The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Everton David da Silva of São Jose dos Campos, São Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with Universo Online S/A (UOL) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2014. On August 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant provided a clarification on August 20, 2014.
On August 19, 2014, the Center informed the Parties that the Complaint has been submitted in English and that the language of the registration agreement for the disputed domain name, as confirmed by the Registrar, was Portuguese. Thus, the Center requested the Complainant to either (1) provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or (2) submit the Complaint translated into Portuguese; or (3) submit a request for English to be the language of the administrative proceedings. On August 20, 2014, the Complainant requested English to be the language of the proceedings, to which the Respondent has not replied.
On August 19, 2014, the Center received two email communications from the Respondent (the content of which is reproduced under section 5.B. below), indicating, inter alia, its willingness to transfer the disputed domain name.
On August 20, 2014, the Center acknowledged receipt of the Respondent’s email communications and informed the Complainant of the possibility to submit a suspension request to explore settlement options between the Parties. On August 25, 2014, the Complainant confirmed that it did not intend to submit a suspension 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 in both English and Portuguese, and the proceedings commenced on August 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2014.
On August 29, 2014, the Center received two email communications from the Respondent (the content of which is reproduced under section 5.B. below). The Response was filed with the Center on August 29, 2014.
On September 11, 2014, the Complainant requested a suspension of the administrative proceedings, which was formally suspended by the Center as of September 12 until October 12, 2014. Nonetheless, on October 6, 2014, the Complainant requested the re-institution of the administrative proceedings. In accordance with the Rules, the administrative proceedings were re-instituted on October 7, 2014. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on October 13, 2014.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on October 28, 2014. 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 is one of the largest worldwide producers of energy drinks. The Complainant is the producer of the well-known Red Bull energy drink, which was first sold in Austria in 1987 and internationally since 1992. Currently, the Red Bull energy drink is sold in 159 countries worldwide and the Complainant has sold over 5.2 billion serving units globally in 2012 and over 1.9 million units in the United States of America in 2012. The RED BULL marks are protected in 207 jurisdictions worldwide.
Since its launch in 1987, the Complainant’s marketplace penetration was focused in media advertising, namely, TV, cinema and radio. Already in 2012, the Complainant had invested billions of euros worldwide with such advertising. As a result, the brand has become a leader in all its markets.
The Complainant organizes various sports events, which capture a massive media and public attention. Examples of these events are: (i) the Red Bull Stratos project, which was watched by millions of people around the world on television broadcasts, internet, youtube live stream, and social networks; (ii) the Red Bull X-Fighters, a freestyle motocross contest between 12 riders, which attracts thousands of spectators and is transmitted via TV to more than 60 territories; (iii) the Red Bull Flugtag, which also attracts thousands of spectators; and (iv) the Red Bull Music Academy, in which a mix of students from 32 different countries participate.
Another essential part of the Complainant’s marketing activities is sponsorship of sports events, in particular the Formula One Racing. The Red Bull racing team has won, in 2010, 2011, 2012 and 2013, the World Constructor’s (WCC) and Drivers Championship Title. The Complainant has also taken on, in 2005, the role as football club FC Red Bull Salzburg’s main sponsor, and, in 2006, the Complainant became the main sponsor of New York’s New Jersey’s Major League Soccer team, re-naming it Red Bull New York.
This involvement in sports and other events, associated with the investment of billions of euros in advertising and marketing, has contributed to make the mark RED BULL well-known all over the world.
The Complainant is, therefore, the owner of multiple trade mark applications and registrations consisting of or containing the words “Red Bull”. These applications and registrations cover an extensive range of goods and services. The Complainant is also the registrant of a large number of domain names containing the mark RED BULL, both under generic and country code Top-Level Domains (gTLD and ccTLD, respectively). The Complainant operates its main website under the domain name .
The Respondent is the owner of the disputed domain name , having registered it on January 28, 2014. The disputed domain name incorporates the RED BULL mark in its entirety.
The Complainant sent a cease and desist letter to the Respondent on May 15, 2014 and two reminders on June 2, 2014 and July 1, 2014, to which the Respondent has never responded. 5. Parties’ Contentions A. Complainant
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:
1. The disputed domain name is confusingly similar to a mark in which it has rights, referring to the extensive range of goods and services that spans all 45 trademark classes. The Complainant asserts that it and its subsidiaries hold national and international trademark registrations or applications consisting of or containing the mark RED BULL in Austria and further 206 jurisdictions worldwide, notably in Brazil. The Complainant further states that the words “Red Bull” are contained within the disputed domain name and that the addition of the term “station” does not diminish the confusing similarity between the disputed domain name and the Complainant’s trademark.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent had not been licensed or otherwise permitted to use the Complainant’s trademark or any variations thereof by the Complainant, it is not commonly known by that name, and it has no rights or legitimate interests for registering the Complainant’s mark as its domain name. The Complainant further alleges that nobody would legitimately choose the combination of “red” and “bull” or any variation thereof, unless seeking to create an association to the Complainant, on an attempt to exploit the fame and reputation of the Complainant’s trademarks.
3. The Respondent has registered and is using the disputed domain name in bad faith. The Complainant points out that the trademark RED BULL is a well-known trademark all over the world and that the Respondent must have been aware of this fact when it deliberately registered the disputed domain name. The Complainant adds that the Respondent’s obvious intent was to misleadingly divert the consumers to the website at the disputed domain name, causing confusion among consumers in the way of creating the impression of relation with the sponsorship or endorsement of the Respondent by the Complainant. According to the Complainant, it is apparent that the intent of the Respondent was to exploit the reputation of the Complainant and the RED BULL trademarks. In conclusion, the Complainant argues that the Respondent is using the disputed domain name in bad faith and, in particular, that the disputed domain name was registered and is being used for gaining profits from the creation of likelihood between its activity and the activity of the Complainant. B. Respondent
The Respondent sent informal email communications on August 19, 2014 and August 29, 2014, in English and Portuguese, indicating that it registered the disputed domain name in good faith, because it believed it would not cause any problem. On said communications, the Respondent declares that it would let the registration expire and that it would be willing to transfer the disputed domain name to the Complainant.
Further, on August 29, 2014, the Respondent submitted a Response to the Center, stating that it would give back the disputed domain name to the Complainant and that it would let the Complainant use the disputed domain name until its expiration. 6. Discussion and Findings I. Preliminary Issue: Language of the Administrative Proceedings
In accordance with paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
On August 19, 2014, the Center informed the Parties that the Complaint has been submitted in English and that the language of the registration agreement for the disputed domain name, as confirmed by the Registrar, was Portuguese. Accordingly, the Center requested the Complainant to either (1) provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or (2) submit the Complaint translated into Portuguese; or (3) submit a request for English to be the language of the administrative proceedings. On August 20, 2014, the Complainant requested English to be the language of the proceedings, to which the Respondent has not replied.
The Complainant alleges that it is an Austrian company, with no knowledge of Portuguese and, therefore, if the Complainant was obliged to submit all documents in Portuguese, it would be unduly delayed. The Complainant further argues that all pre-Complaint communications between the Complainant and the Respondent was exchanged in English and that it is highly likely that the Respondent is familiar with the English language, as it is one of the most popular languages in the world.
The Panel notes that, in fact, the language of the registration agreement is Portuguese. However, and despite the fact that the administrative proceedings were conducted both in English and Portuguese, and that the Respondent had the opportunity to oppose to the Complainant’s request for English to be the language of the administrative proceedings, the Respondent has not done so.
In addition, the Panel notes that one of the Respondent’s email communications of August 19, 2014 and part of the Response filed on August 29, 2014 are in English, thus evidencing that the Respondent has had no difficulty in understanding the Complainant’s contentions.
For the above stated reasons, the Panel decides that the language of the proceedings is English, and accordingly, the decision will be rendered in English. II. Substantive Elements of the Policy
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant establishes 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 conditions in paragraph 4(a)(i) that the Complainant must meet: first, that it has “rights in a trade or service mark”, and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.
The Complainant provided evidence that it has prior registered rights in the mark RED BULL around the world, including in Brazil, where the Respondent is located. From the evidence on the record, the Panel finds that RED BULL is a well-known mark, at least in relation to energy drinks, and that the Respondent simply added the term “station” to the Complainant’s trademark. Therefore, the Panel finds that the first condition of paragraph 4(a)(i) of the Policy is met, in line with other previous UDRP decisions (see Red Bull GmBH and Red Bull AG v. ec aka 3.taiwan,WIPO Case No. D2013-1250; and Red Bull GmBH v. Affiliate Master,WIPO Case No. D2013-0804).
In respect to the second condition of paragraph 4(a)(i) of the Policy, the disputed domain name incorporates the Complainant’s RED BULL trademark in its entirety. The addition of the term “station” does not prevent or mitigate the confusion between the disputed domain name and the Complainant’s trademark, because, as ruled in Arthur Guiness Son &Co. (Dublin) Limited v Dejan Macesic,WIPO Case No. D2000-1698, by the time Internet users arrive at the website, they have already been confused by the similarity between the disputed domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s website.
Thus, the Panel finds that the first element of the Policy has been satisfied. B. Rights or Legitimate Interests
Following Terroni Inc. v. Gioacchino Zerbo,WIPO Case No. D2008-0666, in order for a complainant to prove that a respondent has no rights or legitimate interests in the disputed domain name, previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case (see, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Limited,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent, who must demonstrate its rights or legitimate interests in the domain name to the panel.
Three non-exhaustive circumstances are identified to assess the existence of rights or legitimate interests: (i) bona fide prior use of the disputed domain name; (ii) common association with the disputed domain name; and (iii) legitimate noncommercial use of the disputed domain name.
It is clear to the Panel that, in this case, there is no evidence that the Respondent has ever been known by the disputed domain name, which demonstrates that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the RED BULL mark in a domain name or in any other manner.
Since the Respondent is using the disputed domain name solely in connection with a website, it is apparent that the only reason the Respondent registered and is using the disputed domain name is that it knew of and wanted to trade on Complainant’s fame and not for any legitimate no commercial or fair use purpose (see, Chinmoy Kumar Ghose v. ICDS & Maria Sliwa,WIPO Case No. D2003-0248).
As ruled in Red Bull GmBH v. Affiliate Master,WIPO Case No. D2013-0804, it is clear to the Panel that the Complainant has made a prima facie case that none of the above mentioned three circumstances apply. It is also evident, from the several email communications and the Response filed by the Respondent, that the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the second element of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy 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 the respondent has registered or has 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;
(ii) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to his 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 your website or location or of a product or service on his website or location.”
As previous UDRP panels have decided, and given the established well-known identity of the RED BULL trademark for energy drinks, the Panel finds it very likely that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name. It is established by previous UDRP panels that there is bad faith when the complainant’s trademark was shown to be well-known or in wide use at the time of registration of the domain name (see SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092; and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
Additionally, the Panel finds it apparent that the intention of the Respondent was to take advantage of the reputation of the Complainant and its trademarks, attracting Internet users to the website at the disputed domain name, by causing an erroneous association with the Complainant, its activities and products.
As decided in Société pour l’Oeuvre et la Memóire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v Perlegos Properties,WIPO Case No. D2005-1085, registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
Therefore, the Panel finds that the third element of the Policy has been satisfied. 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.
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: November 7, 2014
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