WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Red Bull GmbH v. Perfect Coders Case No. D2010-0617 1. The Parties
The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Perfect Coders of Trichy, India. 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 April 20, 2010. On April 20, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 20, 2010, GoD, Inc. 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 April 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 14, 2010.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 21, 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 Complainant, Red Bull GmbH, is one of the world's largest producers of energy drinks. Just in India, in the year of 2008, more than 14 million units of the drink were sold.
According to the European Brand Ranking published by “Eurobrand 2008” in September 2008, the mark RED BULL was ranked number 22 of the most valuable brand corporations in Europe and ranked number 12 of the 25 most valuable single brands in Europe.
Trademark registrations or applications consisting of or containing the mark RED BULL are held by the Complainant and its subsidiaries further 202 jurisdictions worldwide such as Austria, the United States of America, Canada, Germany, the United Kingdom of Great Britain and Northern Ireland, the Russian Federation, Australia, Brazil, South Africa, Hong Kong, SAR of China, People's Republic of China, Taiwan, Province of China, Japan and India (Annex G to the Complaint).
The Complainant conducts business on the Internet and owns numerous domain names containing the mark RED BULL (Annex F to the Complaint).
The disputed domain name was registered by the Respondent on October 25, 2008.
On April 29, 2009 the Complainant sent a cease and desist letter to the Respondent referring to its rights concerning the disputed domain name. On July 6, 2009 the Respondent answered informing that he was a web designer who supposedly had booked the disputed domain name for a third party and that the disputed domain name would not be renewed again. However, later on the disputed domain name was renewed.
The Panel tried to access the webpage placed at the disputed domain name on June 1, 2010, but the page could not be found. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) The disputed domain name is confusingly similar to the world wide famous trademark RED BULL. The addition of the word “India” and the letter “s” from the designation of plural form in the disputed domain name are not enough to distinguish the disputed domain name from the trademark RED BULL and will likely be viewed by consumers as an indication that there is an economic relationship with, sponsorship or endorsement of the Respondent with the Complainant. Even though the words “red” and “bull” mean something in English the trademark is very strong, because their combination is used arbitrarily to distinguish the energy drink produced by the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Complainant has not licensed or permitted the Respondent to use any of its trademarks or any of its variations, nor to register or use as a domain name. The Respondent is not commonly known by the disputed domain name, which was purposely created to cause a misleading impression on customers. Indeed the Respondent is not making a legitimate use of the disputed domain name. The use of a well-known trademark as a domain name shows the Registrant's intent to misleadingly divert Internet users to his website.
(iii) The disputed domain name was registered and is being use in bad faith. The Respondent has answered the Complainant's cease and desist letter assuring that the disputed domain name would not be renewed. However, the opposite was done by the Respondent. The Respondent intentionally intends to exploit the Complainant's reputation and the RED BULL trademark to attract Internet users to his website. The registration of a well-known trademark by a party with no connection to the owner of the mark and no authorization and no legitimate purpose to use it is a strong indication of bad faith. The Respondent is not using the disputed domain name at all and passive holding may also be considered as using a domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a cancellation of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
Regardless of the fact the Respondent failed to submit a formal reply, the Panel shall consider whether the requirements of the Policy have been met. A. Identical or Confusingly Similar
Annex G4 to the Complaint demonstrates registrations of the RED BULL trademark in India since at least 1994. Furthermore, Annexes G1 to G3 to the Complaint lists multiple trademark registrations and/or applications including the RED BULL mark in several countries, associated with a long list of goods and services.
The Panel has no doubt that the RED BULL trademark is directly connected with the Complainant's activities and has reached a well-known status worldwide.
The trademark RED BULL is wholly encompassed within the disputed domain name, which also includes the country name “India” and the designation of plural form “s”. The addition of the letter “s” and the word “india” does not prevent the disputed domain name from being confusingly similar to the Complainant's trademark. Internet users could be confused into thinking that the disputed domain name was associated with the Respondent, and in particular with the business of the Respondent in India.
Previous UDRP decisions have demonstrated that geographical additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g. Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S.M.A., Inc.,WIPO Case No. D2000-0927).
Therefore, the Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is 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 at issue.
As it is often very difficult to a complainant to prove that a respondent has no rights or legitimate interests in a domain name (as this can involve the complainant being required to prove a negative), it is considered enough that the complainant establishes a prima facie case which evidences that. In a previous UDRP decision, the Panel stressed that “once Complainant makes a prima facie showing, Respondent must submit concrete evidence of at least demonstrable preparations in order to rebut Complainant's showing that Respondent has not used, nor does it plan to use, the domain name in connection with the bona fide sale of goods or services” (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270).
Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed the trademark to the Respondent. The Respondent is not commonly known by the word “redbullsindia”, which consists of a well-known trademark directly connected with the Complainant's businesses.
There is not any website operating under the disputed domain name.
Consequently, the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(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 documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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 web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its web site or location.
The registration of the disputed domain name occurred in 2008, when the Complainant's trademark RED BULL was already well-known around the world, including India.
It is unquestionable that Internet users frequently associate a domain name comprised of a trademark with the particular company that produces or offers goods and/or services under that mark (see DaimlerChrysler Corporation v. Brad Bargman,WIPO Case No. D2000-0222). In the present case, the Panel is convinced that the addition of the expression “india” and the letter “s” to the trademark RED BULL was likely made to suggest to its consumers that the website was related to the Complainant's own business in that country, creating a likelihood of confusion as to the source of the services offered under the disputed domain name. This clearly constitutes bad faith in the view of this Panel.
Furthermore, the domain name renewal after receiving the cease and desist letter sent by the Complainant and also the passive holding of the disputed domain name complete the characterization of bad faith in this specific case. Concerning this last issue, previous UDRP decisions have shown that “[t]he lack of use by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy”. (LACER,S.A. v. Constanti Gómez Marzo,WIPO Case No. D2001-0177).
Accordingly, the Panel finds that the Complainant has proved that the Respondent registered and is using the disputed domain name in bad faith, satisfying the third element of the Policy. 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 disputed domain name be cancelled.
Rodrigo Azevedo
Sole Panelist
Dated: June 4, 2010
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