The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Yung Jake of Los Angeles, California, United States of America (“United States”), represented by Mark Music & Media Law, P.C., United States. 2. The Domain Name and Registrar
The disputed domain name is registered with 101domain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2014. On November 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2014, 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.
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 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2014.
The Center appointed James A. Barker as the sole panelist in this matter on January 13, 2015. 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.
In January 2015, the Respondent’s representative made a number of communications to the Center, suggesting that the Respondent had either not received the Complaint or not recognized that it was legitimate. In response to these communications, the Panel issued the following Panel Order on January 26, 2015, in accordance with paragraph 12 of the Rules:
“The Respondent’s representative claims that ‘prior correspondence [from the Center] was either not received or understood to be legitimate if received.’
The case file indicates that the Complaint was sent to the Respondent by email and hard copy. There was no record of email failure to the address for the Respondent indicated in the WhoIs record for the disputed domain name (confirmed by the Registrar). The DHL records indicate that the hard copy Complaint was received at the Respondent’s address on December 10, 2014 (after two failures of delivery because the Respondent was not home). The Complainant also avers that a copy of the Complaint was also sent to the Respondent by email on November 19, 2014. The Panel considers there is sufficient evidence that the Respondent did receive the Complaint, as required by the Rules. The [Respondent’s] representative provides no explanation for otherwise thinking that the Complaint it received was not legitimate.
However, to avoid any doubt that the Respondent has had sufficient opportunity to respond, and taking into account that the date for the original Response was close to the Christmas holiday period, the Panel requests the Respondent to file a Response on or before February 2, 2015. The due date for decision is accordingly extended until February 6, 2015. In rendering a decision, the Panel will also take into account the failure of the Respondent to submit a Response by the due date, as required by the Rules.”
In response to this Panel Order, the Respondent filed a short response on February 2, 2015.
The Complainant made a Supplemental Filing on February 3, 2015, in response to the further submission from the Respondent. 4. Factual Background
The Complainant 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. The Complaint states that the RED BULL energy drink is sold in 159 countries worldwide and that the Complainant sold over two million units in the United States in 2013.
Since its launch in 1987, the Complainant’s advertising has focussed on TV, cinema and radio. In addition, it has sponsored a number of sporting and media events that have received worldwide coverage. 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 Complainant states that its investment in promotion of the RED BULL product had grown to over EUR 1.7 billion worldwide in 2013 and over EUR 367 million in the United States.
The Complainant is the owner of multiple trademarks for the words “red bull” on their own and with the accompanying two bull logo, including marks registered since 2003 on the principal register of the United States Patent and Trademark Office (“USPTO”). The Complainant is also the owner of a large number of domain names containing its mark. The Complainant points to previous decisions by UDRP panels which recognise that the Complainant’s trademark is famous and widely known all over the world, and is distinctive in a trademark sense.
The disputed domain name was registered on September 15, 2014. The Complainant provides evidence of a screenshot of the Respondent’s website as at November 19, 2014, which features a circular representation of human bodies. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is identical or confusingly similar to its trademarks because its mark is entirely incorporated in that domain name. The content of the Complainant’s website is irrelevant to this.
The Complainant also says that the Respondent has no rights or legitimate interests in the disputed domain name. No one would legitimately choose to use the combination of “red” and “bull” unless they were seeking to create an association with the Complainant. The Respondent has no legitimate connection with those terms.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant sent a “cease and desist” letter to the Respondent on September 14, 2014 and four reminders in September and October. The Respondent ignored this correspondence. The Respondent’s obvious intent was to attract Internet users who are looking for the Complainant’s products.
In response to the Respondent’s further filing (outlined below), the Complainant states that the Respondent’s arguments are irrelevant, as they do not disprove the Complainant’s contentions. The Respondent’s “art and social commentary” are not in any way connected with the Complainant or its products. B. Respondent
The Respondent did not submit a reply to the Complainant’s contentions within the time required by the Rules. In response to the Panel Order described above, the Respondent submitted a brief submission, stating only the following:
“The site in question is [] (the ‘Site’), a very commonly known and popular drink in the world. One of the ingredients is a specific mark owned by the Complainant, ‘redbull’ (the ‘Mark’) and the other is a generic trademark of ‘vodka’ which of course has no trademark. The use of these words together becomes a generic mark which also is not an enforceable mark at this point in time. It seems clear to me that the Site is not identical or confusingly similar to the Complainant’s Mark.
The Respondent is a successful and critical visual artist, based in Los Angeles. He has used the Site to showcase his art and social commentary in various forms; solely for artist purposes. The use of the Site’s name in the first place is social commentary and used as an artistic statement, not a commercial one. This is a [noncommercial] fair use of the Mark in issue for artistic statement and use and it is entirely without intent for commercial gain or to misleadingly divert consumers from the Mark or to tarnish the Mark. The Mark has never been used in bad faith and specifically has not and was not registered in any way for the purpose of selling, renting or otherwise transferring the Site registration to the Complainant at some point in the future or disrupting [the] Complainant’s business in any way or for any commercial gain from a likelihood of confusion between the Site and a representation of the Mark. The use of the Site has not Lastly, [sic] it is clear and obvious that the Complainant and the Respondent are not competitors in any way nor is the Site with any of [the] Complainant’s sites or various uses of their Mark. I ask that this case be dismissed and my client’s rights to the Site be confirmed.” 6. Discussion and Findings
To succeed, the Complainant must establish each of the following three matters under paragraph 4(a) of the Policy:
(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.
The Panel discusses each of these in turn (below), immediately after a consideration of the consequence of the failure of the Respondent to submit a response in accordance with the Rules, and the Supplemental Filing of the Complainant. A. Lack of Formal Response and the Complainant’s Supplemental Filing
As noted above, the Panel issued an order allowing the Respondent an opportunity to file a substantially late submission. In issuing that order, the Panel noted that it would take into account the failure of the Respondent to submit a response by the due date, as required by the Rules. The Respondent’s explanation for not submitting a response on time was that he either did not receive the Complaint, or if he did receive it, did not consider it legitimate. As noted in the Panel Order, the Panel finds this explanation unconvincing. The evidence in the case file indicated that the Respondent did receive the Complaint. Further, as mentioned in the Complaint, the Complainant sent a “cease and desist” letter to the Respondent, and followed it up with a number of reminders. The Complainant says it received no reply. When finally received, the Respondent’s submission added little to the Respondent’s representative’s email communications to the Center.
Separately, the Complainant has filed a further submission in reply to that submitted by the Respondent. That further submission was not sought by the Panel. The Complainant argued that this submission should be considered, because the Respondent’s further submission raised issues that the Complainant could not have foreseen in the Complaint. While the Panel considers that the original Complaint did broadly address these issues, the Panel has taken this further filing into account for completeness. While the original Complaint was broadly comprehensive, the Panel accepts that the Complainant cannot have anticipated the Respondent’s particular argument that he is using the disputed domain name in connection with “art and social commentary”. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy 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”. The Complainant has clearly established that it “has rights” in a trademark, by providing evidence of its registered rights for the mark RED BULL. Those rights have (as referenced by the Complainant) also been recognized in a number of past UDRP panel decisions.
The issue is then whether the disputed domain name is confusingly similar to the Complainant’s RED BULL mark (it is self-evidently not identical). The Respondent says that it is not, because the disputed domain name adds the word “vodka”. The Respondent says that this means that the term “redbull vodka” becomes generic. This argument has no merit. It is self-evident that the combination “redbull vodka” is not generic. The addition of a descriptive term to a well-known trademark does nothing to distinguish the mark. This is supported by a large number of previous decisions under the Policy, including decisions relating directly to the Complainant’s mark. For example, in Red Bull GmbH v. WhoisGuard / Bill Chau,WIPO Case No. D2012‑2353, the then panel had “no difficulty” in concluding that the Complainant’s mark was confusingly similar to .
The case for confusing similarity in this case is even stronger. The new generic Top-Level Domain “.vodka” and the Complainant’s mark are both associated with drinks. As such, the descriptive term “vodka” added by the Respondent is easily one that may increase the likelihood of confusion.
For these reasons, the Panel finds that the Complainant has established this first element. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. This paragraph requires the Complainant to, at minimum, present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. A prima facie case is one which appears credible on its face. Once the Complainant has made a prima facie case, the burden of production shifts to the Respondent to refute it. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant in this case has mounted a strong argument against the Respondent, and supported that case with evidence and argument. The Complainant’s argument is based on the allegation that the Respondent was never authorized to register and use the disputed domain name, and has used it only to benefit from a false association with the Complainant.
The Respondent denies this. He states that he is using the disputed domain name only in connection with artistic purposes.
The Panel can accept that the Respondent is a visual artist. But the Respondent provides no explanation about how the Respondent’s art is connected to his registration of the disputed domain name. Why did the Respondent choose to register in particular? He doesn’t say. Neither does the Respondent provide any direct evidence for his bare contentions in reply to the Complaint.
There is otherwise nothing in the Response, in the case file, or on the Respondent’s website, which suggests that the Respondent has a legitimate connection with the disputed domain name. There is no dispute that the mark RED BULL is distinctively associated with the Complainant. That mark is widely known. The Panel considers it very likely that the Respondent was aware of that mark. The Respondent’s choice to add “vodka” to that mark only supports this inference, for the reasons set out above.
For these reasons, the Panel considers that the Respondent has failed to sufficiently rebut the Complainant’s prima facie case against him. D. 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.
Relevantly, paragraph 4(b)(iv) of the Policy then provides that the following circumstance, 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 for the purpose of paragraph 4(a)(iii) of the Policy:
“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.”
The Respondent does not deny using the disputed domain name in connection with a website which apparently features his art. As the Respondent’s occupation is that of a visual artist, the Panel has inferred that the promotion of his art is (at least in part) something that is connected with a commercial gain. The Respondent has chosen a domain name that is confusingly similar to the Complainant’s mark. As noted above, the Complainant’s mark is well-known. The Respondent is very likely to be aware that Internet users might therefore be misled (at least initially) into thinking that there is some relationship between the disputed domain name and the Complainant’s mark. The Panel considers that this is sufficient to establish bad faith registration and use for the purpose of 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 transferred to the Complainant.
James A. Barker
Sole Panelist
Date: February 6, 2015
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