The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Shen Xingyu of Qinhuangdao, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with A Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2019. On March 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 14, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 15, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 19, 2019.
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 March 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2019.
The Center appointed Olga Zalomiy as the sole panelist in this matter on April 26, 2019. 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, which is well known worldwide as a manufacturer of the Red Bull energy drinks. The Complainant holds trademark registrations for the RED BULL and FLUGTAG trademarks, such as:
- International Registration No. 961854 for the RED BULL mark registered on March 19, 2008;
- International Registration No. 1108568A for the RED BULL word and design mark registered on May 5, 2011;
- The United States of America trademark registration No. 4968853 for the RED BULL mark registered on May 31, 2016; and
- International Registration No. 1250256 for the FLUGTAG mark registered on March 26, 2015.
The Respondent registered the Domain Name on September 6, 2018. The Domain Name does not direct to any active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is an Austrian company, which is a well-known worldwide manufacturer of energy drinks under the well-known RED BULL trademark.
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s trademarks because it incorporates the Complainant’s well-known RED BULL trademark and “ucusgunu”, the Turkish translation of the Complainant’s FLUGTAG trademark. The Complainant asserts that the generic Top-Level- Domain (“gTLD”) “.com” should be excluded from assessment of confusing similarity between the mark and the Domain Name.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register any domain names incorporating any of the Complainant’s trademarks. The Complainant argues that the combination of the words “red” and “bull” is fanciful. The Complainant also states that the term “ucus gunu” means “flight day” in Turkish, which is the Turkish equivalent of the Complainant’s trademark FLUGTAG. The Complainant contends that the Respondent is not commonly known by the Domain Name. The Complainant claims that the Respondent is not making a legitimate use of the Domain Name.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant claims that the registration and use of the Domain Name that incudes the Complainant’s famous RED BULL mark and the Turkish translation of the Complainant’s FLUGTAG trademark constitutes bad faith of the Respondent. The Complainant contends that the Respondent must have had knowledge of the Complainant’s rights in the RED BULL and FLUGTAG marks because the Complainant’s trademarks are unique. The Complainant argues that there can be no good faith use of the Domain Name by the Respondent. The Complainant claims that the Respondent’s non-use of the Domain Name would not prevent a finding of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of these elements regarding the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant must prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Under section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. The Complainant satisfied the standing requirement in this case by submitting evidence of ownership of the RED BULL and FLUGTAG trademarks.
The Domain Name consists of the Complainant’s RED BULL trademark, the word “ucusgunu”, which is a Turkish translation of the FLUGTAG trademark, and the gTLD “.com”. Where a domain name incorporates the entirety of a trademark or translation of a trademark and where the relevant marks are recognizable in the domain name, the domain name will normally be considered confusingly similar to the marks for purposes of UDRP standing.1 Because the RED BULL and the FLUGTAG trademarks are recognizable within the Domain Name, the Domain Name is confusingly similar to the Complainant’s trademarks.2 “The applicable gTLD in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”3 The Panel finds that the Domain Name is confusingly similar to the Complainant’s RED BULL and FLUGTAG trademarks.
Thus, the Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests
To satisfy the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.4
The following circumstances, in particular, but without limitation, if found by the panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii):
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
First, the Complainant alleges, and the Respondent does not contradict, that the Respondent has not been commonly known by the Domain Name. The Respondent provided no evidence that the Respondent owns trademark registrations or registered a business under the Domain Name. The WhoIs information on file shows that the Respondent identified itself as Shen Xingyu.
Second, the Respondent has not been using the Domain Names in connection with a bona fide offering of goods or services. The Complainant contends that it did not authorize the Respondent to use the Complainant’s RED BULL or FLUGTAG trademarks.
Third, the Respondent has not made or is not currently making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers within the meaning of paragraph 4(c)(iii) of the Policy, since the Domain Name, which incorporates the Complainant’s trademarks in their entirety, does not resolve to an active website.
The Panel therefore finds that the Complainant has made out a prima facie case regarding the Respondent’s lack of rights or legitimate interests in the Domain Name. Since the Respondent failed to rebut the Complainant’s case, the Panel holds that the second element of the UDRP has been satisfied. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The Panel finds that the Respondent registered the Domain Name in bad faith because it is inconceivable that the Respondent was not aware of the Complainant’s well-known RED BULL trademark at the time of the Domain Name’s registration. The Respondent’s inclusion of the Turkish translation of the Complainant’s FLUGTAG mark in the Domain Name along with the incorporation of the Complainant’s well-known RED BULL trademark, confirms the Respondent’s knowledge of the Complainant and its trademarks as well as, in the circumstances of this case, bad faith registration of the Domain Name.
Although the Domain Name does not resolve to any active websites, passive holding of the Domain Name does not prevent finding of bad faith. “[P]anelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”.5 Among the factors applied to passive holding doctrine are “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (the implausibility of any good faith use to which the domain name may be put”. 6 The following circumstances in this case support a finding of bad faith: (1) the Complainant’s RED BULL trademark is well-known around the world; (2) the Respondent failed to submit any response in this case or rebut the Complainant’s arguments. The Panel finds that there can be no plausible explanation for the Respondent’s choice of the Domain Name other than the Respondent’s intent to profit off the fame of the Complainant’s well-known RED BULL trademark. Moreover, the Panel finds that the Domain Name carries a high risk of implied affiliation.
Respondent’s pattern of targeting well-known marks is also among circumstances that panels may consider in determining whether respondent’s registration and use of domain names is in bad faith. “Previous UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration”7 . Here, the Respondent registered another domain name containing a well-known trademark on a prior occasion. Yves Saint Laurent, SAS v. shenxingyu,WIPO Case No. D2018-2589.
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been proved. 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.
Olga Zalomiy
Sole Panelist
Date: May 10, 2019
1 Sections 1.7 and 1.14, WIPO Overview 3.0.
2 Section 1.8, WIPO Overview 3.0.
3 Section 1.11.1, WIPO Overview 3.0.
4 Section 2.1, WIPO Overview 3.0.
5 Section 3.3, WIPO Overview 3.0.
6 Id.
7 Section 3.1.2, WIPO Overview 3.0.
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