The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Nobuhiro Kidate, Slowdaysfactory, Inc. of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2016. On May 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2016, 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 of the Respondent.
On May 9, 2016, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On the same day, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
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 and 4, the Center formally notified the Respondent of the Complaint, in both English and Japanese, and the proceeding commenced on May 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on June 23, 2016. 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 the producer of the Red Bull Energy drink. It has licensed the use of RED BULL on various products. It is the proprietor of multiple registrations for the trademark RED BULL internationally, including international registrations that designate Japan dating back to 2005. The Complainant also owns the domain name . Particularly relevant to this case, the Complainant is the manager of an art place “Red Bull 381 Projects” in Toronto, Canada, which is named after the Red Bull’s address at 381 Queen Street West.
The disputed domain name was registered on December 30, 2015 by an individual in Japan.
The disputed domain name did not resolve to any page on the date when the Panel made this decision. Nevertheless, it previously resolved to a page displaying an article written in Japanese concerning credit card loans as evidenced by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
Identical or confusingly similar
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademark RED BULL. The disputed domain name contains RED BULL in its entirety as the distinctive part of the disputed domain name. The additional numeral “381” and English word “projects” are ordinary terms which do not diminish the initial confusing similarity. On the contrary, such addition even increases the confusing similarity between the disputed domain name and the Complainant’s trademarks since the Complainant does have an art place named “Red Bull 381 Projects” in Canada. The disputed domain name is therefore confusingly similar to the Complainant’s registered trademarks.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never been licensed or otherwise permitted to use the Complainant’s trademarks. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The disputed domain name was registered and used in bad faith: the Respondent must have had knowledge of the Complainant’s rights in its marks when it registered the disputed domain name, since the Complainant’s marks are unique and have been used for many years. Further, given that the disputed domain name comprises of the Complainant’s mark coupled with the name of its art place, it is highly unlikely that the Respondent would have chosen the disputed domain name randomly without knowledge of the Complainant and its mark.
The disputed domain name was used intentionally and misleadingly to attract consumers to the Respondent’s website, cause confusion among consumers, disrupt the Complainant’s business and exploit the Complainant’s reputation. The Respondent intended to create affiliation to the Complainant’s company, its activity and trademarks through using the disputed domain name.
Additionally, the Complainant claims it has requested the Respondent to abandon the disputed domain name via emails, but has not received any response. The Complainant contends that ignoring warning letters is also considered evidence of bad faith (citing Nintendo of America, Inc. v. Garrett N. Holland et al,WIPO Case No. D2000-1483). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
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 proceedings shall be the language of the Registration Agreement, i.e., the default language of this proceeding shall be Japanese. However, the Complainant requested the proceeding to proceed in English.
Below is a summary of the Complainant’s arguments on the issue of the language of proceedings.
(a) The Complainant is a German based, internationally operating company, but is not able to communicate in Japanese.
(b) The Respondent registered a domain name confusingly similar to internationally registered trademarks of the Complainant which triggered the proceeding at hand which – due to their international nature – should best be conducted in English.
(c) The Respondent has sufficient command in English, as indicated from its use of English wordings in registration of the disputed domain name and email address.
(d) Translating the Complaint from English into Japanese will result in additional, significant costs which will have to be incurred by the Complainant and will cause unnecessary delay in the proceeding.
The Center made a preliminary determination to:
(1) accept the Complaint as filed in English;
(2) accept a Response in either English or Japanese;
(3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Panel is not particularly persuaded by any reasons put forward by the Complainant. Nevertheless, there was also no objection made by the Respondent to the Center’s preliminary determination. In Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, this Panel decided that a respondent’s default in responding to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
Further, as set out below, the merits of this case are strongly in favour of the Complainant. Translating the Complaint into Japanese would cause unnecessary cost and delay in this matter.
These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English. 6.2 Substantive Elements of the Policy
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove the following three elements to make out a successful case:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; 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 disputed domain name is confusingly similar to the Complainant’s trademark RED BULL. The disputed domain name incorporates the Complainant’s RED BULL mark in full with the addition of numerals and a generic term. The disputed domain name is therefore confusingly similar to the Complainant’s registered trademark.
The first part of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights or legitimate interests. These are:
“(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.”
The Respondent has not responded to assert any rights or legitimate interests. Nor is it commonly known by the disputed domain name.
None of the circumstances in paragraph 4(c) of the Policy are, therefore, present in this case.
The second part of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered in bad faith and used in bad faith.
The disputed domain name was registered in bad faith: the Respondent clearly knew of the Complainant when it registered the disputed domain name – it comprises of not only the Complainant’s mark but also the name of its art place in Canada, which serves as strong evidence of the Respondent’s knowledge.
The disputed domain name has also been used in bad faith. This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
While the website under the disputed domain name does not appear to be related to the Complainant, the use of the disputed domain name can only have been intended to attract consumers to the Respondent’s website based on its promotion of particular bank loan services.
The third part of paragraph 4(a) of the Policy is, therefore, 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.
Douglas Clark
Sole Panelist
Date: July 11, 2016
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