The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Lisa Coburn of Mobile, Alabama, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2018. On January 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with Domain Name. On January 12, 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. In response to a notification by the Center on January 15, 2018, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 16, 2018.
The Center verified that the Complaint together with the amendment to 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 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2018.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on February 26, 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. 4. Factual Background
The Complainant is a worldwide producer of RED BULL Energy Drink. It was first sold in Austria in 1987 and internationally since 1992. Currently, the RED BULL Energy Drink is sold in 172 countries all over the world. Its sales volume has grown from 113 million serving units in 1994 to over 6 billion worldwide in 2016. In the United States, the numbers rose from approximately 1.9 billion serving units in 2012 to over 2.3 billion serving units in 2016. In 2016, Red Bull invested over EUR 707.9 million worldwide in media marketing. The Complainant has also acquired reputation in the media sector and as the organizer of sport, music, fashion, and cultural events. In 2016, Red Bull organized 950 events in more than 80 different countries with approximately 510,000 participants. In March 2006, Red Bull became the first operator of a Major League Soccer team, RED BULL New York, commonly known as the “New York Red Bulls”. In March 2015, Red Bull began operating New York Red Bulls II, a United Soccer League professional team, with the RED BULL Arena as its home ground.
The Complainant is the owner of multiple registrations and applications of trademarks consisting of or containing the RED BULL mark and covering an extensive range of goods and services, such as:
- International Registration 961854 RED BULL with priority date September 27, 2007;
- United States Registration 3999209 RED BULL NEW YORK with priority date April 27, 2006;
- United States Registration 4578384 Double Bull Device with priority date January 24, 2013.
The Complainant runs the RED BULL channel on YouTube and it has reached a cumulative total of over 5.7 million subscribers. Red Bull videos received more than 522 million views on YouTube in 2016. Currently, Red Bull has more than 48.5 million fans on Facebook.
The Complainant is the Registrant of a large number of domain names containing the RED BULL mark, both under generic and country-code Top Level Domains, including domain names such as , , and .
According to the Registrar, the Respondent registered the Domain Name on September 29, 2016. The Domain Name currently resolves to an online shop purporting to be the “official online store of the New York Red Bulls”. 5. Parties’ Contentions A. Complainant
The Complainant provides trademark registrations, and submits with reference to former UDRP cases that its trademark is internationally famous. The Complainant argues that the Domain Name reproduces the Complainant’s trademark. The Complainant argues that the generic wording “shop” used in the Domain Name would not prevent a finding of confusing similarity. Likewise with the addition of the abbreviation of Major League Soccer (“mls”). The Domain Name does not provide additional specification or sufficient distinction from the Complainant or its mark. The addition of the letter “s” to the word “redbull” does not significantly affect the appearance or pronunciation. Hence, the Domain Name is confusingly similar to the Complainant’s trademark.
The Complainant argues that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant’s trademark. The Respondent has no prior rights or legitimate interests in the Domain Name. The Respondent is not making a fair or legitimate noncommercial use of the Domain Name. On the contrary, according to the Complainant, the Respondent has picked the Domain Name to create the misleading impression of being in some way associated with the Complainant. The Respondent is making an illegitimate use of the Domain Name, with intent to divert Internet users to its website and prevent the Complainant from exercising its rights to the trademark and managing its presence on the Internet.
As to bad faith, the Complainant argues that it is implausible that the Respondent was unaware of the Complainant when the Respondent registered the Domain Name. The Complainant is famous throughout the world. The Complainant’s mark is unique and it has been used for many years. Under the website “www.”, the Respondent conducts an unauthorized online-shop for clothing bearing Red Bull registered trademarks and trademarks related to the New York Red Bulls. By this use of the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, and affiliation of the Respondent’s website. Such use tarnishes the distinctiveness and reputation of the Complainant’s trademarks and it disrupts the Complainant’s business by diverting consumers away from the Complainant’s official domain names and websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark RED BULL. UDRP WIPO Panels have already stated in various cases that the Complainant’s trademark has a strong reputation and is known all over the world; see e.g. Red Bull GmbH v. Jinsoo Yoon,WIPO Case No. D2016-2351.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is confusingly similar to the Complainant’s trademark. Neither the addition of the dictionary words “team” and “shop”, nor the addition of “mls” for the Major League Soccer, provide sufficient distinction from the Complainant’s mark. The same is the case with the addition of the letter “s”. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (gTLD) “.com”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.
The Panel finds that the Domain Name is confusingly similar to trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing its trademarks or otherwise make use of its marks. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. As documented by the Complainant, the Respondent uses the Domain Name to operate an unauthorized online-shop for clothing bearing RED BULL registered trademarks and trademarks related to the New York Red Bulls.
The Respondent diverts consumers from the Complainant’s official websites. The evidence submitted by the Complainant shows that the Respondent targeted the Complainant’s Red Bull brands and sought to profit commercially from the domain name registration, offering seemingly “official” sports jerseys of the New York Red Bulls. As noted under Factual Background, the Domain Name resolves to an online shop purporting to be the “official online store of the New York Red Bulls”. This is neither a bona fide offering nor a legitimate noncommercial or fair use within the meaning of the Policy.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Taking into account the content of the Respondent’s web page, and the fact that the Complainant is famous throughout the world, it is likely that the Respondent was aware of the Complainant’s trademark and its business when the Respondent registered the Domain Name.
The Respondent is using the Domain Name to set up an unauthorized online-shop for clothing bearing RED BULL registered trademarks and trademarks related to the New York Red Bulls. By using the Domain Name this way, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, and affiliation. This Panel agrees with the Complainant that such use diverts consumers from the Complainant’s official websites. It constitutes bad faith pursuant to the Policy. The bad faith is supported by the fact that the Respondent has not responded to the Complainant’s contentions.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 transferred to the Complainant.
Mathias Lilleengen
Sole Panelist
Date: March 6, 2018
Full & Egal Universal Law Academy