WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Red Bull GmbH v. fhxmedia Case No. D2010-0085 1. The Parties
Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
Respondent is fhxmedia of Quebec, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2010. On January 19, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 21, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that 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” 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 Respondent of the Complaint, and the proceedings commenced on January 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 18, 2010.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on February 25, 2010. 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 trademark upon which the Complaint is based is RED BULL. According to the documentary evidence and contentions submitted, the RED BULL trademark was registered in 203 jurisdictions worldwide to cover an extensive range of goods and services, including in Canada (Trademark Registration No. TMA550,062 dated August 23, 2001).
According to the documentary evidence and contentions submitted, Complainant is the largest worldwide producer of energy drinks, particularly the Red Bull product first sold in Austria in 1987 and internationally since 1994. Currently, the Red Bull energy drink is sold in 156 countries and much of Complainant's marketing activities are directed to the publicity of sporting events.
Complainant owns a large number of domain names containing the RED BULL trademark. The Panel also notes that the notoriety of the trademark has been confirmed in previous WIPO decisions. See, e.g., Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909; Red Bull GmbH v. Web Wax Designer, WIPO Case No. D2006-0746; Red Bull GmbH v. Tony Marinelli, WIPO Case No. D2001-0522; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035.
The disputed domain name was registered on February 27, 2009 with GoD, Inc. Complainant submitted a screen print of the website under the disputed domain name. However, the Panel conducted an independent survey by accessing the disputed domain name on February 26, 2010 and found out that the domain name did not resolve to any webpage at the time.
Complainant sent a cease and desist letter to Respondent on June 16, 2009 and reiterated it on August 11, 2009. Complainant states that Respondent never replied. 5. Parties' Contentions A. Complainant
Complainant argues that Respondent's domain name is confusingly similar to the trademark in which Complainant has rights because, (i) the disputed domain name incorporates the RED BULL trademark in the combined word “redbull”, and the incorporation of a complainant's mark in full within a disputed domain name may be sufficient to establish confusing similarity between the mark and the disputed domain name; (ii) the addition of a generic word such as “competition” does not affect a finding of confusing similarity; and (iii) Internet users will be intentionally diverted to Respondent's website and will think that there is an economic relationship with, sponsorship or endorsement of Respondent by Complainant.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because, (i) Respondent is not licensed or otherwise permitted by Complainant to use the RED BULL trademark; (ii) Respondent is not commonly known by the disputed domain name; and (iii) Respondent is making illegitimate use of the disputed domain name with the intention to misleadingly divert Internet users to Respondent's website.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because, (i) Respondent knew of the existence of the RED BULL trademark in view of its reputation and worldwide recognition, and that registration of a well-known trademark is a strong indication of bad faith, and (ii) by registering a domain name corresponding to a well-known trademark Respondent intentionally intended to attract Internet users to its own website. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Effect of the Default
The consensus view is that a respondent's default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
Therefore, the Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements. B. Identical or Confusingly Similar
The domain name incorporates the RED BULL trademark in its entirety and the fact that the disputed domain name consists of a combination of three words (“red”, “bull” and “competition”) does not affect a finding of confusing similarity. In fact, in this combination it is clear that the RED BULL trademark stands out, and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l.,WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282. That is particularly true where the disputed domain name incorporates a well-known trademark, such as RED BULL.
In addition, it has been consistently decided that a domain name which consists of the addition of generic or descriptive terms to an otherwise distinctive mark is to be considered confusingly similar to the mark. See, e.g., Quixar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253. The Panel notes that in a prior WIPO UDRP case, the panel held that the combination of the RED BULL trademark with a generic term () could be considered as identical or confusingly similar. See, Red Bull GmbH v. Madummal K. Durganand,WIPO Case No. D2007-1613.
The likelihood of confusion between the disputed domain name and the RED BULL trademark is reinforced by the fact that much of Complainant's marketing activities are directed to the publicity of sporting events. Therefore, the word “competition” has a particular meaning in this combination which may serve to heighten the likelihood of confusion.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith,WIPO Case No. D2005-0540.
Therefore, the Panel finds that the domain name is clearly confusingly similar to the RED BULL trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. C. Rights or Legitimate Interests
The Panel finds as reasonable Complainant's contentions that, (i) Respondent has not been licensed or authorized by Complainant to register and use the disputed domain name or the RED BULL trademark; and (ii) Respondent is not commonly known by the disputed domain name.
This Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark in a domain name is a clear indication of bad faith in itself. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D´Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. In addition, the combination of the words “redbull” and “competition” clearly shows an intent to create an association with Complainant and its products in view of the close relationship, of the terms to one of the main marketing activities of Complainant.
Also, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent by defaulting has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights to or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. D. Registered and Used in Bad Faith
In light of the reputation of the RED BULL trademark, the reproduction by Respondent of that trademark in its entirety, and the combination of that trademark with the generic term “competition”, it is clear that Respondent in all likelihood knew of the existence of Complainant's trademark and of its reputation worldwide.
While that finding would suffice to dispose of the issue of bad faith registration, a contributing bad faith factor in this case is the fact that a trademark search on the date of registration of the disputed domain name would have revealed Complainant's long standing trademark registrations, including in Canada. See, for instance, RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242.
Also, as indicated in another UDRP case, “it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products”. BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325. That is what some UDRP precedents have termed as “opportunistic bad faith”. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Sanofi-aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303.
Finally, the fact that the disputed domain name is apparently inactive is irrelevant since passive holding constitutes evidence of bad faith use where there are other factors present. The consensus view in previous WIPO URDP panel decisions has been that “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances such as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.2). See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 NetPower, Inc.,WIPO Case No. D2000-0022; J. García Carrión, S.A. v. Mª José Catalán Frias,WIPO Case No. D2000-0239; Bayer Aktiengesellschaft v. H. Monssen, WIPO Case No. D2003-0275; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483; MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412.
The Panel is of the opinion that, under appropriate circumstances, passive holding evidences bad faith use. In the instant case facts referred to above are present and, therefore, the Panel concludes that the disputed domain name is being used in bad faith.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: March 8, 2010
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