WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Madummal K Durganand
Case No. D2007-1613
1. The Parties
The Complainant is Red Bull GmbH, Fuschl am See, Austria, represented by Sch�nherr Rechtsanw�lte GmbH, Austria.
The Respondent is Madummal K Durganand, EmeryVille, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2007. On November 2, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On November 5, 2007, Melbourne IT trading as Internet Names Worldwide 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”), 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 Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2007. In accordance with Paragraph 5(a) of the Rules, the due date for Response was November 29, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on December 10, 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 Paragraph 7 of the Rules.
4. Factual Background
The Complainant is the largest producer worldwide of energy drinks, including the Red Bull energy drink, first sold in Austria in 1987 and sold internationally since 1992. Today, the Red Bull energy drink is distributed in 143 countries all over the world. In 2006, the Complainant sold over 3 billion units of this energy drink.
The annual turnover of the Complainant amounted to approximately € 2,8 billion in 2006. Its marketing expenses totaled in excess of € 961 million the same year, including € 176 million for media expenses. Marketing activities included the sponsoring of sports events widely covered by the media, such as Formula One racing (“Red Bull Racing” team since 2005, “Scuderia Torro Rosso” team since 2006) and soccer (“FC Red Bull Salzburg” since 2005, “Red Bull New York” since 2006).
The Complainant owns numerous RED BULL trademarks throughout the world, including Austrian registration no. 150 540 of September 7, 1993, Community trademark registration no. 52787 of April 1, 1996, Community trademark registration no. 52803 of April 1, 1996, international registration no. 612320 of September 7, 1993, US trademark registration no. 2494093 of September 1, 1994 and US trademark registration no. 3086964 of December 13, 2001 (the “RED BULL Marks”).
The Complainant is the registered owner of a large number of domain names containing the mark RED BULL, inter alia under which information on the RED BULL energy drink and sports events sponsored by the Complainant is provided. The Complainant’s subsidiary Red Bull North America is also using the domain name .
The disputed domain name was first created on December 26, 2005. The website at the domain name displays information on “strong comfortable houses” offered by a company named “ORIENTAL General Trading & Contracting Company” in Kuwait.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy is given in the present case:
(1) The domain name is confusingly similar to the famous RED BULL Marks in which the Complainant has exclusive rights because the trademark has been incorporated in its entirety into the contested domain name and is followed simply by a generic commercial term, which does not change the overall impression of the designation as being a domain name referring to the Complainant.
(2) The Respondent has no rights to or legitimate interests in the domain name as it has not been licensed or otherwise permitted by the Complainant to use the RED BULL Marks or variations thereof or to register corresponding domain names. The Complainant further contends that the Respondent neither uses the domain name in connection with a bona fide offering of goods and services nor is commonly known under the domain name. Thus, the Respondent cannot have any rights or legitimate interests in respect of the domain name.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith.
With regard to bad faith registration, the Complainant contends that ― given the fame and reputation of the trademark RED BULL and the Complainant’s activities all over the world ― it is inconceivable that the Respondent was unaware of the Complainant and its well known RED BULL Marks at the time he registered the domain name.
With regard to bad faith use, the Complainant contends that the Respondent’s intent is to misleadingly divert costumers to his website. The Respondent is causing confusion by creating, for commercial gain, the impression of an economic relationship with or sponsorship or endorsement by the Complainant. Furthermore, as the Complainant owns trademarks rights covering an extensive range of goods and services and spanning all of the 45 international trademark classes, the Respondent’s use of the domain name also is in bad faith under Paragraph 4(b)(iii) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s highly distinctive and widely known RED BULL Marks in which the Complainant has exclusive rights.
The mere addition of the generic word “houses” following the trademark does not eliminate the similarity between the Complainant’s marks and the domain name. It is well established that a domain name that wholly incorporates a well-known trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc.,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).
Furthermore, it is also well established that the specific top level domain is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374; Teradyne, Inc v. 4Tel Technology,WIPO Case No. D2000-0026).
Therefore, the Panel finds that the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent 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 (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Respondent did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted.
Based on the evidence before the Panel, the Respondent is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name.
The Panel is satisfied that the Respondent’s use of the domain name is not a bona fide offering of goods or services under the Policy. The website under the domain name at issue displays information on “strong comfortable houses” offered by a company named “ORIENTAL General Trading & Contracting Company” in Kuwait. The mere presence of a website under the disputed domain name does not per se establish a bona fide offering of goods or services. The Respondent, a natural person domiciled in the United States of America, has not provided any evidence that he is doing business as “ORIENTAL General Trading & Contracting Company” in Kuwait and that he can rely on any use of the domain name by such company. Furthermore, the Panel found that the content of the website under the disputed domain name is used identically at the website under the domain name . Therefore, the Panel comes to the conclusion that the website available at is not a website showing a bona fide use of the disputed domain name in connection with “strong comfortable houses”.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under Paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of Paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the 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 its website or location.
Evidence of bad faith registration and use is shown when the registration of a domain name occurs in order to utilize another’s trademark by attracting Internet users to a website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corp., NAF Case No. FA 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101).
The Complainant is widely known internationally and has established business activities throughout the world since its creation in 1987. Given that the Complainant owns several trademark registrations in the United States of America, is sponsoring a US soccer club and is using the domain name through its subsidiary Red Bull North America, while the Respondent is domiciled in the United States of America, and given the high distinctiveness of the RED BULL Marks, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights in the RED BULL Marks.
The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s marks and therefore in bad faith under Paragraph 4(a)(iii) of the Policy.
Furthermore, by fully incorporating the RED BULL Marks into the domain name the Respondent is in all likelihood trying to divert traffic indented for the Complainant’s website and searching for the Complainant’s products to his own for commercial gain.
As a result, the Panel finds that the Respondent has registered the domain name with knowledge of the Complainant’s trademarks and has used the domain name in bad faith under Paragraph 4(b)(iv) of the Policy, as he attempts to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the 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 its website or location.
The Complainant has thus satisfied the requirements of Paragraph 4(a)(iii) of the Policy as well.
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.
Brigitte Joppich
Sole Panelist
Dated: December 24, 2007
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