WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Nexperian Holding Limited / Zhang Chi, Chong Qing De Niu Shi Pin Yin Liao You Xian Gong Si
Case No. D2018-0187
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 Nexperian Holding Limited of Hangzhou, Zhejiang, China / Zhang Chi, Chong Qing De Niu Shi Pin Yin Liao You Xian Gong Si of Chongqing, China.
2. The Domain Name and Registrar
The disputed domain name <dgredbull.com> (the “Domain Name”) is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2018. On January 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 31, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 6, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 9, 2018.
On February 6, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on February 9, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on February 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2018. The Respondent sent three email communications regarding the dispute on March 22 and 23, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on March 22, 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 the producer of the Red Bull energy drink, which was first sold in Austria in 1987 and internationally, since 1992. The Red Bull energy drink is currently sold in 172 countries. The Complainant’s sales volume was over 6 billion serving units in 2016, of which 1.9 million were attributable to China.
The Complainant’s Red Bull brand is promoted primarily via television, cinema and radio. In 2016, the Complainant spent over EUR 707.9 million worldwide in media marketing expenditure with more than EUR 211,000 being spent in China alone. The overall marketing expenses globally in 2016 were over EUR 2.2 billion.
The Complainant is well-known not only as the manufacturer of the Red Bull energy drink but has also acquired significant reputation in the media sector, and as the organizer of sport, music, fashion and cultural events. The Complainant has been involved in numerous prestigious international and national events such as the formula one racing, the Dakar Rally Races, the Red Bull Air Race World Championship, the Red Bull Music Academy and major league soccer in the United States of America (“United States”) with its New York Red Bull team. The Complainant’s Red Bull channel on “Youtube” reached a cumulative total of over 5 million subscribers in 2016.
The Complainant’s RED BULL trade mark (the “Trade Mark”) is registered for a range of goods and services in over 202 jurisdictions, including China. The registrations include international registration no. 961854, with a priority date of September 27, 2007 and EU registration no. 698720 with a filing date of December 5, 1997. The Complainant also has trade mark registrations for a red bull device (“the Device Trade Mark”)
The Complainant is the registrant of over 1,611 domain names containing the Trade Mark. Its main website is at “www.redbull.com”. The website had 550 million page views in 2015.
The Respondent, a Chinese national, registered the Domain Name on September 20, 2017. The Domain Name is connected to a website which is operated by Chongqing German Cattle Food and Beverage Company Ltd, which purports to be a licensee of German Red Bull Vitamin Beverage Company Ltd (the “Website”) for the China market. The Website features cans of a vitamin beverage branded “German Bullfight” and featuring a red bull device. The vitamin drinks are purported to be a “German Red Bull drink”.
Although the Respondent did not file a Response, since the appointment of the Panel, it has sent three emails to the Center.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests cancellation of the Domain Name.
The Respondent did not formally reply to the Complainant’s contentions. It sent three emails after the appointment of the Panel.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
6.2. Unsolicited Supplemental Filing
The Respondent sent three emails to the Center after the appointment of the panel. In the two dated March 22, 2018, it states that it has just received the papers and did not understand them and asked the Center to ring it. On March 23, 2018 it said that it is authorised to register and use the Domain Name which has been properly registered.
The Panel considers these emails as unsolicited supplemental filings and as stated in section 3.0 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a panel is under no obligation to accept them as part of the case file.
Paragraph 10 of the UDRP Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. Paragraph 12 of the UDRP Rules expressly provides that it is for the panel to request, in its sole discretion, any further statement or documents from the parties it may deem necessary to decide the case. Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel.
No such request was made by the Panel in this case. Further there was no plausible explanation as to why the Respondent was unable to provide the information prior to the deadline for filing a Response. In any event the emails did not provide a response to the allegations contained in the Complaint and do not assist in the determination of the proceeding. The Panel therefore rules that the supplemental filings be disregarded.
6.3 Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English and that no prejudice will result from conducting it in English. The Complainant contends that as an Austrian based company which does not communicate in Chinese, conducting the proceeding in Chinese will be unduly disadvantageous in terms of costs and the delay that would be caused. The Respondent appears to be familiar with the English language. The Domain Name is in the Latin alphabet rather than Chinese and consists of English words.
The Website which is in Chinese has English words including “News Center”, “Product Show”, “Classic Case”, “Service Phone”. There is also a scanned Certificate of Authorisation which is in the English language.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
6.4. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the domain name is confusingly similar to the trade mark. The trade mark would generally be recognizable within the domain name. In this case the Domain Name contains the Complainant’s trade mark RED BULL in its entirety together with the letters “dg” which is an abbreviation of the transliteration in Chinese of “Germany” - “Deguo”. The addition of the prefix does not do anything to minimise the risk of confusion.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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 it has acquired no trade mark 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 trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it has not licensed or otherwise permitted the Respondent to use the Trade Mark or any of its trade marks or register any domain names incorporating such trade marks. The “Certificate of Authorisation” issued by German Red Bull Vitamin Beverage Company Ltd is not such an authorisation as this company is unconnected to the Complainant. The Respondent is not commonly known by the Domain Name, The Respondent is not related to the Complainant and the use of the Domain Name does not fall within any of the above categories which would grant it rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name given the fame of the Trade Mark. It is implausible that it was unaware of the Complainant when it registered the Domain Name. The Respondent’s Website stated that the Respondent was a licensee of German Red Bull Vitamin Beverage Company Ltd for the China market.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that the Trade Mark is a well-known mark, there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name are also significant factors to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Website which is purporting to promote a vitamin drink under the name “German Bullfight” and a red bull device together with all the references to the a company with “Red Bull” within the company name has clearly been adopted so as to intentionally attract for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Website or services on the Website. This amounts to bad faith under paragraph 4(b)(iv) 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 <dgredbull.com> be cancelled.
Date: April 3, 2018