WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Redbull GmbH v. Roy Atar Case No. D2008-1611 1. The Parties
The Complainant is Redbull GmbH, Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspolnicy Spolka Komandytowa, Warsaw, Poland.
The Respondent is Roy Atar, Bat Yam, Israel, represented by Yoram Lichtenstein Advocates, Tel Aviv, Israel. 2. The Domain Name and Registrar
The disputed domain name is registered with Domain The Net Technologies Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2008. On October 23, 2008, the Center transmitted by email to Domain The Net Technologies Ltd. a request for registrar verification in connection with the disputed domain name. On November 5, 2008, Domain The Net Technologies Ltd., transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details and also confirming that the language of the registration agreement is Hebrew.
On November 19, 2008, the Center communicated to the parties regarding the language of the proceeding, inter alia, inviting the Complainant to (i) provide evidence of an agreement between the Complainant and the Respondent that the proceedings should be in English, (ii) submit the Complaint in Hebrew, or (iii) submit a request with supporting evidence that the proceedings be conducted in English. The Respondent was also invited to state any objection thereto. On November 24, 2008, the Complainant filed a request that English be the language of proceedings citing inter alia pre-complaint correspondence with the Respondent in English. On the same date the Respondent filed its objection in Hebrew.
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 in both English and Hebrew, and the proceedings commenced on December 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2008. The Respondent filed a response in Hebrew which was received by the Center on December 21, 2008.
The Center appointed Jonathan Agmon as the sole panelist in this matter on January 7, 2009. 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.
On January 7, 2009, the Complainant filed an unsolicited supplemental filing. On January 20, 2009, the Respondent filed an unsolicited supplemental filing. The Panel is mindful of the procedural efficiency but under the Rules has discretion whether to accept an unsolicited supplemental filing (see De Dietrich Process Systems v. Kemtron Ireland Ltd.,WIPO Case No. D2003-0484). The supplemental filing by the Complainant provides the Complainant's reply to Respondent's argument that he is commonly known as “Shor Adom” and additional information about the Complainant's activities in Israel. The Respondent raised this argument for the first time in his Response despite the fact that the parties corresponded before the filing of the Complaint. Clearly the Respondent had ample time to raise this argument prior to his Response, but he chose not to raise this argument until a relatively late time. The Respondent's supplemental filing comprise arguments why the Panel should not accept the supplemental filing by the Complainant and further arguments in response to Complainant's supplemental filing. The Panel considered both unsolicited supplemental filings and decided to accept both. 4. Factual Background
The Complainant is one of the largest worldwide producers of energy drinks. The Complainant produces and sells an energy drink under the trademark RED BULL. The RED BULL energy drink has been sold in Poland since 1987 and internationally since 1994. The RED BULL energy drink is sold in 147 countries all over the world, including Israel. The Complainant has invested significantly in media advertising around the world.
The Complainant is the registrant of more than 200 domain names consisting of the term “redbull” such as , , and many others. Complainant operates its main website at “www.”. This website contains information about the Complainant's energy drink and its marketing activities, and links to the Complainant's national websites, including in Hebrew and others.
The Complainant is the owner of various trademark registrations and applications which cover various goods and services in some 202 jurisdictions around the world. In Israel, the Complainant has registered and is currently the owner of numerous trademarks including for the trademark RED BULL in classes 32 (for energy drinks) and 38 (for telecommunications services). A search of the Israeli Patent Office yielded that over 140 trademarks over the mark RED BULL are registered to the Complainant. The Complainant filed trademark applications for the RED BULL trademark as early as September 7, 1993.
The Respondent is an Israeli individual who is the registrant of the disputed domain name . The Respondent does not operate a web site under the disputed domain name. The Respondent claims in his Response that he is commonly known by the Hebrew name “Shor Adom”. Use of a number of dictionaries shows that Shor Adom which can be translated into the English words “red bull” or “red ox”. An ox is an adult castrated bull, and a bull is an un-castrated animal.
On August 20, 2008, the Complainant, through its attorney, sent the Respondent a cease and desist letter. On September 17, 2008, the Respondent, through his attorneys replied stating that the Respondent is rightfully holding the disputed domain name; that the Respondent is not using the disputed domain name and therefore consumers are not misled; that the Respondent did not make an unauthorized use; that the Complainant did not use the Sunrise period to register the disputed domain name and therefore it was available for others to register; and that the Respondent has no intent to make illegitimate use of the disputed domain name. The Respondent did not allege, in his reply to the cease and desist letter issued by the Complainant that he was commonly known as Shor Adom. This argument appears first in the Respondent's Response. 5. Parties' Contentions A. Complainant
The Complainant argues that the mark RED BULL is a well known trademark and that it is been registered in various countries including Israel. The Complainant further argues the combination of the words “red” and “bull” is recognized as referring to the Complainant's energy drinks. The Complainant further argues that the disputed domain name is identical to its registered trademark RED BULL. The Complainant further argues that it is common practice with Internet domain names to omit the space between words in a domain name. The Complainant further argues that the use of an identical domain name causes confusion to Internet users intending to access the Complainant's web site through their mobile phones.
The Complainant argues that the trademark RED BULL is fanciful, that its activities are well known and that therefore it is unimaginable that the Respondent registered the disputed domain name for any other purpose aside from association with the Complainant. The Complainant also argues that the Respondent's attorney recognized the Complainant's fame. The Complainant further argued that the Respondent intended to create a misleading impression of being in some way associated with the Complainant, intended for commercial gain which constitutes an illegitimate commercial use.
Finally, the Complainant argues that RED BULL is a famous trademark the use of which by the Respondent was not licensed or otherwise authorized by the Complainant. The Complainant has numerous trademark registrations, and the Complainant has substantial good will due to its vast marketing expenditure. The Respondent was aware of the Complainant's famous trademark when he registered the disputed domain name, with the apparent intent to exploit the Complainant's reputation and the RED BULL trademark. The Complainant further argues that registration of the disputed domain name is by itself evidence of bad faith registration and use. The Complainant further argues that the passive holding of the domain name and the fact that no possible legitimate use exists also constitute evidence of bad faith use and registration.
In its supplemental filing, the Complainant argues that since the Respondent is known in Hebrew by the nickname “Shor Adom”, then the Respondent should have registered that name. The Complainant further argues that nicknames are not normally translated into other languages. The Complainant further argues that the Respondent should have registered the domain name and that failing to do so, the Respondent failed to show he has legitimate interest in the disputed domain name.
The Complainant further provides that it has sold in Israel in 2003 over 11.4 million cans of energy drinks and continued annually to sell around 10 million energy drinks in 2004, 2005 and 2006 when the Respondent registered the disputed domain name. The Complainant further provides that between the years 2003 – 2006 it has invested €6 million in advertising media and €16 million for marketing purposes in Israel. The Complainant further argues that the Respondent must have been aware of the Complainant and its trademarks due to the proliferation of their product and the various events organized by Complainant in Israel between October 2003 and September 2005. B. Respondent
The Respondent argues that the Complainant failed to show that the RED BULL trademark is famous in Israel. The Respondent acknowledges that the Complainant has registered trademarks in Israel but argues these are not relevant since they are in classes 32 and 38 for goods and services the Respondent has no intent on selling or providing.
The Respondent argues that he has a legitimate interest to the disputed domain name since he is and has been named in Hebrew “Shor Adom”. The Respondent argues he has a legitimate interest in the disputed domain name since he has been known as Shor Adom since 1985 due to his red hair and angry temper. The Respondent further argued that many other corporations in Israel use a translation of their English name as their domain name.
The Respondent argues that registering the disputed domain name is meant so that he may, in the future, operate a personal mobile-blog unrelated to the Complainant or to its business. The Respondent further argues that the mark RED BULL, while arbitrary for energy drinks, is suggestive such that the reason for the Respondent to register the disputed domain name is clear and is in no way related to the trademark of the Complainant. The Respondent further argues that he has not made illegitimate use of the disputed domain name, that no such intent was proven, and that the trademark of the Complainant was not damaged.
The Respondent further argues that the disputed domain name was registered in good faith since the Respondent was commonly known by the domain name since his friends make use of the term Shor Adom to refer to him. The Respondent further provides that he will not establish a business associated with energy drinks or the business of the Complainant under the disputed domain name. The Respondent further provides that if necessary, he will provide a bold and clear disclaimer to state that the web site under the disputed domain name is not associated with the Complainant.
The Respondent further argues that during 2006 he took steps to establish a mobile-blog under the disputed domain name. The Respondent argues he did not pursue the establishment of such a mobile-blog due to the high cost required to establish such a web site. The Respondent further argues that at this time, he is holding the disputed domain name until such time when the cost of establishing a mobile-blog would be lower. The Respondent argues he has no intent to park the disputed domain name. Finally, the Respondent argues he has never requested any payment from the Complainant or its competitors. 6. Discussion and Findings
Taking in to consideration the arguments of the Parties, the Panel determines that English is the language of proceeding and so renders this decision in English. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademarks over the RED BULL mark in various jurisdictions, including in Israel. Complainant is the owner of Israel trademark registrations serial numbers 156823, 164666 and 191184 for the RED BULL mark. The Israeli trademark serial number 164666 for the mark RED BULL was issued on March 3, 2004, well before the Respondent registered the disputed domain name. The Israeli trademark serial number 156823 for the mark RED BULL was issued on June 3, 2004, well before the Respondent registered the disputed domain name.
Given that the “mobi” TLD portion of the disputed domain name is often disregarded for purposes of a comparison under the UDRP, the Panel finds that the disputed domain name is identical to Complainant's trademark RED BULL. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)). The Panel finds the Complainant has established such prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use RED BULL trademark.
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to and legitimate interests in a disputed domain name. The Respondent relies on paragraph 4(c)(ii) to show that he has been commonly known by the disputed domain name, even though he has not acquired trademark rights thereto.
The Respondent provided in evidence four affidavits of himself, of a family member, a friend from school, and a friend from his army service to show that he is commonly known as “red bull”. However, a review of these affidavits, and particularly that of the Respondent himself, reveals that the name commonly used by the Respondent and his friends is Shor Adom in Hebrew. The word “Shor” can be translated to English to mean an ox or a bull and the word “Adom” can be translated into English to mean red.
Nevertheless, nothing in the affidavits or the other evidence submitted by the Respondent suggests that the Respondent is known by the English words “red bull”.
The Respondent raised an argument that some entities in Israel use their English and not their Hebrew name as their domain names. A review of these examples shows that most of these marks refer to generic trademarks of corporate, governmental, or academic corporations and institutions. In any case, this argument is irrelevant to the determination of the Panel in view of the fact that the Respondent failed to show that he is commonly known as “red bull”, but argued that he is known as Shor Adom.
On the other hand, the Complainant is the current owner of several valid and registered trademarks for RED BULL in Israel, including in classes 32 and 38 (covering, among others, telecommunications services).
The Complainant provided ample evidence showing that the registered trademark RED BULL has gained significant fame in Israel and overseas through sales of millions of cans of energy drink and through the investment of millions of Euros in marketing activities. There is no doubt that many of the Complainant's activities outside Israel also reach the Israeli consumers. In today's global market there is no doubt that marketing activities, such as those relating to car racing and football sponsorship reach the Israeli audience.
From the evidence provided, it is clear to the Panel that the Complainant has maintained an on-going business in the Israeli energy drinks market from as early as 2004 and is well known by the public in Israel, especially those persons who consume energy drinks.
Evidence to the extent of recognition of the Complainant's RED BULL trademark was provided by the Respondent himself when he attached a newspaper article which provides clearly that RED BULL is “a well established brand name in Israel”. The same newspaper article cites a research providing that the Complainant's market share in Israel in 2007 was 40%.
The Complainant also provided evidence of significant sales over the years prior to September 2006, when the Respondent registered the disputed domain name.
The Panel concludes that the Respondent failed to show that he has rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent has registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant argued that in view of the marketing activities and fame of the RED BULL mark in Israel and abroad it is highly unlikely that the Respondent did not recognize or was unfamiliar with the RED BULL trademark when he registered the disputed domain name.
The Respondent provided that the disputed domain name was registered in good faith since the Respondent was commonly known by the disputed domain name since his friends make use of the term “Shor Adom” to refer to him.
However, as noted above, the Respondent is not commonly known as “red bull” but as “Shor Adom”.
In addition, the Complainant has made substantial marketing activities and sold over 10 million energy drink cans bearing the trademark RED BULL a year in Israel in the years 2004-2006 preceding the time when the Respondent registered the domain name.
The Respondent did not argue nor declare that he had no knowledge of the Complainant at the time when he registered the disputed domain name.
In view of the marketing and sales activities performed by the Complainant from 2004 through 2006, the Panel agrees with the Complainant that it is highly unlikely that the Respondent, at the time of registration of the disputed domain name, was unaware of the Complainant's trademark and use of the RED BULL mark in Israel.
Since the Respondent is commonly known as Shor Adom and only among his friends, and in view of Complainant's marketing and sales activities in Israel in the years 2004 through 2006, it is the finding of the Panel that the Respondent registered the disputed domain name in bad faith.
The Respondent further provides that he did not nor does not currently make use of the disputed domain name and that he will not establish a business associated with energy drinks or the business of the Complainant under the disputed domain name. The Respondent further provides that if necessary he will provide a bold and clear disclaimer to state that the web site under the disputed domain name is not associated with the Complainant.
By asserting that he is willing to provide a clear and bold disclaimer to state that the disputed domain name is not associated with the Complainant, the Respondent is recognizing that any business he will engage under the disputed domain name would be associated by Internet surfers with the Complainant, its business and its trademarks see e.g., UDRP paragraph 4(b)(iv). The Panel thus finds the Respondent registered the disputed domain name in bad faith.
While Respondent has inquired about the cost of establishing a mobile-blog under the disputed domain name, he did not provide any evidence that he would otherwise pursue the establishment of such a mobile-blog. Previous panels have determined that the passive holding of a domain name can be considered use in bad faith.
Taking into account the circumstances noted above, including: the strength of the Complainant's trademarks, fame and reputation; the Complainant's sales and marketing activities; that the Respondent is commonly known as Shor Adom and not by the disputed domain name; that it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of the Complainant's rights under trademark law; the Panel concludes that the Respondent's passive holding of the disputed domain name constitutes bad faith use under the Policy (Paragraph 4(a)(iii)). 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 transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: January 21, 2009
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