which the disputed domain name resolves is not a bona fide offering of goods or services.
After taking into account the submissions of the Complainant, in the absence of any response by the Respondent, and there being no use of the website other than to park the website to resolve to the domain name Registrar, Cheap Domains, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
The Complainant contends that the Respondent must have been aware of the Complainant’s trademark when it registered the disputed domain name, and intended to capitalize on the reputation of the Complainant by extorting a very large sum from the Complainant for the disputed domain name, or otherwise to use it to attract Internet users by creating confusion with the RED BULL mark. Further, the Complainant asserts that the Respondent is preventing the Complainant from trading online with its “Red Bull Racing” name at the .au level.
The Complainant notes that the Respondent admits it has “gained no benefit,… from the purchase of this domain name to date”, allegedly demonstrating (i) that the Respondent had no justification for requesting such an exorbitant amount for an unused domain name, and (ii) that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to another person, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. The Complainant asserts that the Respondent’s offer to sell the disputed domain name is a bad faith effort to extort as opposed to a good faith effort to compromise.
The Complainant also contends that inaction in relation to use of the disputed domain name can constitute bad faith.
It is clear that the Respondent has failed to use the disputed domain name, other than to park it to resolve to the Registrar, Cheap Domains. Further, the Respondent made it clear in its email of October 29, 2012 that it is making no benefit “real or otherwise” from the disputed domain name but yet offers to sell the disputed domain name at what appears to be an extremely high sum. It is most unusual, and inconsistent with normal profit making activities, for a commercial enterprise such as a company like the Respondent to purchase and then not use or take steps to benefit from an asset it values at more than AUD 2 million. If a Respondent corporation is using an asset that it admits is very valuable, to only park and resolve it to a Registrar of domain name, it is likely that its registration was for some other purpose than its current use. It is also noted that the offered price for transfer of the disputed domain name is much more than what could have possibly been expended as out-of-pocket costs directly related to the disputed domain name.
The auDRP at Article 4.b.(i) provides that there is evidence of registration and use of a domain name in bad faith if the Panel finds that there are “circumstances indicating that [the Respondent] has registered or acquired the domain name primarily for the purpose of selling… the domain name registration … for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name…”.
The circumstances above indicate that the Respondent has indeed registered the disputed domain name primarily for the purpose of selling the disputed domain name for an amount that cannot possibly reflect out-of-pocket costs directly related to the disputed domain name. While this may not have been the Respondent’s only purpose, for the reasons mentioned above, it was likely the primary purpose of the Respondent’s registration of the disputed domain name. The Panel therefore concludes that there is evidence of registration and use of the disputed domain name in bad faith. In the absence of any submission from the Respondent that refutes this conclusion, the Panel finds that the disputed domain name has been registered or used in bad faith.
For all 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 <redbullracing.com.au> be transferred to the Complainant.
Frank R. Schoneveld
Date: January 24, 2013