The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / David Snodgrass of Kansas City, Missouri, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2017. On March 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2017, the Registrar transmitted by email to the Center its verification response confirming, inter alia, that:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the registration agreement is in English;
(d) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 March 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 3, 2017. 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 well-known energy drink Red Bull, which it first started to sell in Austria in 1987. The Complainant began selling its Red Bull energy drink internationally in 1992. It is currently sold in 171 countries around the world.
According to the Complaint, the Complainant sold 113 million units of the Red Bull energy drink in 1994, rising to over 5.9 billion units in 2015. In the United States, the Complainant sold approximately 1.6 billion units in 2011 and over 2.2 billion units in 2015. The Complainant says it has spent over EUR 626 million on media marketing worldwide in 2015. In the United States, its media marketing expenditure was approximately EUR 70 million in 2011 with an overall marketing expenditure in the United States that year of EUR 300 million. In 2015, its media marketing expenditure in the United States was more than EUR 128 million and its overall marketing expenditure exceed EUR 480 million.
In addition to its media marketing expenditure, the Complainant’s promotional activities include organizing many sporting, music, fashion or cultural events. It also participates in the Dakar Rally Race, Formula 1 racing and organizes the Red Bull “Flugtag” (or Flight Day) and sponsors the ice Cross Downhill World Championship, the Red Bull X-Fighters, the Red Bull Air Race World Championship, Red Bull Cliff Diving and numerous other events. The RED BULL YouTube channel has had over 1.3 billion views since it was established and its Facebook page has over 47 million fans.
The Complainant also has an extensive and valuable program of merchandising associated with its trademark, RED BULL.
Amongst its many domain names, the Complainant has registered which, amongst other things shows footage of RED BULL sponsored events from around the world.
The Complainant has registered numerous trademarks around the world. For present purposes, it is sufficient to refer to:
(a) International Registration Number 961854, RED BULL, registered on March 19, 2008 for a wide range of goods and services in International Classes 25, 28, 32, 41 and 43;
(b) United States Registered Trademark Number 3092197, RED BULL, registered on May 16, 2006 in respect of non-alcoholic beverages in International Class 32;
(c) International Registration Number 945573, RED BULL and two charging bulls logo, registered on August 16, 2007 in respect of a wide range of goods and services in International Classes 6, 9, 11, 12, 16, 18, 19, 20, 21, 22, 24, 25, 27, 28, 32, 33, 35, 41 and 43 which, amongst the designated countries, includes the United States.
The disputed domain name was registered on December 13, 2012 using the proxy service “Registration Private, Domains by Proxy”. Given the Registrar’s confirmation that the second named respondent is the person who registered the disputed domain name through the proxy service, the Panel will simply refer to the Respondent below unless it is necessary to distinguish between the two.
For some time, the disputed domain name resolved to a website which the Complainant says displayed the Complainant’s registered trademarks, United States Registration Number 3051994 and International Trademark Registration Number 1201793. Of particular relevance in the present context, the website prominently stated “We’re Taking a HUGE Panaromic Photo of the Audience at Red Bull Thre3style MASSIVE in Houston!”. The webpage also invited users to register to “win four suite tickets to an upcoming Houston Rockets game!”
At the time the Complaint was filed, the disputed domain name resolved to a YouTube website showing a film “Benny the Bull Kiss Cam Steal’s Celtic’s Fan Girlfriend – FULL VIDEO”. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
No response has been filed. The Complaint has been notified, however, to the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly notified to the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the registered trademarks referred to in Section 4 above. In addition, the Panel considers that the extent of sales and promotion of the RED BULL trademark by the Complainant is more than sufficient to qualify the trademark as widely known in many countries around the world.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of bad faith are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the “.com” gTLD, the disputed domain name differs from the Complainant’s trademark solely by the addition of the letters “cam” as a suffix.
The Complainant’s trademark is incorporated in whole and is fully recognizable in the disputed domain name. In such circumstances, Panels routinely find sufficient resemblance for the purposes of the Policy: Advance Magazine Publishers Inc v. Pavel Dneprov,WIPO Case No. D2011-0771. As the Complainant points out, the letters “cam” are likely be recognized by many people on the Internet as an abbreviation for “camera” or “webcam’, a linkage which is all the stronger from the extensive use and recognition of the Complainant’s own domain name. The addition of such a term does not remove the visual and aural resemblance of the disputed domain name to the Complainant’s trademarks: WIPO Overview 2.0, paragraph 1.9. On the contrary, given the Complainant’s own use of , it exacerbates the resemblance.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. On the other hand, the Complainant’s trademarks have been in use for many years before the Respondent registered the disputed domain name and the evidence indicates that the Complainant’s trademark was widely known in the United States (where the Respondent is located), in particular, when the disputed domain name was registered.
All of these factors combine to provide a sufficient basis to find a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Panel notes that the disputed domain name currently resolves to a website which features a Youtube video, “Benny the Bull Kiss Cam Steal’s Celtic’s Fan Girlfriend – FULL VIDEO”. The “bull” in the video, is a sports team’s mascot, the Chicago Bulls. “He” is also red. As indicated above in Section 4, the history of the use of the disputed domain name, however, shows that the disputed domain name was not registered to “follow” the mascot’s “adventures” at a sports game. The Panel, therefore, has no hesitation in finding that the subsequent usage is merely pretextual. The earlier uses do not appear to have been a good faith offering of goods or services. In this context, the current form of use is not a legitimate noncommercial or fair use for the purposes of the Policy.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The worldwide notoriety of the Complainant’s trademark and, for present purposes, its extensive use particularly in the United States make it highly unlikely that the disputed domain name was adopted without knowledge of the Complainant’s trademark. The statement about taking “a HUGE Panaromic Photo of the Audience at Red Bull Thre3style MASSIVE in Houston” prominently displayed on the previous version of the website provides a strong inference that the Respondent did in fact have actual knowledge of the Complainant’s trademark.
For the reasons set out in Section 5B above, the Respondent has been found not to have rights or a legitimate interest in the disputed domain name. In addition, the term “red bull” does not appear to have any connection with the Houston Rockets. It appears therefore that the Respondent registered the disputed domain name to take advantage of its significance as the Complainant’s trademark. That qualifies as registration in bad faith under the Policy. The way the Respondent has been using the disputed domain name since registration has not been in good faith. Accordingly, the Complainant has established the third requirement under the Policy. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: April 17, 2017
Full & Egal Universal Law Academy