The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Davies Collison Cave, Australia.
The Respondent is Daniel Cobb, CobbCorp Pty Ltd of South Melbourne, Australia. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 8, 2018. On January 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 9, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 9, 2018.
The Center appointed Edoardo Fano as the sole panelist in this matter on February 14, 2018. 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules. 4. Factual Background
The Complainant is Red Bull GmbH, a world-wide producer of energy drinks, active in sponsoring Red Bull named events, car racing competitions and football teams.
The Complainant owns more than 6,000 trademark registrations all over the world, including Australia, the majority of which consist of or include the words RED BULL, RED, BULL and RB.
The Complainant also owns many domain name registrations incorporating the wording RED BULL and the acronym FC, standing for "Football Club", for its activities in the field of football.
The Complainant provided evidence in support of the above.
In March 2017 newspapers and Internet articles announced the possibility that the Complainant was interested in owning or sponsoring a soccer team in Australia.
Shortly after that news, in April 2017, the Respondent registered the disputed domain names and created two Companies incorporating the Complainant's trademark RED BULL, in the name of which registered several domain names incorporating the Complainant's famous trademark RED BULL under the TLD ".".
The disputed domain names , , , , , , , , , , , , , , , , , , , , and were registered on April 9, 2017, the disputed domain names and were registered on April 12, 2017 and the disputed domain name was registered on April 19, 2017.
At the time of filing the Complaint, the disputed domain names were not active.
On May 9, 2017 the Complainant's lawyers sent a warning letter to the Respondent, asking for the cancellation of the disputed domain names, of the domain names under the TLD "." and the change of the name of the Red Bull Companies.
On June 15, 2017 the Respondent sent an email to the Complainant's lawyers stating that the registration of the disputed domain names was made in order to assist the entrance of the Complainant in the Australian soccer world: in case this assistance was not needed, the Respondent would have been happy to cancel the registration of the disputed domain names.
On July 20, 2017 the Complainant's lawyers sent a letter to the Respondent, with reminders being sent on August 2 and 23, requesting the cancellation or the transfer of the disputed domain names: the Respondent never replied. 5. Parties' Contentions A. Complainant
The Complainant states that the disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , and are confusingly similar to its trademarks RED BULL, RED, BULL and RB, as the words "aussie", "australia", "sydney", "melbourne", "western" and the letters "fc" are not sufficient to differentiate the disputed domain names from the Complainant's trademarks.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register the disputed domain names or to use its trademarks within the disputed domain names, nor is the Respondent commonly known by the disputed domain names.
The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant's trademark RED BULL is distinctive and well known all around the world and the Respondent registered the disputed domain names in order to propose a negotiation to the Complainant: therefore, the Respondent had knowledge of the Complainant's trademark at the time of registration of the disputed domain names.
When the Respondent was informed that the Complainant did not accept his proposal of collaboration and was asked to cancel or transfer the disputed domain names, the Respondent continued holding the disputed domain names, a conduct that amounts to use in bad faith. B. Respondent
The Respondent has made no reply to the Complainant's contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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. A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademarks RED BULL, RED, BULL and RB both by registration and acquired reputation and that the disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , and are confusingly similar to the trademarks RED BULL, RED, BULL and RB.
Regarding the addition of the words "aussie", "australia", "sydney", "melbourne", "western" and the letters "m" and "fc", the Panel notes that it is now well established that the addition of dictionary terms, acronyms or geographical terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the words "aussie", "australia", "sydney", "melbourne", "western" and the letters "m" and "fc" do not therefore prevent the disputed domain names from being confusingly similar to the Complainant's trademarks.
It is also well accepted that a generic Top-Level Domain ("gTLD") suffix, in this case ".com", ".org", ".info", ".mobi" and "store", as well as a country code Top-Level Domain ("ccTLD"), in this case ".me", may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. V,WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant's trademarks, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that "for the purposes of paragraph 4(a)(iii) of the Policy, 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [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 [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent'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 respondent's] website or location or of a product or service on [the respondent's] website or location."
Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant's trademark RED BULL in the field of energy drinks and as a sponsor of Red Bull named events, car racing competitions and football teams is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain names in order to negotiate a possible collaboration with the Complainant, as he actually did.
Regarding the use in bad faith of the disputed domain names, all pointing to inactive websites, the Panel considers that bad faith may exist even in cases of so-called "passive holding", as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith use since the Respondent, when informed by the representatives of the Complainant that the latter was not interested in any kind of collaboration with him, did not cancel or transfer the disputed domain names as he was asked but instead continued holding them.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) 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 names, , , , , , , , , , , , , , , , , , , , , , , , , and , be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Date: February 28, 2018
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