The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Jon Bing of Maidstone, United Kingdom of Great Britain and Northern Ireland;
c/o Red-B of Vancouver, Washington, United States of America, represented by himself. 2. The Domain Name and Registrar
The disputed domain name is registered with Austriandomains, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2011. On January 14, 2011, the Center transmitted by email to Austriandomains, LLC. a request for registrar verification in connection with the disputed domain name. On January 14, 2011, Austriandomains, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 18, 2011 providing the registrant and contact information disclosed by Austriandomains, LLC, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 21, 2011.
On January 14 and 21, 2011, the Center received two email communications in relation to this matter.
The Center verified that the Complaint together with the amendment to 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 January 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2011. The Response was received by the Center on February 14, 2011.
The Center appointed Petter Rindforth as the sole panelist in this matter on February 21, 2011. 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.
The Panel notes that the Response was received, by email only, on February 14, 2011, which is one day after the due date. As the Response was filed only one day late, in the interests of fairness and in accordance with paragraph 10(b) of the Rules, stating that the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, the Panel has considered the Response.
The Complainant filed a Supplemental Filing on February 18, 2011. The Rules provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. It is this Panel’s view that unsolicited Supplemental Filings from either party may be accepted in rare cases, when such Supplemental Filings really add specific information that would otherwise have forced the Panel to specifically ask either party for further specification and/or clarification. However, in this specific case, the unsolicited Supplemental Filing did not add any specific and otherwise by the Panel required clarification. Therefore, the Panel will not consider the Complainant’s Supplemental Filing. See Viacom International Inc.and MTV Networks Europe v. Rattan Singh Mahon,WIPO Case No. D2000-1440.
Accordingly, the Panel shall issue its Decision based on the Complaint, the amendment to the Complaint, the Response, the Policy, the Rules and the Supplemental Rules. The case before the Panel was conducted in the English language. 4. Factual Background
The Complainant is the owner of the following trademark registrations (Annex G of the Complaint):
Community Trademark registration No. 005225611, for RED BULL (stylized), registered on July 21, 2009, for goods and services in International Classes 1 – 45;
International Registration No. IR 961854 RED BULL, registered March 19, 2008, designating – among other countries – United Kingdom;
International Registration No. IR 972114 RED BULL, registered March 19, 2008;
United States registration No. 3479607 RED BULL ENERGY DRINK & Device, registered on August 5, 2008, with priority date of October 29, 2007;
United States registration No. 3092197 RED BULL, registered on May 16, 2006, with priority date of December 31, 2003;
International Registration No. IR 945573 RED BULL & Device, registered on August 16, 2007.
The disputed domain name was created on September 4, 2010. 5. Parties’ Contentions A. Complainant
The Complainant states that it is the largest worldwide producer of energy drinks. The Red Bull energy drink was first sold in Austria in 1987, and internationally since 1992. Today, the Red Bull is sold in 157 countries around the world, with 3.9 billion units in 2009. The marketplace penetration has been focused on TV, cinema and radio, and already in 1987 the Complainant invested over EUR577,000, a number that by now has grown to over EUR244,700,000 worldwide.
Further, the Complainant organizes the Red Bull X-fighters event and the Red Bull Air Race World Championship; the latter now televised both live and in long-time reports through 87 TV channels around the world. The Complainant also organize, or have been actively involved, in the Red Bull Flugtag event, the Red Bull Music Academy, the Red Bull Sauber Petronas team, the Red Bull Racing, and sponsored the FC Red Bull Salzburg as well as Red Bull New York.
The Complainant concludes that Red Bull has become the unchallenged market leader in all its markets, and extremely well-known all over the world.
According to the Complainant, a study conducted in 2003 in Germany and Austria, confirmed that 83.7% and 90% of the general public spontaneously associated the trademark RED BULL with the Complainant’s energy drink (Annex E of the Complaint is a further evidence of the said, in the form of an Affidavit of Dr. V. Viechtbauer, General Counsel of the Complainant).
The Complainant states that it is the registrant of a large number of domain names, containing the RED BULL trademark, with the main web site under “www.redb”, which received approximately 271,000,000 page views in 2009.
The Complainant argues that the disputed domain name incorporates the RED BULL trademark in its entirety. It is registered and used for running the Respondents private business, gaining profits from marketing and advertising third party’s products, services and events with no relation to, or authorization by, the Complainant.
According to the Complainant, it is common practice with domain names that blank spaces in trademarks are omitted to from a company’s domain name, and refers to the fact that this is how the Complainant’s main web site is registered – “www.redb”. The Complainant concludes that the Respondent has registered a domain name, , which incorporates the Complainant’s trademark RED BULL in its entirety.
Further, the Complainant argues that the addition of a hyphen cannot distinguish the disputed domain name from the Complainant’s trademark. It is rather, according to the Complainant, a sign of bad faith registration by taking advantage of the typographical errors made by Internet users.
The Complainant informs that it has not licensed or otherwise permitted the Respondent to use or register any domain names incorporating any of the Complainant’s trademarks or variations thereof. The Complainant further states that the Respondent is not commonly known by the disputed domain name, and is not making any legitimate use of .
Finally, the Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant concludes that, referring to that RED BULL is one of the best known trademarks all over the world, the Respondent must have been aware of this fact by the date of registration and that it is apparent that the intent of the Respondent is to exploit the reputation of the Complainant and the RED BULL trademarks. The disputed domain name appears to be designed to attract Internet users who are looking for the Complainant’s products and business activities, appears to cause confusion with the Complainant’s marks and websites, and appears to disrupt the Complainant’s business by diverting consumers away from the Complainant’s websites.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent asserts that the disputed domain name was not obtained and setup to give the impression of being associated with the Complainant. The Respondent claims that was purchased through a public accessible website called “snap domains”, and that it was not registered by the Respondent directly. As “snap domains” registered the disputed domain name on behalf of the Respondent, the Respondent declares that he was at no stage aware of that he had agreed to the ICANN policy.
According to the Respondent, the disputed domain name was bought on the open market, and has been hosted and designed in a way that can not be confused with the Complainant’s business or trademark.
The Respondent informs that the cost to get the disputed domain name was USD 600, and argues that if the Complainant had been interested in this specific domain name, it would had been much cheaper to register it from the beginning, rather than waiting for a smaller company to do so and then take the domain name from them at that companies cost.
The Respondent concludes that the Respondent is making fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers of the Complainant’s products/services or tarnish the trademark or service mark at issue. The Respondent states that he is more than happy to modify the site hosted at the disputed domain name, so that “the term red bull” is not mentioned at any stage throughout the site. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has proved to be the owner of a number of trademark registrations for RED BULL and related trademarks, such as the Community Trademark registration No. 005225611 RED BULL and the International Registration No. IR 961854 RED BULL (designating – among other countries – United Kingdom). Apart from the proved registrations, the Panel agrees with the Complainant that the RED BULL trademark is well-known in respect of energy drinks.
The relevant part of the disputed domain name is “red-bull”. The addition of the generic top-level domain “.com” is insufficient to distinguish the disputed domain name from the Complainant’s mark. Accordingly, the disputed domain name consists of the Complainant’s trademark written with a hyphen between the two words. This does not create a non confusingly similar domain name, as there are, for pure technical reasons, only two ways to create a domain name based on a two worded trademark: either combining the two words into one, or – as in this specific case – write the two worded trademark with a hyphen. See Axel Springer Verlag AG v. Andy Fritsche,WIPO Case No.D2000-1335; see also Just Jeans Group Limited v. Domain Trade,WIPO Case No. D2000-1821 (where the domain name was found to be identical with the trademark JUST JEANS).
Accordingly, the Panel finds that the disputed domain name is at least confusingly similar to the Complainant’s trademark RED BULL. B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policz, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see Clerical Medical Investment Group Limited v. C (Clerical & Medical Services Agency),WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Respondent asserts that the disputed domain name was not obtained and setup to give the impression of being associated with the Complainant, however the Respondent provides no information or argumentation to show or prove any rights or legitimate interests in . As can be seen from Annex F of the Complaint, the disputed domain name resolves to a web page where the Respondent has articles and links to sites not related to the Complainant. Such use in the present circumstances is not a bona fide offering of goods and services and can not establish any rights or legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name . C. Registered and Used in Bad Faith
As the Panel concluded above, the Complainant’s trademark RED BULL is well-known, and registered in – among a number of other countries – United Kingdom, where the Respondent lives (according to the Respondent’s own information).
As informed by the Respondent, the Respondent is running a web development and design / marketing company, and the Panel finds it likely that the Respondent registered and is using specifically with full knowledge of the Complainant’s rights to the famous trademark RED BULL. As stated in Playboy Enterprises International Inc. v. SAND WebNames - For Sale,WIPO Case No. D2001-0094, the panel considered "bad faith" registration and usage when the domain name “seeks to take advantage of typographical errors made by Internet users who are seeking the Complainant’s commercial website”.
The only reason supplied by the Respondent, for the registration and use of the disputed domain name, seems to be that it was not already registered by the Complainant.
Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no apparent legitimate purpose to use the trademark is a strong indication of bad faith. See Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry -Succession Saint Exupéry - D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085.
The Panel concludes that the disputed domain name is both registered and used in bad faith. 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 transferred to the Complainant.
Petter Rindforth
Sole Panelist
Dated: March 7, 2011
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