The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is WhoisGuard of Los Angeles, California, United States of America / Bill Chau of Oakland, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 29, 2012. On November 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2012, the Registrar 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 December 4, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 5, 2012.
The Center verified that the amended 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 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2013.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on January 16, 2013. 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, an Austrian corporation, is the largest worldwide producer of energy drinks, in particular of the energy drink known as RED BULL which was first sold in Austria in 1987 and internationally since 1992. Currently, it is stated in the Complaint that the RED BULL energy drink is sold in 159 countries worldwide and that the Complainant sold over 4.6 billion units in 2011 alone.
The Complaint goes on to state that, since its launch in 1987, the Complainant’s advertising and promotion has focussed on TV, cinema and radio. In addition, it has sponsored a number of sporting and media events that have received worldwide coverage, including on Youtube. Among other things, these include the sponsorship of a leading football club, motorcar racing events, the 2012 Stratos project (with Felix Baumgartner jumping from a helium-filled balloon at over 128,000 feet) and the RED BULL X-Fighters event which began in 2001. The Complaint states that its investment in promotion of the RED BULL product had grown to over Euro 412,8 million worldwide in 2011. It is asserted that, currently, RED BULL has more than 28.9 million fans on Facebook and in 2010 Red bull Videos received more than 102.9 million views on Youtube. Extensive details of the Complainant’s sale and promotion of the RED BULL product are contained in the affidavit of Dr. Volker Fiechtbauer dated 20 July 2012 and included in Annexe E of the Complaint.
So far as trade mark registrations are concerned, there are numerous registrations under the Madrid system for the words “red bull” on their own and with the accompanying two bull logo and drink can trade dress (see Complaint, Annex G). There are also numerous domain name registrations under both generic and country domains for the words “red bull” alone and in combination with other words, such as and . The Complaint states that, in 2011, the RED BULL websites ‘’’’ received approx. 213 million page views. This includes RED BULL’s local country and events websites with one single page view causing, on average, 8 hits on RED BULL websites. Relevantly for the present proceeding, until October 2010 the Complainant also ran a coupon program for its drink products, but it was suspended in that month because of concerns about fraud (see Complaint, Annex J).
So far as the Respondent is concerned, its registration of the disputed domain name was created on 16 April 2012 (see Complaint, Annex B). There is a website under the disputed domain name which advertises and promotes coupons for Red Bull energy drinks (see Complaint, Annex F). The Complaint also alleges that this website advertises third party products and services, such as Diilmah Tea and Tescos, referring here to printouts in Annex F1 of the Complaint. However, this third party advertising is not apparent in the exhibit filed with the Complaint: this refers only to the coupons said to be available on the Respondent’s website. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the three requirements of Par 4(a) of the UDRP are made out here:
1 The disputed domain name is confusingly similar to a mark or marks in which it has rights, referring here to the various registered trade marks that it has under the Madrid system for the words “Red Bull” both on their own and in combination with various devices. In this regard, it notes that the words Red Bull are contained within the disputed domain name and that the addition of the suffix “-coupons” does not prevent the impression of confusing similarity arising.
2 That the Respondent has no legitimate rights or interest in the disputed domain name: it has not been licensed or otherwise permitted to use it by the Complainant, is not commonly known by that name, and had no legitimate reason for registering the Complainant’s mark as its domain name.
3 That the Respondent has registered and is using the disputed domain name in bad faith. The Complainant points here to the fame of the Red Bull mark and argues that the Respondent must have been aware of this before registering the disputed domain name. It also asserts that the Respondent’s use of the domain name has misled consumers into believing that its website and products are associated with the Complainant, and points also to other similar registration of domain names incorporating the mark Red Bull as indicating a “pattern of conduct” within the meaning of par 4(b)(ii) of the UDRP. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Each of the requirements in paragraph 4(a) needs to be considered in turn, noting that the Complainant must satisfy the Panel that each of them is present before an order for transfer or cancellation may be made.
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. At the same time, it should be noted that paragraph 14(b) of the Rules provides that:
“…if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.”
Accordingly, the Panel proceeds to deal with each of the matters required to be satisfied under paragraph 4(a) of the UDRP, noting that it is necessary for the Complainant to satisfy each one if it is to succeed in its Complaint. A. Identical or Confusingly Similar
Paragraph 4(a)(i) requires that the Complainant establish that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”. There are therefore two limbs of paragraph 4(a)(i) that the Complainant must satisfy: first, that it has “rights in a trade or service mark” (this need not be a registered mark), and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.
As to the first of these requirements, the Complainant has provided evidence that it has registered trade marks in a number of countries under the Madrid system that comprise either the words Red Bull or the words Red Bull in combination with the logo of two bulls fighting or other trade dress features: see Annex G. On the basis of this material, there is more than sufficient evidence here for the Panel to conclude that this limb of paragraph 4(a)(i) is satisfied.
As to the second limb of this paragraph, the Panel has no difficulty in concluding that there is confusing similarity between the trade marks and the disputed domain name. Not only are the words Red Bull included in the domain name, but these come at the start where they will encountered first by any internet user and will lead to the expectation that the suffix “-coupons” refers to an activity associated with the Complainant and its marks. The Panel is fortified in this conclusion by the evidence of the Complainant that indicates clearly that the mark “Red Bull” is a very well known, if not a famous, mark, meaning that confusion between the disputed domain name and the trade marks is more likely. Accordingly, the Panel finds that this second limb of par 4(a)(i) is made out here. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) of the Policy, which provides that:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) You are 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 or service mark at issue.”
Essentially, these are matters for a respondent to put forward for the Panel’s consideration, as they are often difficult for a complainant to disprove directly. In the present case, there is nothing on the record to suggest that the circumstances referred to in any of the above sub-paragraphs are present. In particular, there is no evidence that the Complainant has licensed or otherwise permitted the Respondent to use the mark ‘Red Bull” in the disputed domain name; nor is there anything to suggest that the Respondent was commonly known by the name “Red Bull” prior to registration of the disputed domain name. Further, there is nothing on the website linked to the disputed domain name to indicate that this is a legitimate non-commercial or fair use” of the disputed domain name, for example, as part of a criticism or “gripe site”. However, these are not an exhaustive statement of relevant circumstances for the purposes of paragraph 4(a)(ii) and, on the basis of the Complaint and exhibits, it can be concluded that there is a lack of rights or legitimate interests on the part of the Respondent in that the website under the disputed domain name appears to indicate that the coupons advertised there are those of the Complainant, thereby suggesting some kind of link or association that does not exist. In particular, its offering of Red Bull coupons where these have been specifically withdrawn by the Complainant two years previously (see Annex J) underlines the lack of any legitimate right or interest on the part of the Respondent.
Accordingly, the Panel is satisfied that par 4(a)(ii) of the Policy is made out. C. Registered and Used in Bad Faith
The matters discussed above in relation to paragraph 4(a)(ii) of the Policy are also relevant to paragraph 4(a)(iii), which requires the Complainant to show that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy then provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the Respondent] 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 [the Respondent] 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 [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] 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.”
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the disputed domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the disputed domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be non-exclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of a UDRP panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can also amount to use in bad faith, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine sub-paragraphs (i)-(iii) solely to the time of registration; presumably, the sub-paragraphs would also apply to a bad faith use of a disputed domain name after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several UDRP decisions; see, for example, Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869; and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
So far as the first of the circumstances referred to in paragraph 4(b)(i) of the Policy, there is no direct evidence of the Respondent having registered or acquired the disputed domain name for the purposes indicated there (for resale to the complainant or a competitor for a consideration in excess of out of pocket expenses). However, circumstances close to those referred to in paragraph 4(b)(ii) of the Policy may well be present, in that on one previous occasion, the Respondent (or a party associated with it) has sought to register and use the identical domain name in a different generic domain, leading to an order for transfer by a WIPO Panel: see Red Bull GmbH v. Fundacion Private Whois,WIPO Case No. D2012-0842 – for the domain name . However, even if the Respondent is not the same as the Respondent in this earlier proceeding, the circumstances referred to in par 4(b)(iii) and (iv) are clearly present, pointing therefore unequivocally to the presence of bad faith, both in registration and use of the disputed domain name:
1. There can be little doubt as to the worldwide fame attaching to the Red Bull mark, as evidenced by its widespread promotion on various forms of electronic media and its sponsorship of widely sponsored sporting and other special events, such as the Felix Baumgartner sky jump. It is unlikely, therefore, that the Respondent could have registered the disputed domain name without some knowledge of the Complainant’s well known mark. This inference of knowledge is strengthened by the fact that the disputed domain name and its associated website refer specifically to coupons, where this was a service that had been expressly withdrawn by the Complainant two years earlier because of fears of fraud (see Complaint, Annex J). Accordingly, the circumstances referred to par 4(b)(iii) are clearly present.
2. In advertising these coupons on its website, and indicating that this was in some way connected with the Complainant, the Respondent was clearly misleading consumers, and thereby engaging in conduct falling within the meaning of par 4(b)(i).
Accordingly, the Panel is satisfied that there was both registration and use of the disputed domain name within the meaning of par 4(a)(iii) of the UDRP. 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 the Complainant.
Staniforth Ricketson
Sole Panelist
Date: January 30, 2013
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