WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Red Bull GmbH v. Paul Battista Case No. D2010-0353 1. The Parties
The Complainant is Red Bull GmbH of Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa of Poland.
The Respondent is Paul Battista of United States of America. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2010. On March 9, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On March 9, 2010, eNom 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” 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, and the proceedings commenced on March 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2010. The Response was filed with the Center on March 28, 2010.
By letter dated April 1, 2010, the Complainant submitted an unsolicited supplemental filing.
The Center appointed Alan L. Limbury as the sole panelist in this matter on April 12, 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.
In keeping with the language of the Registration Agreement, the language of this proceeding is English. 4. Factual Background
Since 1987 the Complainant has produced an energy drink which it has marketed and very heavily promoted worldwide under the trademark RED BULL, which the Respondent acknowledges, is famous. The Complainant is the owner of numerous trademark registrations for RED BULL, including European Community trademark No. 52787, registered on April 27, 2001 and United States trademark No. 3092197, registered on May 16, 2006.
The Respondent registered the Domain Name on June 8, 2006. Prior to the filing of the Complaint, the Domain Name resolved to a website depicting the Complainant's logo of two bulls and the sun, above the words “Home Recipes” and the statement “Welcome to Cooking with Red Bull. This website is dedicated to the art of cooking with the world famous energy drink Red Bull. Please bear with us as the site is currently under construction”. There followed a picture of a can of the Complainant's RED BULL energy drink. After the Complaint was filed, the logo and the picture of the can were removed and a disclaimer was added reading: “This site is not endorsed or affiliated with Red Bull GmbH or Red Bull USA in any way! We don't make the drink, we just show you how to cook with it.”
The Complainant sent the Respondent a cease and desist letter on October 30, 2009 and a reminder on December 4, 2009. The Respondent did not reply. 5. Parties' Contentions A. Complainant
The Complainant says the Domain Name is confusingly similar to its famous RED BULL trademark and that the Respondent has no rights or legitimate interests in the Domain Name, which has been registered and is being used in bad faith.
As to legitimacy, the Complainant says it has not licensed or otherwise permitted the Respondent to use any of its RED BULL trademarks nor to register or use any domain name incorporating them. The Respondent is not commonly known by the Domain Name and was obviously trying to exploit the fame and reputation of the Complainant's marks. None of the circumstances under the Policy, paragraph 4(c) are present.
As to bad faith, the Complainant says the Respondent must have been aware of the Complainant's famous RED BULL mark when registering the Domain Name and his obvious intent was misleadingly to divert consumers to his website, causing confusion by creating the impression of a relationship with or sponsorship or endorsement of the Respondent by the Complainant. His intent was to exploit the reputation of the Complainant and the RED BULL mark to promote his business activities.
The Complainant seeks cancellation of the Domain Name. B. Respondent
The Respondent says that over four years ago he began writing a book that focused solely upon recipes with the Complainant's product Red Bull Energy Drink as a common ingredient. He submitted a formal proposal to a publisher on March 31, 2008. A copy is exhibited to the Response.
The Domain Name is not confusingly similar to the RED BULL mark. The prefix “cooking with” reduces the likelihood of confusion. It describes the main content of the site under construction, whereas “redbull” will only be a common ingredient to each recipe. A reasonable person would not confuse a site devoted to “cooking with a common ingredient” with a website of the producer of the common ingredient.
Prior to the Complaint, the Respondent took preparations to register and put temporary content on the website in anticipation for a future book release. The site clearly gave the disclaimer that it was under construction. The full manuscript of the book is still a work in progress.
The Respondent is making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark of the Complainant. The site will merely focus on what ingredients, when mixed and prepared with the Complainant's product, result in tasteful food and drink.
The Respondent denies bad faith registration and use and specifically denies the circumstances set out in the Policy, paragraph 4(b). He agrees that it was inappropriate to use the Complainant's original logo without explicit permission or disclaimer. However, this was performed without malicious intent and was never designed to mislead or misrepresent the Respondent's domain name. All intentions were for the site to be a placeholder for future content relating to the release of the Cooking with Red Bull book.
The Respondent immediately put a disclaimer on the website upon receipt of the Complaint. As he did not intend to have traffic to the site as it was under construction, it cannot be shown that the Respondent was intentionally attempting to confuse Internet users, either at the time of registration or use. C. Complainant's Supplementary Filing
Paragraph 12 of the Rules provides that the Panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admissibility of additional evidence: SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092. It is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions: Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd.,WIPO Case No. D2000-0802. Here, the Response did contain contentions by the Respondent in relation to the proposed book and in relation to the changes to the website following the filing of the Complaint that the Complainant could not reasonably have anticipated. Accordingly the Panel has had regard to the Complainant's supplemental filing insofar as it addresses those contentions.
The Complainant says that so far no such book has been published and the website has been used for the illegitimate logo and picture. The disclaimer placed on the website after the Complaint was filed does not preclude the likelihood of confusion. By the time consumers get to read the disclaimer, the Domain Name has already diverted them from the Complainant.
The Complainant says that the insertion of the sentence “This site is under construction” does not limit or exclude the responsibility of the Respondent. To find otherwise would enable infringers to escape responsibility. 6. Discussion and Findings
To qualify for cancellation or transfer of a domain name, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark 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
(ii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. The top level domains “.com”, “.net” and “org” are to be disregarded: 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. Likewise the content of the Respondent's website must be disregarded: A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, WIPO Case No. D2001-0900.
Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant's trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”: SANOFI-AVENTIS v. Jason Trevenio,WIPO Case No. D2007-0648.
In finding confusing similarity, many Panels have found that the mere addition of a descriptive term by way of prefix to a complainant's mark does not adequately distinguish the disputed domain name from the mark pursuant to the Policy, paragraph 4(a)(i). See Wal-Mart Stores, Inc. v. Gerry Senker,WIPO Case No. D2006-0211 (finding confusingly similar to WAL-MART); HSBC Holdings Plc v. David H. Gold,WIPO Case No. D2001-0343, (finding confusingly similar to HSBC); F. Hoffmann-La Roche AG v. Whois Defender, Inc.,WIPO Case No. D2006-0717 (finding confusingly similar to XENICAL) and Jay Leno v. Garrison Hintz,WIPO Case No. D2009-0569 (finding confusingly similar to JAY LENO).
So here, the Panel finds the Domain Name, , confusingly similar to the Complainant's mark RED BULL. Moreover, not only is that well-known mark wholly incorporated in the Domain Name, it is identified with a drink and therefore may readily be associated with cooking. Thus the prefix “cooking with” does nothing to distinguish the Domain Name from the mark.
The Complainant has established this element of its case. B. Rights or Legitimate Interests
The Panel finds that the RED BULL mark is distinctive and well-known. The Complainant's assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that he does have rights or legitimate interests in that Domain Name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited.
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 the purposes of paragraph 4(a)(ii) of the Policy. The Respondent relies on two of these, 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; and (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.
As to (i), even perfunctory preparations have in certain circumstances been held to suffice for this purpose: SHIRMAX RETAIL LTD. v. CES MARKETING GROUP, INC., eResolution Case No. AF-0104; Lumena s-ka so.o. v. Express Ventures LTD (www. S), NAF Claim No. 94375 and ROYAL BANK OF CANADA v. XROSS, eResolution Case No. AF-0133. On the other hand, use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847.
The Respondent has exhibited a typewritten and unsigned copy of what appears to be a letter dated March 31, 2008 to a publisher, proposing that it publish a book Cooking with Red Bull. Some recipes are included. If genuine, this might very well establish a legitimate interest in the Domain Name under the Policy, paragraph 4(c)(i). However, the Respondent has failed to explain why he did not bring this proposal to the attention of the Complainant in response to the cease and desist letter of October 30, 2009. The Response meticulously addresses the Complaint, numbered paragraph by numbered paragraph, yet is silent in response to the paragraph asserting that the cease and desist and reminder letter and reminder were sent to him. The Panel infers that he received them. They threatened him with these proceedings if he did not cancel the registration of the Domain Name. It would have been a simple matter for the Respondent to have informed the Complainant of his intention to write a book and of his prior preparations to do so yet he did not. Under these circumstances the Panel is not satisfied that the Respondent did engage in those preparations.
It follows that the only use to which the Respondent has been shown to have made of the Domain Name prior to notice of this dispute (namely prior to his receipt of the initial cease and desist letter) is to lead to a website displaying, without permission, the Complainant's logo and a picture of its product, with text likely misleadingly to convey to consumers the impression that the site was approved by or operated by the Complainant. This is not bona fide use under paragraph 4(c)(i) nor legitimate non-commercial or fair use under paragraph 4(c)(iii).
Accordingly the Panel finds that the Respondent has not discharged the evidentiary burden of demonstrating, in the face of the prima facie case made by the Complainant, that he has rights or legitimate interests in the Domain Name. The Complainant has established this element of its case. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Domain Name was both registered and is being used in bad faith. This may be done either by addressing registration and use separately or by showing one or more of the circumstances specified in the Policy, paragraph 4(b), which are deemed to be evidence of both bad faith registration and bad faith use.
As to registration, the Respondent acknowledges the fame of the Complainant's mark and does not attempt to say he was unaware of it when he registered the Domain Name.
The Domain Name is clearly designed to attract Internet users familiar with the Complainant's energy drink, since the confusing similarity between the Domain Name and the Complainant's RED BULL mark would be likely to lead Internet users to wonder whether the Domain Name was associated with the Complainant. The display on the website of the logo, which the Respondent now acknowledges should not have been used without the Complainant's permission, together with the picture of the Red Bull product, would have done nothing to dispel this confusion and indicates that this was the Respondent's intent in registering the Domain Name.
As for the disclaimers, “The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion”: Estée Lauder Inc. v. , and Jeff Hanna, WIPO Case No. D2000-0869.
The Panel concludes that the Respondent registered the Domain Name in order to benefit from this diversion of consumers from the Complainant and thus to exploit the Complainant's goodwill (“the attractive force that brings in custom”) in its RED BULL mark. In so doing, he registered the Domain Name in bad faith.
As to use, the Panel finds that, by using the Domain Name, the Respondent has intentionally attempted to attract 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. This amounts to bad faith use. It does not constitute evidence of both bad faith use and bad faith registration specifically under the Policy, paragraph 4(b)(iv) because the Panel has not accepted the Respondent's assertions regarding a proposed book. Hence there is no finding that the Respondent acted for commercial gain, however, the Panel finds that given all of the facts and circumstances of this case, whether or not the Respondent's motives were for exploiting the Complainant's mark, the registration and use of the Domain Name was in bad faith.
The Complainant has established this element of its case. 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.
Alan L. Limbury
Sole Panelist
Dated: April 21, 2010
Full & Egal Universal Law Academy