Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
Respondent is Fundacion Private Whois of Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2012. On April 20, 2012, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On April 22, 2012, I Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed the amendment to the Complaint on April 30, 2012.
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 Respondent of the Complaint, and the proceedings commenced on May 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 22, 2012.
The Center appointed Ross Carson as the sole panelist in this matter on June 4, 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. 4. Factual Background
Complainant is the largest worldwide producer of energy drinks. It is the producer of the well-known RED BULL-trademarked energy drink, which was first sold in Austria in 1987 and internationally since 1992. Currently, the RED BULL energy drink is sold in 157 countries all over the world and Complainant sold over 4.1 billion units in 2010.
Since its launch in 1987, Complainant’s advertising focused on TV, cinema and radio. In 1987, it invested over EUR 577,000 on advertising and already in 2010, this number has grown to over EUR 338.7 million worldwide. Based on these figures, the brand has become the market leader in all its markets.
RED BULL trademarks are protected in 205 jurisdictions worldwide. Complainant is the owner of numerous trademark registrations for or including RED BULL registered on the Principal Register in the United States of America. One of such registrations is Registration No. 3092197 for the trademark RED BULL registered on May 16, 2006 for “Non- alcoholic beverages, namely energy drinks and hypertonic drinks. First use: January 31, 1987. First use in commerce: May 31, 1996”.
Prior UDRP panels have found that Complainant’s RED BULL trademark has a very strong reputation and is widely known all over the world (see Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909; Red Bull GmbH v. Web Wax Designer, WIPO Case No. D2006-0746).
In a recent case, Red Bull GmbH v. Tommy Ortiz, WIPO Case No. D2011-2222, the panel stated that “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 was created on April 21, 2011. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant states that it is the owner of multiple registrations and applications of trademarks consisting of or containing the famous RED BULL mark. Complainant’s various trademark registrations and applications for RED BULL cover an extensive range of goods and services and span all 45 International trademark classes. Complainant and its subsidiaries hold national and international trademark registrations or applications comprising or containing the mark RED BULL in Austria and 205 other jurisdictions worldwide such as the United States, Canada, Germany, the United Kingdom of Great Britain and Northern Ireland, the Russian Federation, Australia, Brazil, South Africa, Hong Kong, China, Switzerland, Taiwan, Japan and Saudi Arabia. In addition, Complainant holds various registered Community Trademark registrations or applications. One example is United States Registration No. 3092197 for the trademark RED BULL registered on May 16, 2006 for “Non- alcoholic beverages, namely energy drinks and hypertonic drinks. First use: January 31, 1987. First use in commerce: May 31, 1996”.
Complainant submits that the disputed domain name is confusingly similar to Complainants trademarks for or including RED BULL. The only deviation that Respondent did was that it has added the term “coupons” to Complainant’s RED BULL trademark. As stated by a WIPO panel recently in the case relating to the domain name , Red Bull GmbH v. Domains by Proxy Inc./New Gold Mine, WIPO Case No. D2007-0684, the addition of the word “games” to the trademark RED BULL does not change the overall impression of the designation of domain names as being connected to Complainant and does not reduce the likelihood of confusion. See also Red Bull GmbH v, Emory Virgil, WIPO Case No. D2005-0381 concerning the domain name .
Complainant further submits that it is well established that the incorporation of a complainant’s mark in full within a domain name may be sufficient to establish confusing similarity between the mark and the domain name. See for example, Nokia Group v. Mr. Giannailasio Mario, WIPO Case No. D2002-0782, referred to in the three-member panel decision the Ritz Hotel Lid v. Damir Kruzicevic, WIPO Case No. D2005-1137, and Quintessentially (UK) Limited v. Mark Schnoreberg / Quintessentially Concierge, WIPO Case No. D2006-1643. A.2. No Rights or Legitimate Interests in respect of the disputed domain names
Complainant states that it has not licensed or otherwise permitted Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of those marks or any variations thereof. A combination of the words “red” and “bull” is purely fanciful. Therefore, nobody would legitimately choose this combination or any variation thereof, unless seeking to create an association to or with Complainant.
Complainant further submits that Respondent is not commonly known by the disputed domain name. Based on the fame and reputation of the RED BULL mark and the activities of Complainant all over the world, it can be concluded beyond any doubt that Respondent purposefully created the disputed domain name which wholly contain Complainant’s extremely well-known RED BULL trademark and varies it slightly by adding wording “coupons”. Respondent has registered the disputed domain name to create the misleading impression of being in some way associated with Complainant. Respondent was and is quite obviously trying to exploit the fame and reputation of Complainant’s trademarks. Respondent had no legitimate reason for registering Complainant’s trademark as a domain name, and it has registered and is using the disputed domain name illegitimately.
Complainant states that the panel correctly found in CSA International (a.ka. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071, “A domain name is not merely an address, it is also a means of identification. As noted in the final report of WIPO: ‘Domain names were intended to perform a technical function in a manner that was convenient to human users of the Internet. They were intended to provide addresses for computers that were easy to remember and to identify without the need to resort to the underlying IP numeric address. Precisely because they are easy to remember and to identify, however, domain names have come to acquire a supplementary existence as business or personal identifiers.’ The adoption by Respondents of an Internet address substantially identical or confusingly similar to that of the name, Internet address and trademarks of Complainant must inevitably and misleadingly divert consumers to that address and have the effect of tarnishing the trademarks.” This is the same in this case. Respondent had no legitimate reason for registering Complainant’s trademark as a domain name.
Complainant further submits that none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating a respondent’s rights or legitimate interests exist. Respondent is not authorized or related to Complainant in any way. Respondent is not commonly known by the disputed domain name. Respondent is making illegitimate use of the disputed domain name with intent to misleadingly divert Internet users to its website associated with the disputed domain name A.3. Registration in Bad Faith
Complainant states that when Respondent registered the disputed domain name on April 21, 2011. Complainant’s RED BULL trademarks had been registered around the world for over a decade in relation to goods and services including all International Classes.
Complainant further states that Respondent is not commonly known by the disputed domain name. Based on the fame and reputation of the RED BULL mark and the activities of Complainant all over the world, it can be concluded beyond any doubt that Respondent purposefully created the disputed domain name which wholly contain Complainant’s extremely well-known RED BULL trademark and varied it slightly by adding the word “coupons”. Respondent has registered the disputed domain name to create the misleading impression of being in some way associated with Complainant. Respondent was and is quite obviously trying to exploit the fame and reputation of Complainant’s trademark. A.4. Use in Bad Faith
Complainant submits that the disputed domain name has been registered and is being used in bad faith.
Complainant submits that paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of a domain name in had faith, which are as follows:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
Complainant further relies on the findings of previous UDRP panels that “the four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.” See, Brown & Williamson Tobacco Corp., et al. v. Dennis Wilkins,WIPO Case No. D2001-0865.
Complainant states that it sent three cease and desist letters to Respondent on December 15, 2011, on December 28, 2011 and on February 14, 2012. Respondent did not comply with Complainant’s request to resolve the dispute amicably. In the case Nintendo of America, Inc. v. Garrett N. Holland et al, WIPO Case No. D2000-1483, the panel stated that ignoring such warning letters is evidence of bad faith: “The Sole Panelist concludes that, in the instant case, it is a likewise permissible inference to conclude bad faith use of the domain name since Respondent’s domain names are composed entirely of Complainant’s trademark and the impossibility of conceiving of a legitimate use of the Domain Name. Moreover, despite Complainant’s efforts to persuade Respondent to cease its unauthorized use of the Character Name Marks, Respondent has continued to violate Complainant’s trademark rights.” Complainant submits that this finding is also applicable in the current case. Complainant sent the cease and desist Letter to Respondent stating that the usage of the disputed domain name is unlawful; however Respondent still uses it.
Complainant further submits that Respondent’s registration of the disputed domain in bad faith is evident. Due to its extensive use by Complainant, RED BULL is a famous trademark worldwide. Consequently, it seems quite clear that, taking into account the circumstances proved before the Panel, in this case the only feasible possibility seems to be that Respondent registered the disputed domain name in order to unfairly benefit from Complainant’s trademarks.
Complainant states that Respondent is running private commercial activity under the disputed domain name . According to the content of the website associated with the disputed domain name Respondent is promoting it for third party business i.e. the sale of the counterfeit coupons for Complainant’s product, RED BULL Energy Drink. Complaint states definitively that the coupons provided on Respondent’s website are counterfeit. RED BULL coupons do not exist on the market. Complainant has suspended all coupon programs since October 2010, which was published in a public service announcement via the Coupon Information Corporation which provides resources to prevent coupon fraud . In addition to that, in July 2011 a memo was sent to various retailers indicating that Complainant does not issue any coupons as of October 2010 and so any coupons that consumers try to redeem are counterfeit. Respondent is disrupting the business of Complainant. Moreover, Respondent is providing the link to some kind of lottery advertising products of third parties and receiving commercial gain.
Complainant requests that the disputed domain name be cancelled. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant is the owner of trademark registrations for the trademark RED BULL registered in relation to a broad range of goods and services throughout the world. Prior UDRP panels have found that Complainant’s RED BULL trademark has a very strong reputation in relation to energy drinks and is widely known all over the world. See Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909; Red Bull GmbH v. Web Wax Designer, WIPO Case No. D2006-0746.
The disputed domain name is comprised of Complainant’s registered trademark RED BULL and the word “coupons”. As stated by a WIPO panel recently in the case relating to the domain name , Red Bull GmbH v. Domains by Proxy Inc./New Gold Mine, WIPO Case No. D2007-0684, the addition of the word “games” to the trademark RED BULL does not change the overall impression of the designation of domain names as being connected to Complainant and does not reduce the likelihood of confusion. See also Red Bull GmbH v, Emory Virgil, WIPO Case No. D2005-0381 concerning the domain name .
The inclusion of the top level domain descriptor “.net” in the disputed domain name does not affect a finding of confusing similarity. WIPO UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
The Panel finds that Complainant has proven that the disputed domain is confusingly similar to Complainant’s trademark RED BULL. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant has demonstrated that Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademark or any trademarks confusingly similar thereto.
Respondent has not demonstrated that it is commonly known by the name RED BULL or the disputed domain name to satisfy paragraph 4(c)(ii) of the Policy, and does not justify use of Complainant’s trademark RED BULL. See Compagnie de Saint Gobain v. Com-Union Corp,WIPO Case No. D2000-0020, finding no rights or legitimate interest where respondent was not commonly known by the mark or never applied for a license or permission from complainant to use the trademarked name.
The webpage associated with the disputed domain name shows a photograph of a carry case bearing Complainant’s RED BULL trademark with the heading “Free”. Beside the photograph of carry case is the statement “Good For One 8 oz. 4 Pk of Red Bull Energy (any Flavor)”. Clicking on the advertisement of the Free RED BULL carry case resolves to a page featuring “Free Coupons & Promo Codes” featuring live links to coupons for Flowers, Groceries, Clothing and Shopping. The Panel finds that Respondent is using the disputed domain name to attract Internet users to its website based on the goodwill associated with Complainant’s RED BULL trademark to obtain pay-per-click income from a wide variety of businesses offering coupons.
The webpage associated with the disputed domain name is also misleading as Complainant suspended all coupon programs associated with its RED BULL energy drink on October 2010, which was published in a public service announcement via the Coupon Information Corporation which provides resources to prevent Coupon fraud . In addition to that, in July 2011 a memo was sent to various retailers indicating that Complainant does not issue any coupons as of October 2010 and so any coupons that consumers try to redeem are counterfeit.
Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy. Respondent uses the disputed domain name as a way to confuse Internet users into believing that they are accessing a site that is either sponsored or affiliated with Complainant. See Garry Kasparov v. American Computer Company, NAF Claim No. 0094644, finding no legitimate interests when respondent used complainant’s name as a portal to a website which, without permission, associated the complainant as an endorser of respondent’s causes); see also AltaVista Company v. Andrew Krotov,WIPO Case No. D2000-1091, finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name. Once this showing is made, the evidentiary burden shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. In this case, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and is being used in bad faith. C.1. Registered in Bad Faith
When the disputed domain name was registered on April 21, 2011, Complainant’s RED BULL trademarks had been registered around the world for over a decade in relation to goods and services including all International Classes.
Respondent is not commonly known by the disputed domain name. Based on the fame and reputation of the RED BULL mark and the activities of Complainant all over the world, the Panel infers that Respondent purposefully created the disputed domain name which wholly contain Complainant’s extremely well-known RED BULL trademark and varies it slightly by adding the word “coupons”. The Panel infers that Respondent registered the disputed domain name to create the misleading impression of being in some way associated with Complainant. Respondent was and is quite obviously trying to exploit the fame and reputation of Complainant’s trademark.
The Panel finds that Respondent registered the disputed domain names in bad faith. C.2. Domain Name Used in Bad Faith
Complainant sent three cease and desist letters to Respondent on December 15, 2011, on December 28, 2011 and on February 14, 2012. Respondent did not comply with Complainant’s request to resolve the dispute amicably. In the case Nintendo of America, Inc. v. Garrett N. Holland et al, WIPO Case No. D2000- 1483, the panel stated that ignoring such warning letters is evidence of bad faith: “The Sole Panelist concludes that, in the instant case, it is a likewise permissible inference to conclude bad faith use of the domain name since Respondent’s domain names are composed entirely of Complainant’s trademark and the impossibility of conceiving of a legitimate use of the Domain Name. Moreover, despite Complainant’s efforts to persuade Respondent to cease its unauthorized use of the Character Name Marks, Respondent has continued to violate Complainant’s trademark rights.” The panel’s finding of use in bad faith in the Nintendo case is also applicable in the current case. Complainant sent the cease and desist letters to Respondent stating that the usage of the disputed domain name is unlawful; however Respondent still uses it.
Under paragraph 4(b)(iv) of the Policy, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: “(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other on-line 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 website or location”.
The webpage associated with the disputed domain name shows a photograph of a carry case bearing Complainant’s RED BULL trademark with the heading “Free”. Beside the photograph of carry case is the statement “Good For One 8 oz. 4 Pk of Red Bull Energy (any Flavor)”. Clicking on the advertisement of the Free RED BULL carry case resolves to a page featuring “Free Coupons & Promo Codes” featuring live links to coupons for Flowers, Groceries, Clothing and Shopping. Respondent is using the disputed domain name to attract Internet users to its website based on the goodwill associated with Complainant’s RED BULL trademark to obtain pay-per-click income from a wide variety of businesses offering coupons.
The webpage associated with the disputed domain name is also misleading as Complainant suspended all coupon programs associated with its RED BULL energy drink in October 2010, which was published in a public service announcement via the Coupon Information Corporation which provides resources to prevent coupon fraud . In addition to that, in July 2011 a memo was sent to various retailers indicating that Complainant does not issue any coupons as of October 2010 and so any coupons that consumers try to redeem are counterfeit.
The Panel finds that Complainant has proven, on a balance of probabilities, that Respondent uses the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complaint satisfies the requirement under paragraph 4(a)(iii) 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 disputed domain name be cancelled as requested by Complainant.
Ross Carson
Sole Panelist
Dated: June 17, 2012
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