WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Affiliate Master
Case No. D2013-0804
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 Affiliate Master of Copenhagen, Denmark.
2. The Domain Name and Registrar
The disputed domain name <gratisredbull.net> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2013. On May 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2013.
The Center appointed David Stone as the sole panelist in this matter on June 6, 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 is the largest worldwide producer of energy drinks. It is the producer of the Red Bull energy drink, which was first sold in Austria in 1987 and has been sold internationally since 1992.
The Complainant is the owner of multiple trade mark applications and registrations consisting of or containing the words RED BULL. These applications and registrations cover an extensive range of goods and services and span all 45 trade mark classes of the Nice Classification, including in Denmark, where the Respondent is based.
The Complainant is also the registrant of a large number of domain names containing the mark RED BULL, both under generic and country-code top level domains. The Complainant operates its main website under the domain name <redbull.com>.
The disputed domain name <gratisredbull.net> was registered on November 29, 2012. The website under the disputed domain name has no content.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is identical or confusingly similar to its registered trade marks RED BULL because it incorporates the Complainant’s well-known mark in its entirety with the addition of the descriptive term “gratis”. According to the Complainant, this additional descriptive term does not change the overall impression of the designation as being a domain name connected to the Complainant and does not reduce the likelihood of confusion.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name is so identical to the Complainant’s RED BULL trade mark that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
The Complainant also contends that the Respondent is not commonly known by the names or terms “red bull” or “gratis”. Moreover, it is not affiliated with the Complainant, nor authorised or licensed to use the RED BULL trade mark or to seek registration of any domain name incorporating that mark.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent had the Complainant’s trade mark and company name in mind when registering the disputed domain name.
The Complainant requests that the disputed domain name be cancelled.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 Complainant provided evidence that it has prior registered rights in the mark RED BULL around the world, including in Denmark where the Respondent is based. From the evidence supplied, the Panel finds that RED BULL is a well-known mark, at least in relation to energy drinks. Several other UDRP panels have made similar findings (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909; Red Bull GmbH v. Web Wax Designer, WIPO Case No. D2006-0746).
The disputed domain name incorporates the Complainant’s trade mark in its entirety. The addition of the prefix “gratis” does not impact on the overall impression of the words RED BULL. Previous UDRP panels have held that adding common terms (as is the case here) to a registered trade mark and registering the result as a domain name does not mitigate the confusing similarity between the domain name and the mark (see Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Deutsche Telekom AG v. Gems N Pearls International Holding, WIPO Case No. D2005-0820).
Accordingly, the Panel finds that the Complainant has established the first element under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Guidance regarding establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy.
Three circumstances are identified that would establish rights or legitimate interests:
(i) bona fide prior use of the disputed domain name;
(ii) common association with the disputed domain name; or
(iii) legitimate noncommercial use of the disputed domain name.
The Complainant has made a prima facie case that none of these circumstances apply. The Respondent did not exercise its right to respond substantively in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting rights or legitimate interests.
Consequently, the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides guidance regarding establishing bad faith.
Four non-exhaustive circumstances are identified where the respondent’s intention in registering a domain name may be evidence of bad faith. These intentions may be summarised as follows:
(i) to sell the disputed domain name to the rights-holder at a profit;
(ii) to prevent the rights holder from registering a domain name;
(iii) to disrupt the business of a competitor; and
(iv) to divert Internet traffic for commercial gain.
Given the established well-known identity of the RED BULL trade mark for energy drinks, the Panel finds that in all likelihood the Respondent would have been aware of the Complainant’s trade mark at the time the disputed domain name was registered. Previous UDRP panels have made a finding of bad faith where the complainant’s trade mark was shown to be well-known or in wide use at the time of registration of the disputed domain name (SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
The disputed domain name <gratisredbull.net> currently has no content. Previous UDRP panels have found that passive holding of a disputed domain name does not prevent a finding of bad faith (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia, WIPO Case No. D2011-0421) and that UDRP panels should consider all the circumstances of the Respondent’s behaviour in considering whether passive holding satisfies the requirements of paragraph 4(a)(iii) of the Policy. Accordingly, the Panel concludes that there is evidence of bad faith on the part of the registrant of <gratisredbull.net>.
Accordingly, the Panel finds that the Complainant has established the third element under 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 disputed domain name <gratisredbull.net> be cancelled.
Date: June 20, 2013