The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Peter Renner, sol and sun of Torrevieja, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with united-domains AG (the “Registrar”). 3. Procedural History
The Complaint was filed in English language with the WIPO Arbitration and Mediation Center (the ”Center”) on March 11, 2013. On March 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name. The Registrar also stated that the language of the registration agreement is German. The Center sent an email communication to the Complainant on March 13, 2013, informing the Complainant that the language of the registration agreement is German and inviting the Complainant to either submit sufficient evidence that there is an agreement between the Parties to the effect that the language of proceeding shall be English, sent the Complaint in English or request for English as the language of the proceedings. On March 13, 2013, the Complainant requested the Center for English or English and German both be the language of the proceedings. The Center informed the Complainant on March 14, 2013, that the language of the proceedings shall be English, if the Respondent does not object until March 18, 2013. The Respondent did not reply to the Center’s request.
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 March 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2013.
The Center appointed Christian Schalk as the sole panelist in this matter on April 19, 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. The language of the proceedings is English since the Respondent has not objected against the selection of the English language. 4. Factual Background
The Complainant is a well-known Austrian producer of energy drinks. Its main product is an energy drink named RED BULL which was first sold in Austria in 1987 and internationally in 1992. Currently, the Complainant sells its energy drinks in more than 150 countries of the world where it sold over 5.2. billions units alone in 2012. In addition, the Complainant has sponsored events like the RED BULL Stratos project which gained immense attention in the media since it was followed by millions of people via TV or via Internet. The Complainant sponsors also different kind of sports events, football clubs and the RED BULL MUSIC ACADEMY in 32 countries. All these activities led to a strong presence of the Complainant in print- and electronic media.
The Complainant owns trademark rights in the term RED BULL in various jurisdictions, among others:
European Community Trademark registration No. 5225611 for RED BULL, application date 27.07.2006, covering goods and services in various International Classes.
Furthermore, various Panelists have held already that the Complainant’s RED BULL trademark is famous given its strong reputation and notoriety (see, for instance, 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 Complainant owns various domain names containing the term “red bull” both under generic and county code Top Level Domains. The Complainant’s main website which is linked with the domain name , contains information on the Complainant energy drink products, its sport- and other activities sponsored by the Complainant.
The Respondent registered the disputed domain name on January 11, 2008.
Internet users which enter the disputed domain name in their browser are directed to another website which is accessible also under the domain name . The term “solnews” means in English language “sun news”. Under this website, the Respondent displays links to various services and third companies, for instance, McDonalds, a pizza service and to a telephone provider.
On June 29, 2011, the Complainant’s attorney sent a cease and desist letter to the Respondent and two reminders on September 22, 2011, and on August 8, 2012., In his reply, the Respondent offered the disputed domain name to the Complainant for the amount of Euro 10.000.- 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is identical with or confusingly similar to trademarks in which the Complainant has rights.
The Complainant argues in this context that although the terms “red” and “bull” are both ordinary words, they form a distinctive combination used to distinguish the Complainant’s energy drink. In this context, the Complainant cites Red Bull GmbH v. Tony Marinelli,WIPO Case No. D2001-0522 and Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035, to support its arguments.
The Complainant contends further that the distinctive part of the disputed domain name is the term “redbull” which is identical with the various Complainant’s trademarks and trademark applications for RED BULL. The Complainant believes further that the addition of the numbers “007” does not change the overall impression of the disputed domain name and thus, does not reduce the likelihood of confusion with the Complainant’s RED BULL-trademarks. In this context, the Complainant cites Red Bull GmbH v. Domains by Proxy Inc./New Gold Mine,WIPO Case No. D2007-0684 and Red Bull GmbH v. Emory Virgil,WIPO Case No. D2005-0381, to support its findings. The Complainant refers further to Nokia Group v. Mr. Giannattasio Mario,WIPO Case No. D2002-0782 and Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857, where the Panelists have stated, that the incorporation of a complainant’s mark in full within a disputed domain name may be sufficient to establish confusing similarity between the trademark and the disputed domain name.
The Complainant believes also that while seeking the Complainant’s commercial website, Internet users are intentionally diverted to the Respondent website for the purpose of commercial gain by creating confusion as to the Complainant’s affiliation with the Respondent’s websites.
The Complainant alleges also that the Respondent has no rights or legitimate interests in the disputed domain name. In this context, the Complainant argues that the Respondent has neither a license nor any other kind of permission on behalf of the Complainant to use any of the Complainant’s trademarks or any variations thereof nor to register and use any domain names incorporating such trademarks. The Complainant explains also, that the Respondent is commonly known neither by the disputed domain name nor by the term “redbull” and the numbers “007”. Therefore, the Complainant believes that the Respondent registered the disputed domain name to create the misleading impression of being associated with the Complainant in order to try to exploit the fame and reputation of the Complainant’s trademarks. The Complainant argues that the only reason for this behavior was, to attract to the Respondent’s website Internet users looking for information on the Complainant and its activities and divert them from legitimate websites of the Complainant. For all this, the Complainant holds that the Respondent has registered and is using the disputed domain name illegitimately.
The Complainant alleges also that the Respondent registered the disputed domain name and is using it in bad faith.
The Complainant believes that given the notoriety of the Complainant’s RED BULL trademarks, the Respondent must have been aware of them when it registered the disputed domain name. Furthermore, the Respondent did not cancel the disputed domain name when it became aware of the fact that such domain name was infringing the Complainant’s trademark rights.
The Complainant adds in this context, that the Respondent in reply to the Complainant’s cease and desist letter offered the disputed domain name for sale for an amount of Euro 10.000,-- which exceeds its out of pocket costs.
The Complainant explains further that the Respondent’s intention, to register and use of the disputed domain name was to attract Internet users to its website. The disputed domain name was designed by the Respondent to cause confusion with the Complainant’s trademarks and to attract Internet users who are looking to the Complainant’s products and activities in order to disrupt the Complainant’s business by diverting such Internet users away from the Complainant’s websites.
The Complainant argues further that the creation of landing pages in order to disrupt its business constitutes use of the disputed domain name in bad faith and refers to Mpire Corporation v. Michael Frey, WIPO Case D2009-0258 and Asian World of Material Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415, to support its arguments. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the domain name can be transferred only where the Complainant has proven that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the term RED BULL. The disputed domain name is not identical to the Complainant’s mark, however, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark. In accordance with many decisions rendered under the Policy, the addition of descriptive terms or numbers to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565 and Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002.)
In this case, the numbers “007” are an arbitrary combination of three numbers. Consumers may relate them to the movie figure James Bond (“James Bond 007”). However, given the notoriety of the Complainant and its products which are well known worldwide it is more than likely that the disputed domain name would be understood by Internet users finding on search engines or elsewhere as providing a link to a website belonging to the Complainant or least being sponsored by the Complainant and thereby increases the likelihood of confusion. The Complainant’s products are from time to time placed in movies in the context of so-called ambush marketing campaigns. It cannot be excluded that they have been displayed in James Bond Movies or that scenes of James Bond have been used in the context of advertising the Complainant’s products. Furthermore, the addition of the “007” – numbers could be understood by consumers that the Complainant offers a special range of Red Bull energy drink products which promise to provide consumers with even more “energy” than normal Red Bull products pretend to do (see also Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956; Koninklijke Philips Electronics N.V. v. Anpol,WIPO Case No. D2001-1151, and Koninklijke Philips Electronics N.V. vs. Jaaska (or Jääskä) Kaketti,WIPO Case No. D2001-0231).
In addition, the “.com” suffix in the disputed domain name does not affect the determination that the disputed domain name is confusingly similar with RED BULL in which the Complainant has trademark rights (see also Compagnie Générale des Etablissements Michelin v. Trending,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein).
For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, the Panel finds that there is no sufficient evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark.
Furthermore, while it is conceivable that, notwithstanding the legitimate interest of the Complainant, Respondent could also have a legitimate interest in that same name, for example given that the Respondent’s business is connected to the disputed domain name or assuming that the Respondent was not aware of the Complainant’s name, such a construction is not reasonable in this particular case. Given the Complainant’s worldwide interests in the trademark RED BULL, it is unlikely that the Respondent was unaware of the Complainant both before registering the disputed domain name, and especially once the respondent had begun to use it. It is also unlikely, that the Respondent conceived of such an unusual combination of words as “red” and “bull” quite independently of Complainant’s trademark in the particular circumstances (Red Bull GmbH v. Web Wax Designer,WIPO Case No. D2006-0746).
The Respondent has also not rebutted the Complainant’s allegations on the Respondent’s lack of rights and legitimate interests and has not provided the Panel with any explanations as to whether this is the case or not or whether there are indeed legitimate reasons for the choice of the disputed domain name. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see, e.g. E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc.,WIPO Case No. D2000-0554) by directing the disputed domain name to its own website, where it provides apparently a number of sponsored links, which relate to products and services of third companies. Depending on the frequency of the use of such links by Internet users getting directed to the relevant website, such links can generate a considerable amount of money to be shared between the concerned registrar and either the domain name owner or a third person. Given the reputation of the Complainant’s trademark, the Panel believes that the only reason why the disputed domain name has been directed to a website with pay-per-click links was, to capitalize on the reputation and goodwill established by the Complainant in order to redirect Internet traffic intended for the Complainant away from it to the website to which the disputed domain name resolves to create income.
In addition, the Respondent continued this behaviour even after the Complainant had sent a cease and desist letter to it.
The Panel has therefore serious doubts as to the legitimacy of the Respondent’s registration of the disputed domain name, and finds that the requirement of paragraph 4(a)(ii) of the Policy is also met.
The Panel has therefore serious doubts as to the legitimacy of the Respondent’s registration of the disputed domain name, and finds for the above reasons that the requirement of paragraph 4(a)(ii) of the Policy is also met. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which are evidence of bad faith registration and use of domain names:
(1) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) the Respondent has registered the disputed 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
(3) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 of a product.
However, according to the materials brought before the Panel, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that, to its knowledge the registration of the disputed domain name will not infringe the rights of any third party.
Given the notoriety of the Complainant due to its immense presence in the media and its products, the Panel finds that the Respondent must have been well aware of the Complainant’s trademark and its products when it registered the domain name (see, Liseberg AB v. Administration Local Manage Technical,WIPO Case No. D2003-0864).
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.
The Respondent registered the disputed domain name, which fully contains the Complainant’s trademark RED BULL. Given the fact that the Complainant is a well-known company in the field of energy drinks and in organising events in the field of sport, it is very likely that Internet users believe that they get directed to a website of the Complainant. The Complainant’s products are also placed in movies in the context of so-called ambush marketing campaigns. In cannot be excluded that they have been displayed in James Bond Movies or that scenes of James Bond have been used in the context of advertising the Complainant’s products. Furthermore, the addition of the “007” – numbers could be understood by consumers that the Complainant offers a special range of Red Bull energy drink products which promise to provide consumers with even more energy than normal Red Bull products pretend. All this could lead Internet users to believe that this website is either maintained by the Complainant or by a third person who is somehow linked with the Complainant and that everything they do will be at the end to the benefit of the Complainant and not of the Respondent.
The Panel believes that the Respondent may benefit directly or indirectly from such confusion, for instance, by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal or on a link (see also Humana Inc. v. Domain Deluxe,WIPO Case No. D2005-0231). Furthermore, the Respondent’s behaviour may also enable others, the owners of the websites which are linked with the website to which the disputed domain name resolves, to take advantage of the fact that Internet users are directed to their website instead of the Complainant’s website. The only reason for this would be the use of the Complainant’s trademark rights by the Respondent which allows apart from the Respondent also third parties to reap the profit of such wrongful conduct (see also Luigi Lavazza S.p.A. Satoshi Shimoshita,WIPO Case No. D2011-1299; The Proctor & Gamble Company v. N,WIPO Case No. D2010-0357 and Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912). Therefore, the Panel believes that the only purpose of doing this was to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Furthermore, the Respondent replied to the first cease and desist letter sent by the Complainant by offering the disputed domain name for sale for a price which clearly exceeds the average registration cost for such domain name. In addition, the Respondent continued its bad faith use of the disputed domain names even after receipt of the Complainant’s cease and desist letter. Such behaviors are considered by this Panel as another proof of bad faith (see in this context also News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; see also Aktiebolaget Electrolux AB v. Domains by Proxy, Inc. / HSD LLC, Thomas Keith, WIPO Case No. D2010-0561).
Moreover, the Respondent has provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs information for the disputed domain name and those provided by the Registrar when it tried to contact the Respondent. However, the hardcopy version of the Complaint was returned because it could not be delivered and also the courier service provider could not reach the Respondent. Therefore, the Panel notes that the Respondent is in breach of the registration agreement (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) and may have given incorrect contact details to frustrate or at least to delay these proceedings.
Given all facts and circumstances of this case, the Panel finds therefore, that the disputed domain name was registered and is being used in bad faith. 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 transferred to the Complainant.
Christian Schalk
Sole Panelist
Date: May 3, 2013
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