The Complainant is Red Bull GmbH of Fusch1 am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Tommy Ortiz of Florida, United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2011. On December 19, 2011, the Center transmitted by email to GoD, LLC.
a request for registrar verification in connection with the Disputed Domain Name. On Monday December 19, 2011, GoD LLC. 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 December 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2012.
On January 19, 2012 an email was received by the Center by Mr. B. Meacham, Attorney at Law stating that he had been retained by the Respondent to represent him in regard to the above-referenced case number requesting an extension to the due date of the Response. On January 23, 2012, the Center acknowledged receipt of the communication and further pointed out that as the specified due date for submission of a Response had passed (January 12, 2012), and as was stated in the Notification of Respondent Default of January 18, 2012, the Center had proceeded to Panel appointment stage. The Center further, advised that as the Rules make no express provision for the filing of materials by either party at that stage of the proceedings except as may be specifically requested by the Panel, the Center would alert the Panel to the receipt of Mr. B. Meacham communication and/or any late response. The Center finally noted that it would then be at the sole discretion of the Panel as to whether it would consider such communication, and further procedural steps that may be required (if any).
The Center appointed Alistair Payne as the sole panelist in this matter on January 30, 2012. 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 30, 2012 the Respondent filed a submission. The communication was acknowledged and forwarded to the Panel. On February 2, 2012 the Complainant filed a supplemental filing. This communication was also acknowledged and forwarded to the Panel. 4. Factual Background
The Complainant is the owner of the well-known RED BULL trade mark which is registered as a word mark in many jurisdictions throughout the world, including in particular in the United States under registration number 3092197 with a priority date of December 31, 2003. The Complainant has operated its business under the RED BULL trade mark in Austria since 1987 and internationally since 1992 and its main website operates from the domain name .
The Disputed Domain Name was created on August 16, 2011. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Disputed Domain Name is confusingly similar to its RED BULL trade mark because not only does the Disputed Domain Name wholly incorporate its mark but the addition of the expression “after party” does nothing to distinguish the Disputed Domain Name and amounts merely to the addition of two commonly used words or a commonly used phrase. The Complainant says that based on the fame and repute attaching to its highly distinctive mark throughout the world, that Internet users would immediately associate the Disputed Domain Name with it and as a consequence it is confusingly similar.
The Complainant says that it has never permitted or authorized the Respondent to use its RED BULL trade mark and the Respondent is not known by this name or mark. Considering the fanciful and highly distinctive nature of the mark and the degree of fame and reputation attaching to it the Complainant alleges that the Respondent must have purposefully chosen to register the Disputed Domain Name incorporating the Complainant’s trade mark in order to trade off the goodwill and reputation attaching to the Complainant’s mark. Adopting a similar domain name to the Complainant’s domain name is, according to the Complainant is not legitimate conduct and is calculated to misleadingly divert Internet users to the website at the Disputed Domain Name.
As far as bad faith is concerned, the Complainant submits that as set out above, it is only reasonable to infer that the Respondent must have chosen the Disputed Domain name in full knowledge of the Complainant’s mark and for the purposes of trading off the goodwill attaching to that mark. The Complainant says that the Respondent’s subsequent use of the Disputed Domain Name to resolve to a website for Beacon Clinical Research LLC which appears to carry on clinical trial activities and which does not appear to have any connection with the Respondent is indicative of the Respondent’s bad faith in seeking to misleadingly divert Internet users. B. Respondent
The Respondent admits that the Disputed Domain Name is confusingly similar to the Complainant’s RED BULL trade mark.
The Respondent submits that it has never used the Disputed Domain Name and therefore the Complainant cannot know his reasons for registration or intended purpose of use, but fails to confirm as to what his motivations and plans for use might be. He does say that he has no connection with Beacon Clinical Research LLC that he never authorized re-direction to its website and does not know how this re-direction occurred. 6. Discussion and Findings
The Rules require strict compliance with deadlines for filing of the parties’ submissions and make no provision for late filing, or for supplemental filings but panels retain a residual discretion under the rules to admit late or supplementary filings where the circumstances justify admission.
In the absence of any explanation that causing the Respondent to file its Response 11 days late, the Panel would not usually be prepared to admit the Response. However in the interests of doing justice between the parties in this case, as becomes apparent from the Panel’s discussion in terms of bad faith below, the Panel will exercise its discretion in this case. It follows that the Complainant’s reply to the Response will also be admitted into these proceedings. A. Identical or Confusingly Similar
The Complainant has demonstrated that it has registered trade mark rights in the RED BULL word mark as set out above and the Panel accepts based on the evidence of use provided in the Complaint that the RED BULL mark is in addition extremely well known and has considerable reputation in many countries worldwide, including in the United States of America. The Panel notes in addition that previous panelists have found that the Complainant’s RED BULL mark is well known for energy drinks, for example see Red Bull GmbH v. Jon Bing, c/o Red-B, WIPO Case No. D2011-0072.
The Disputed Domain Name includes the common English words “after” and “party” in the expression “afterparty” directly following the wholesale incorporation of the RED BULL mark. The Panel notes that the Complainant’s well known mark is wholly incorporated into the Disputed Domain name in a manner that affords it primary significance. The use of the common and nondistinctive words or terms “after” and “party”, even in the expression “afterparty” following “redbull” does nothing to distinguish the Disputed Domain Name from the Complainant’s mark. Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s RED BULL trade mark. B. Rights or Legitimate Interests
The Complainant asserts that it has never permitted the Respondent to use its mark and neither is the Respondent commonly known by and nor does it operate a business under the RED BULL mark and therefore does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant submits that the Respondent purposefully registered the Disputed Domain Name incorporating the Complainant’s well known mark in order to misleadingly divert Internet users to a third party website in bad faith. The Respondent submits that the Complainant does not know why the Respondent registered the Disputed Domain Name and therefore does not know whether the Respondent has rights or legitimate interests in the Disputed Domain Name.
The website to which the Disputed Domain Name resolved appears to be operated by a third party, Beacon Clinical Research LLC which provides medical and clinical trial activities that appear to have no connection to the Respondent and are in an entirely different field of activity to the Complainant’s products. The Respondent says that it has no connection with this company and never authorized re-direction to its website.
On notifying the Complaint the Center, following its usual procedures, sent an email to the website’s listed address (namely Beacon Medical) and received a response from that company confirming that it has no connection with the Disputed Domain Name and was unsure as to why it resolved to the company’s website. It further appears from this email that Beacon Medical’s technical contact suggested that this was an error resulting from a shared server problem that has since been resolved. The Panel accepts the third party site owner’s confirmation that it has nothing to do with the Disputed Domain Name or its owner and that resolution to its website was a result of a technical error. Further, the Panel notes that the Disputed Domain Name does not now resolve to a webpage at all.
Even considering that the Disputed Domain Name does not now resolve to any webpage at all, there is nothing before the Panel to rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Particularly in view of the degree of renown attaching to the Complainant’s RED BULL mark, there would need to be at least some possibility of the Respondent having had a bona fide reason to register and use the Disputed Domain Name incorporating the Complainant’s distinctive and well known RED BULL mark. The Respondent has failed to provide any such evidence and the only reason apparent to the Panel, as set out below, is that the Respondent sought to trade off the goodwill attaching to the Complainant’s RED BULL mark. Therefore the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case and that the Respondent has no rights or legitimate interests in the Disputed Domain Name. As a result the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
Previous panels have found that where a very well-known trade mark is incorporated into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568).
In this case the Disputed Domain Name was registered by the Respondent, who has a registered address in the United States of America, on August 16, 2011. Considering the very considerable degree of renown attaching to the Complainant’s RED BULL mark in the United States by this date and in the absence of any credible explanation from the Respondent, the Panel infers that the Respondent registered the Disputed Domain Name in bad faith with the purpose of using it in some way for his own commercial gain.
Numerous panels have found that a passive holding of a domain name may amount to use in bad faith in appropriate circumstances (for example see Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 and the list of cases cited under section 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In Telstra Corporation Limited v. Nuclear Marshmallows, supra the panel noted that "[t]he domain name … does not resolve to a web site or other on-line presence. There is no evidence that a web site or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In short, there is no positive action being undertaken by the Respondent in relation to the domain name."
The panel went on to say: "[t]he question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith."
In the present proceedings the Panel knows very little about the Respondent, but the relevant circumstances are as follows:
1. The Respondent registered the Disputed Domain Name relatively recently in August 2011 many years after the Complainant first used its RED BULL mark;
2. As noted above the RED Bull mark is extremely well known to the extent that in the Panel’s opinion it could be considered a famous mark and on the balance of probabilities the Panel considers that the Respondent must have been well aware of this reputation at the time of registration;
3. The Respondent intentionally chose to register the Disputed Domain Name which incorporates wholly the Complainant’s mark and two common English words which are plainly suggestive of a party associated with the Complainant’s RED BULL energy drink, or with the Complainant;
4. The Panel is satisfied that the Disputed Domain name temporarily resolved to the Beacon Clinical Research LLC website as a consequence of a technical error and it is therefore not appropriate to take this use into account for the purposes of determining this case;
5. While the Respondent has not otherwise used the Disputed Domain Name, almost any attempt (other than for example a website for legitimate noncommercial purposes) to actively use it in the circumstances of the fame attaching to the RED BULL mark would inevitably lead to a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site by Internet users who would inevitably be led to believe that such a website would be owned by, controlled by, established by or in some way associated with the Complainant;
6. The Respondent has engaged in a "passive holding" of these domain names;
7. There is no information as to the business activities of the Respondent and the Complainant has made out a prima facie case that the Respondent does not have any rights or legitimate interests in said domain names;
8. The Respondent has through his attorneys filed a late Response but while going to some lengths in the Response to distance himself from Beacon Medical LLC and its website and to point out that the Complainant could not have been aware of its reason for registering the Disputed Domain Name, he has singularly failed to indicate the purpose for which he sought to register the Disputed Domain Name in the first place. Nor has he provided any credible explanation for non-use of the Disputed Domain Name since September, 2011. The Panel therefore infers that the Respondent has purposefully chose not to use this golden opportunity to explain the reason for its registration of the Disputed Domain Name or its proposed use because the explanation would go against it in circumstances that its intentions were illegitimate.
Taking into account all of the above factors the Panel considers that on balance the Respondent registered the Disputed Domain Name in bad faith and based, in particular, on the Respondent’s patent failure to explain its reason for registration and proposed use infers that the Respondent intends to use the Disputed Domain Name in bad faith. In these rather exceptional circumstances the Panel is satisfied that the passive holding of the Disputed Domain Name in this case amounts to use in bad faith. Accordingly, the Panel finds that the Complaint succeeds under the third element of the Policy. 7. Decision
For 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.
Alistair Payne
Sole Panelist
Dated: February 4, 2012
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