The Complainant is Red Bull GmbH, Austria, represented by TALIENS, Germany.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc., United States of America / Nora O’Donnell, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2019. On July 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 23, 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 amended Complaint on July 26, 2019.
The Center verified that the Complaint together with the amended 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 July 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2019.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on August 30, 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 the manufacturer of the energy drink Red Bull and other energy drinks, which it commercializes worldwide. Red Bull was first sold in Austria in 1987 and since 1992 was sold internationally. Currently it is sold in 172 countries and its sales volumes have reached over 6.3 billion in 2017. The Complainant has invested heavily in marketing its products and has a YouTube channel. It also organizes sports and cultural events worldwide. The Complainant publishes a magazine entitled Red Bulletin.
The Complainant is the owner of the international registration no. 961854 for RED BULL registered on March 19, 2008, and US registration no. 4968853 registered on May 31, 2016. The Complainant is also the owner of the international registration no. 1321246 for RED BULLETIN registered on March 22, 2016, and US registration no. 4224516 registered on October 16, 2012.
The disputed domain name was created on May 22, 2019, and resolves to an inactive website.
The disputed domain name is being used to send fraudulent emails.
A cease and desist letter was sent to the Respondent, to which there was no reply. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights. The Complainant has registered the trademark RED BULL internationally in 184 countries. The Complainant also owns trademark registrations for RED BULLETIN. Prior UDRP decisions have established that the trademark RED BULL is renown worldwide. The disputed domain name contains the word marks RED BULL in their entirety as well as the trademark of the Complainant RED BULLETIN followed by the term “mag”, which is the abbreviation of magazine and is hence a descriptive element. RED BULLETIN is recognizable in the disputed domain name and the addition of “mag” does not eliminate the confusing similarity. On the contrary, it reinforces the confusing similarity given that the Complainant publishes a magazine under the trademark RED BULLETIN. The generic Top-Level Domain Name (“gTLD”) “.com” should be ignored for the purposes of this test.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized the Respondent the use of its trademarks. It is not reasonably conceivable that the Respondent could have any rights or legitimate interests in the disputed domain name. The Respondent cannot assert that he was using or had made demonstrable preparations to use the disputed domain name with respect to a bona fide offering of goods or services nor that he is making a legitimate noncommercial or fair use of the domain name. He has in fact used the disputed domain name to pass himself off as an employee of the Complainant. The domain name resolves to an inactive website. The Respondent cannot claim that he is commonly known by the disputed domain name given that the name of the owner of the disputed domain name is shielded by a privacy service.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s marks. Furthermore, the disputed domain name is used for an illegal activity. The Respondent knew of the Complainant’s trademarks as he attempted to pass himself off as an employee of the Complainant. The following additional elements confirm bad faith; 1. RED BULL is well-known worldwide, 2. Failure to respond to the cease and desist letter, 3. The use of privacy service, 4. Failure to submit a response to the complaint, 5. Implausibility of any actual or contemplated good faith use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant holds a number of trademark registrations for the trademark RED BULL and RED BULLETIN. The Panel is satisfied that the Complainant has established its ownership of the trademark RED BULL and RED BULLETIN.
The disputed domain name comprises the Complainant’s trademark RED BULLETIN in its entirety followed by the abbreviation of magazine “mag”, which does not eliminate the confusing similarity with the trademark RED BULLETIN (if compared with the trademark RED BULL, the Panel would find the disputed domain name confusingly similar to the trademark). The Complainant’s trademark is clearly recognizable in the disputed domain name. Further, the addition of “mag” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
The gTLD “.com” is typically ignored when assessing confusing similarity as held by prior UDRP panels.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Pursuant to the Complainant’s contestations set out above, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name, which is allegedly used by the Respondent to send out fraudulent emails.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The element of bad faith is evidenced by the fact that the Complainant has been commercializing its products under the trademark RED BULL internationally for about 27 years before the Respondent registered the disputed domain name. Furthermore, the RED BULL trademark is a famous trademark. Additionally, the Complainant publishes a magazine under the trademark RED BULLETIN, which the Respondent has incorporated into the domain name while adding to it the term “mag”. Hence, it must be that the Respondent was aware of the Complainant, its trademarks and its magazine when he registered the disputed domain name. Considering the circumstances of this case, another indication of bad faith is the use of a privacy service and the fact that the disputed domain name resolves to an inactive website.
The Respondent did not respond to the Complainant’s cease and desist letter nor has he provided a response to the Complaint demonstrating actual or contemplated good faith use. In addition, the Respondent has sent out a fraudulent email in an attempt to pass itself off as the Complainant’s deputy editor of the magazine Red Bulletin which evidences the bad faith. Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied 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 disputed domain name be transferred to the Complainant.
Nayiri Boghossian
Sole Panelist
Date: September 3, 2019
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