WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Enrique Herbafam
Case No. D2007-0219
1. The Parties
The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Schoenherr Rechtsanwalte GmbH, Austria.
The Respondent is Enrique Herbafam of Andorra la Vella, Andorra.
2. The Domain Name and Registrar
The disputed domain name is registered with DSTR Acquisition VII, LLC d/b/a D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February�14,�2007. On February�16,�2007, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a D a request for registrar verification in connection with the domain name at issue. On February�17,�2007, DSTR�Acquisition VII, LLC d/b/a D transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February�28,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March�20,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March�21,�2007.
On March�21,�2007, the Center received and email from an address linked to and/or closely associated with the Respondent advising that they accept transfer of the domain name to the Complainant. With regard to this email message, the Center informed the Complainant of the possibility to suspend the administrative proceeding, which the Complainant did on March�22,�2007. The Center suspended this administrative proceeding until April�25,�2006. For reasons unknown to this Panel, there was no peaceful resolution on the disputed domain name and on April�24,�2007, the Complainant filed a request for reinstituting the proceeding.
The Center appointed Zolt�n Tak�cs as the sole panelist in this matter on April�26,�2007. 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.
The language of this administrative proceeding is English, that being the language of the registration agreement.
4. Factual Background
The Complainant in this proceeding is a widely known manufacturer of energy drinks, with its best known product being the RED BULL energy drink. Manufacturing and distribution of the RED BULL energy drink has been taking place since 1987 in the home country of the Complainant, Austria, and since 1994 internationally. Since this time, the Complainant has spent nearly one billion Euros in overall promotion and advertising of its RED BULL energy drink.
The Complainant is the proprietor of the following trademark registrations:
- Community Trademark Registration No. 000052803 RED BULL (word mark) with priority of April 1, 1996 for wide variety of goods and services under common classification of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of Registration of Marks,
- International Trademark Registration No. 612.320 RED BULL and the Double Bull Device with priority of September�7,�1993 for certain goods in classes 5, 32 and 33 of the Nice Agreement,
- Andorran Trademark Registrations Nos. 17325 RED BULL (word mark) and 17327 Red Bull Double Bull Device, both registered since July�10,�2001 for a number of goods in class 32 of the Nice Agreement.
The Complainant has registered the domain name under which it operates its principle website.
The disputed domain name was created on August�21,�2006, and the website under the domain name originally displayed the Complainant’s RED BULL energy drink products, together with other products, distributed by the Respondent. On January�11,�2007, the disputed domain name was linked to the website under the domain name owned by the Respondent.
On the date of issuance of this decision, the disputed domain name was registered and parked with EuroDNS.
5. Parties’ Contentions
A. Complainant
The Complainant contends that due to manufacture and worldwide distribution of its RED BULL energy drink since 1994, as well as extensive and costly promotion campaigns, the RED BULL brand has become an unchallenged market leader in all of its markets.
The Complainant claims that the disputed domain name is confusingly similar to its RED BULL trademark, incorporating it in its entirety. The Complainant asserts that neither addition of a geographical term, in this case “Andorra”, or the .com gTLD render the disputed domain name distinctive from its RED BULL trademark.
The Complainant states that the Respondent has no rights or legitimate interests in the domain name , since the Complainant has never licensed or in any other way permitted the Respondent to use and of its trademarks or any variations thereof, and especially not to register or use any domain name incorporating any of its trademarks or variations thereof. The Complainant alleges that the Respondent registered the disputed domain name to create the misleading impression of being in some way associated with the Complainant, and is obviously trying to exploit the fame and reputation of the Complainant’s trademarks.
The Complainant alleges that the Respondent has registered and has been using the disputed domain name in bad faith, first and above all intending to exploit the fame and reputation of the Complainant, its activities and products.
For all the above reasons, the Complainant requests that the disputed domain name be cancelled.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in the WIPO UDRP Panel Decisions (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.6) that a respondent’s default does not automatically result in a decision in favor of a complainant.
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements in order to succeed with the complaint:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and
(b) the respondent and registrant of the domain name has no rights or legitimate interests in respect of the domain name, and
(c) the domain name has been registered and is being used in bad faith.
While a panel may draw negative inferences from a respondent’s default, paragraph 4 of the Policy requires a complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
A. Identical or Confusingly Similar
Under this paragraph, there are two requirements which the Complainant must establish, firstly that it has rights in a trade or service mark, and secondly that the domain name is identical or confusingly similar to the trademark. It is beyond dispute that the Complainant – through its community trademarks and international registrations – has trademark rights in RED BULL (word mark alone), RED BULL (trademark combined of word elements and the Double Bull Device), and “Double Bull Device” in a number of jurisdictions, and through its Andorran registrations exclusive rights in respect of these marks in the jurisdiction of the Complainant’s incorporation.
The Panel further finds that the domain name is confusingly similar to the RED BULL trademark of the Complainant. The disputed domain name fully incorporates the Complainant’s RED BULL trademark. The only difference (apart from the .com gTLD element, which has no distinctive character) between the disputed domain name and the Complainant’s trademark is the addition of the generic geographical term “Andorra”, which is the jurisdiction of the Respondent’s incorporation. Mere addition of a non-distinctive element (e.g., in this case “Andorra”, name of the location of the Respondent) to the domain name does not render it distinct enough from the Complainant’s RED BULL trademark.
Therefore the Panel finds that the disputed domain name is confusingly similar to the RED BULL trademark of the Complainant, and thus element (i) of the Policy’s paragraph 4(a) is satisfied.
B. Rights or Legitimate Interests
It has been a consensus view in the WIPO UDRP Panel Decisions (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1) that once the Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of proof to demonstrate rights or legitimate interests in the domain name shifts to the Respondent.
Under paragraph 4(c) of the Policy, respondents may demonstrate their rights and interests to the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) their 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 before any notice to them of the dispute, or
(ii) they (as individuals, businesses, or other organizations) have been commonly known by the domain name, even if they have acquired no trademark or service mark rights, or
(iii) they are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
By defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c)(iii) of the Policy, and the circumstances brought forward by the Complainant in regard to making out this requirement of the Policy satisfy the Panel that the Respondent has no rights or legitimate interests in the disputed domain name.
In this case, the Respondent has not been authorized by the Complainant to use its RED BULL trademark in a domain name, or in any other way that would amount to trademark use. The Complainant’s prior rights in the RED BULL mark long preceded the Respondent’s domain name registration, including in Andorra, the location of the Respondent. Also, the Respondent has not been commonly known by the disputed domain name or does not appear to have used the disputed domain name in connection with legitimate or fair use. The fact that at certain point in time the Respondent was offering for sale RED BULL branded energy drinks on the website under the disputed domain name does not in the Panel’s view create a right to use the trademark in a corresponding domain name, noting specifically that also other competing products were sold. It has been undisputed that the Complainant never authorized such use of its RED BULL trademark and furthermore the Respondent did not clearly and accurately disclose on the website with the disputed domain name its relationship with the trademark owner.
The Respondent was and has been using the Complainant’s RED BULL trademark in its domain name without permission, and the circumstances discussed above, in the absence of a rebuttal by the Respondent, convince the Panel that the second element of the Policy’s paragraph 4(a) is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that the circumstance of a respondent’s usage of the domain name attempting to intentionally attract, for commercial gain, Internet users to a respondent’s website or other on-line location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location, if found by the Panel to be present, shall be evidence of registration and use of the domain name in bad faith.
Undisputedly, the Respondent first began using the disputed domain name to sell, among many other products RED BULL energy drink products at the corresponding website, then it listed the RED BULL energy drink as one of the “favorite products” offered for sale, and then later parked the domain name with the registrar. To this Panel, all this is indicative of the Respondent’s intention to profit from the fame and wide recognition of the Complainant, its RED BULL trademark, and its activities through registration and use of the domain name. In the view of this Panel, these circumstances and facts are well able to create a false impression of economic relation with or sponsorship or endorsement of the Respondent by the Complainant, which also constitutes bad faith according to the Policy.
In that the Panel’s finding is that the Respondent has registered and has been using the disputed domain name in bad faith, paragraph 4(a)(iii) of the Policy is satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be cancelled.
Zolt�n Tak�cs
Sole Panelist
Dated: May 14, 2007
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