The Complainant is Red Bull GmbH of Fuschl am See, Austria represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Sumio Tarukawa of Nara, Japan. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Go Canada Domains, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 24, 2015. On August 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 31, 2015, 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 not compliant with the word count limit, the Complainant filed an amended Complaint on September 14, 2015.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 6, 2015.
The Center appointed Haig Oghigian as the sole panelist in this matter on October 22, 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. 4. Factual Background
The Complainant is an Austrian company operating internationally. Its origins lie in the production of energy drinks, but it is also active in the media-sector, in the organization of cultural and sport events and in the fashion business. The Complainant states that it has been operating under the name "Red Bull" in Austria since 1987 and internationally since 1992. It is the holder of registered trademarks containing RED BULL in multiple jurisdictions worldwide, some of which date back to 2005.
The Complainant is the owner of multiple trademarks for the words "red bull" on their own and with the accompanying two bull logo. The Complainant is also the owner of a large number of domain names containing its marks. 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 Respondent registered the Domain Name on May 30, 2013. 5. Parties' Contentions A. Complainant
The Complainant requests that the Domain Name be cancelled.
The Complainant asserts that there is confusing similarity between the Complaint's trademarks and the Domain Name as (i) the Domain Name incorporates the mark RED BULL in its entirety and (ii) the addition of the word "381projects" refers to the Complainant's art, cultural and music place "Red Bull 381 Projects" in Toronto, Canada.
The Complainant also asserts that the Respondent has no rights or legitimate interests in the Domain Name as the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or variations thereof. The Complainant adds that (i) the Respondent is not commonly known by the Domain Name, "Red Bull" or "Red Bull 381 Projects"; (ii) the Respondent has registered the Domain Name to create the misleading impression of being in some way associated with the Complainant; and (iii) the website under the Domain Name presents articles about sex-related business information (and is therefore not a bona fide offering of goods and services).
Lastly, the Complainant asserts that the Domain Name was registered and is being used in bad faith as the Respondent has deliberately chosen a domain name with a connection to the Complainant's widely known marks to attract customers to the Respondent's website. The Complainant adds that the Respondent has not responded to repeated cease and desist emails – in both cases delivery was unsuccessful and the Complainant received "connection refused" replies, as it appears that the Respondent provided a fake email address when registering the Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the complainant to prove that the domain name is identical or confusingly similar to a trademark in which the complainant has rights.
The Domain Name contains RED BULL in its entirety, and "the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249. Further, the addition of "381projects" increases the confusing similarity between the Domain Name and the Complainant's trademarks.
For the above reasons, and in accordance with previous UDRP decisions, the Panel finds that the Domain Name is confusingly similar to the Complaint's marks. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- demonstrable preparations to use or use the domain name in connection with a bona fide offering of goods or services prior to the dispute (paragraph 4(c)(i));
- an indication that the respondent has been commonly known by the domain name even if it has acquired no trademark rights (paragraph 4(c)(ii)); or
- legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (paragraph 4(c)(iii)).
In this case, the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. It is clear on the given evidence that the Domain Name was registered long after the Complainant registered and started to use the Red Bull marks and began the Red Bull 381 Projects center. Further, there is no evidence that the Respondent has been or is commonly known by the Domain Name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name or any trademark confusingly similar thereto, as a domain name or for any other purposes.
Further, the Respondent's use of the Domain Name to direct consumers to a website that presents articles about sex-related business information does not provide a legitimate interest in the Domain Name when such Domain Name is similar to the Complainant's mark. See CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071.
Therefore, in the absence of any Response to rebut the Complainant's prima facie case, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name, and the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate the respondent's bad faith registration and use of the domain name. Such circumstances include:
- use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to the registrant's 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 the registrant's website or location or of a product or service on the respondent's website or location (paragraph 4(b)(iv)).
In the Panel's view, the Respondent must have had knowledge of the Complainant's rights in its marks when the Respondent registered the Domain Name, since the Complainant's marks are unique and have been used for many years. Further, given that the Domain Name is comprised of the Complainant's mark coupled with the name of the Complainant's music and cultural place, it seems highly unlikely that Respondent would have chosen this Domain Name randomly without knowledge of the Complainant and its mark. With regard to the international reputation of the RED BULL trademark the Panel is convinced that the Respondent knew of the mark, but still registered the Domain Name. The choice of the name was therefore intentional and not random. "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". Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties,WIPO Case No. D2005-1085. The RED BULL trademark is widely known and the Respondent has no connection to the Complainant, is not authorized and does not have a legitimate purpose to use the Complainant's trademarks.
Finally, the Panel finds that by fully incorporating the Complainant's trademark into the Domain Name and by using it in connection with a website that presents articles about sex-related business information, the Respondent falsely creates the impression that it is associated with the Complainant, such conduct disrupts the Complainant's business, and "represents 'opportunistic bad faith' under the Policy". Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix GroupCo.,WIPO Case No. D2000-0163. Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by 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 Domain Name be cancelled.
Haig Oghigian
Sole Panelist
Date: November 5, 2015
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