WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Oneandone Private Registration, 1&1 Internet Inc. / Patricia Kennedy, Kennedy Marshall
Case No. D2017-1319
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 Oneandone Private Registration, 1&1 Internet Inc., Chesterbrook, Pennsylvania, United States of America / Patricia Kennedy, Kennedy Marshall of Montréal, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <tororossoteam.com> is registered with 1&1 Internet SE (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 7, 2017. On July 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2017, 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 July 19, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant requested for one week extension of the deadline for submission of amendment to complaint. The Center granted the extension to the request. The Complainant filed an amendment to the Complaint on July 28, 2017.
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 July 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 22, 2017.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on August 31, 2017. 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 Red Bull GmbH, a producer of energy drinks distributed internationally. The Complainant also operates in other sectors, such as the organization of sport, music, fashion and cultural events. In particular, the Complainant has been taking part in Formula One Racing since 1995, initially as a team sponsor and now as the very owner of a the team named "Scuderia Toro Rosso". In that regard, the Complainant owns numerous TORO ROSSO trademark registrations worldwide, including in Canada. The Complainant also owns domain names reproducing said TORO ROSSO trademarks, such as <scuderiatororosso.com> and <tororosso.com>.
The Respondent is an individual domiciled in the Canada.
The disputed domain name <tororossoteam.com> was registered by Respondent on January 12, 2017. It does not resolve to any active website. The disputed domain name has been used for email purposes.
5. Parties' Contentions
Firstly, the Complainant contends that the disputed domain name is confusingly similar to their TORO ROSSO trademark as it wholly incorporates said trademark together with the descriptive and generic term "team".
Secondly, the Complainant puts forward that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant states that they have no connection with the Respondent and have at no time consented to the use of their allegedly well-known TORO ROSSO trademark by the Respondent, nor to the registration of any domain name incorporating said trademark. The Complainant further claims that the Respondent is not known under the disputed domain name and is not using the disputed domain name in connection with a bona fide offer of goods and services.
Thirdly, the Complainant alleges that the disputed domain name has been registered and is being used in bad faith. The Complainant claims that the Respondent registered and has been using the disputed domain name in bad faith since it was used for a phishing campaign operated from the email address […]@tororossoteam.com.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name wholly incorporates Complainant's trademark TORO ROSSO. In that regard, as it was well-established in previous UDRP cases, the fact that a domain name incorporates a complainant's registered trademark may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The addition of the words "team" does not distinguish the disputed domain name from the Complainant's trademark, as such a word is merely descriptive and not distinctive (see Philipp Morris USA v. Jesse Beck, WIPO Case No. D2013-1087).
Finally, the addition of the generic Top-Level Domain suffix ".com" to the disputed domain name is irrelevant when assessing the confusing similarity as its presence in the disputed domain name is for Internet registration purposes only (see Samsung Electronics Col. Ltd. v. Selim Civelek, WIPO Case No. DRO2008-0005).
In light of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark TORO ROSSO. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Based on the evidence submitted in the case file, the Panel deems that the Complainant has proved their rights in the TORO ROSSO trademarks and accepts the Complainant's claim that the Respondent has never been granted any right to use the TORO ROSSO trademark within the disputed domain name. The Panel consequently deems that the Complainant has established a prima facie case that the Respondent does not have rights in the disputed domain name.
Furthermore, the Panel infers from the Respondent's failure to defend itself while given the opportunity under paragraph 4(c) of the Policy, that the Respondent was never granted any right to use the TORO ROSSO trademark in relation to the disputed domain name. Based on the evidence submitted in the case file and particularly the fraudulent email sent to a third party by the Respondent from the email address […]@tororossoteam.com, the Panel finds that the Respondent does not have any legitimate interest in the disputed domain name as she is not known under the disputed domain name and has not been using the disputed domain name in connection with a bona fide offering of goods and services. The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
In light of the above, the Panel therefore considers that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has provided evidence that the disputed domain name has been incorporated in the email address […]@tororossoteam.com, which was used by the Respondent to send emails reproducing the TORO ROSSO official logo and to order goods and services from third parties in the name of the Complainant. The Panel therefore finds that the Respondent necessarily had the Complainant's trademark and company in mind at the time of registration of the disputed domain name and, consequently, that the disputed domain name was registered by the Respondent in bad faith. For the same reason, the Panel also finds that the Respondent has intentionally been using the disputed domain name in bad faith in order to attempt impersonation of the Complainant and to deceive consumers (See e.g., Accor v. Shangheo Heo / Contact Privacy Inc., WIPO Case No. D2014-1471).
On the contrary, the Panel finds that the addition of the term "team" enhances the likelihood of confusion since "team" is the English word for "motor race" in Italian and therefore directly refers to our client's activity under its trademark TORO ROSSO.
Accordingly, the Panel finds that the Complainant has registered and is using the domain name in bad faith and, therefore, has satisfied the requirements of paragraph 4(a)(iii).
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 <tororossoteam.com> be transferred to the Complainant.
Date: September 5, 2017