WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. ASTnA
Case No. DCC2004-0002
1. The Parties
The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Schönherr Rechtsanwälte OEG of Vienna, Austria.
The Respondent is ASTnA of Werfenweng, Austria.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 5, 2004. On March 5, 2004, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On March 8, 2004, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed additional annexes to the Complaint on March 31, 2004. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 7, 2004.
The Center appointed Peter Burgstaller as the sole panelist in this matter on May 13, 2004. 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, on May 12, 2004.
The Center sent a Transmission of Case File to the Administrative Panel by e-mail on May 13, 2004. The documentation was received in hard copy, together with a copy of a videotape and Annexes A - N by the Panel on May 14, 2004.
The language of the administrative proceeding is English.
4. Factual Background
The Complainant asserted, and provided evidence (Annexes A - N) in support of, and the Administrative Panel finds established, the following facts:
The Complainant is an Austrian company and the producer of the Red Bull energy drink. In 1987, the RED BULL energy drink was launched in Austria and is now distributed in 110 countries. The distribution of the energy drink is handled either through a Complainant wholly-owned subsidiary or by a distribution partner.
Currently, the Complainant has trademark registrations of or applications for the mark RED BULL and the double bull device or RED BULL word mark in 199 trademark jurisdictions worldwide.
From 1987 until 2002, the Complainant has spent more than €500 million in penetrating the marketplace in TV, cinema and radio. Apart from media, the trademark RED BULL is also used in other marketing materials (folders, flyers, packaging material, etc). By 2002, the Complainant had spent more than €1,3 billion on overall marketing activities. The Complainant, moreover, has been sponsoring the Formula One racing cars from the RED BULL SAUBER PETRONAS TEAM since 1995 and sponsored the motorcycle race team RED BULL YAMAHA WCM from 1997 to 2002. Both teams have been televised on a world-wide basis (Annexes G, H, L, M).
The Respondent is the Registrant of the domain name with Tucows Inc. as Registrar. Mr. Sepp Astner is registered as administrative contact (admin-c), with the same address as that of the Respondent; Mr. Bernd Hilmar is the technical contact (tec-c), located in Vienna. The domain name was first registered on June 5, 2001 (Annexes A, B).
The Respondent did/does not present its own website or another online presence under the domain name - it only points to the Complainant's main website.
The Respondent is not in any way related to the Complainant or its business; it is not known under the domain name at issue.
From August 2001 until September 2003, the Complainant sought to amicably resolve this matter. To transfer the domain name at issue to the Complainant, the Respondent requested, in addition to the transfer costs, a RED BULL leather jacket and some energy drinks. Although the Complainant offered these, the Respondent, in the end, did not sign the transfer papers (Annex J).
5. Parties' Contentions
A. Complainant
The disputed domain name is identical or confusingly similar to the various trademarks and trademark applications containing the mark RED BULL owned by the Complainant - the addition of a hyphen between two words and the suffix ".cc" are not distinguishing features.
The Respondent has no rights or legitimate interests in respect of the domain name; it is neither an agent nor otherwise permitted to use any of the Complainant's trademarks, nor is it in any way related to the Complainant.
The domain name in dispute was registered and is being used in bad faith by the Respondent. It is inconceivable that the Respondent would not be aware of this fact when registering the disputed domain - the Respondent "grabbed" the domain name . Although the domain name at issue points to the Complainant's main website, this does not change the Respondent's bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In addition to its role as dispute resolution service provider especially for the gTLDs ".com," ".net," ".org," ".info" and ".biz," the Center also provides domain name dispute resolution services for several country code (cc)TLDs, e.g., ".cc" (Cocos Islands) or .tv (Tuvalu). Having said this, the domain name at issue is under the scope of the Policy, Rules and Supplemental Rules.
Before scrutinizing the facts, it is worth noting, that (without claiming completeness) the Complainant already filed 12 cases concerning 17 domain names with the Center. Eleven cases (16 domain names) were decided in favor of the Complainant, one case is pending (Red Bull GmbH v. Marcus Bernhardt, WIPO Case No. DTV2001-0019; Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766; Red Bull GmbH v. Tony Marinelli, WIPO Case No D2001-0522; Red Bull GmbH v. Manuel Sousa, WIPO Case No. D2001-0584; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Red Bull GmbH v. Craig Jackson, WIPO Case No. D2002-0068; Red Bull GmbH v. Thomas Krupski, WIPO Case No. D2002-0185; Red Bull GmbH v. Redbulls Itc. Ltd, WIPO Case No. D2002-0541; Red Bull GmbH v. Bayer Shipping & Trading Ltd, WIPO Case No D2003-0271; Red Bull GmbH v. Joerg Helling, WIPO Case No. D2003-0351; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; Pending Case No. D2004-0280).
To make out a successful Complaint, it is the Complainant's burden to prove under paragraph 4(a) of the Policy that
(i) the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and
(ii) 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.
The Complainant must prove that each of these three elements is present, even though the Respondent did not reply.
A. Identical or Confusingly Similar
The Complainant has registered and applied for numerous trademarks in Austria and various other countries containing the words RED BULL (see Annexes L, M).
Apart from the suffix ".cc" forming part of the domain name and the hyphen between the words RED and BULL, there is no difference between the domain name in dispute and the Complainant's RED BULL trademarks:
- It is a principal which applies to UDRP Cases, that the addition of a gTLD does not affect the confusing similarity or identity between the domain name and the trademark; this principle was also repeated by previous panels with respect to the ccTLD ".cc," e.g., Motorola Inc. v. Zhoushanjeweldesign, WIPO Case No. DCC2002-0003; AT&T Corp v. Xinzhiyuan Management Consulting Co., Ltd., WIPO Case No. DCC2004-0001; Virgin Enterprises Limited v. Steve Peter H S Kok and James Tan, WIPO Case No. DCC2002-0001.
- Concerning the hyphen between the words RED and BULL, this Panel follows various previous Panel decisions, and especially the ruling in Red Bull GmbH v. Joerg Helling, WIPO Case No. D2003-0351, where it was held that the mere addition of a hyphen between the word elements is not sufficient to avoid confusion between the domain name and the Complainant's trademark (see also InfoS, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075; Dreamworks L.L.C. v. Carol Maleti, WIPO Case No. D2003-0548).
In this respect, it is also worth looking at the Public Policy Rules of the Commission of the European Communities [Commission Regulation (EC) No 874/2004 of April 28, 2004], concerning the implementation and functions of the ".eu" Top Level Domain and the principles governing registration. Article 11 of the Public Policy Rules states that complete names, comprising a space between the textual or word elements, shall be deemed to be identical to such domain names written with a hyphen between the word elements or written combined in one word.
The Panel therefore finds that the Complaint fulfils paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As mentioned above, no response has been filed and the Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. The panel, therefore, follows the Complainant's contentions that Respondent is not in any way related to the Complainant's business; the Respondent is not one of the Complainant's agents and does not carry out any activity for, or has any business with it; moreover, it does not appear that the Respondent has any other connection or affiliation with the Complainant, for example, the Complainant has never given any authorization to the Respondent to make any use of its trademark in order to acquire the domain name at issue. Furthermore, the Respondent has not been known under this domain name.
Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy; the Respondent has no rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:
(i) circumstances indicating that you [the Respondent] have registered or you have 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 that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in bad faith and registration in bad faith. Neither use in bad faith nor registration in bad faith, alone, is a sufficient ground for obtaining a remedy under the Policy.
"registered in bad faith"
The Respondent is the Registrant of the domain name in dispute registered with Tucows Inc. (Annex A); it, as well as its administrative and technical contacts, is located in Austria. Because of the fame of the Complainant's trademarks it is very likely that when registering the domain name in dispute, the Respondent knew of the existence of the Complainant's trademarks and its main website, otherwise it could not have pointed to the Complainant's website!
Any realistic use of the domain name at issue results in passing off, breaches of unfair competition legislation and trademark infringement.
Following the Complainant's contentions (Annexes I - K), an attempt to amicably resolve the dispute between the Parties failed. Mr. Astner (administrative contact) did not even accept the transfer of the domain name to the Complainant for transfer costs, a leather jacket and some trays of energy drinks. It seems to this Panel, that the Respondent has registered the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the out-of-pocket costs directly related to the domain name.
These findings lead the Panel to conclude that the domain name has been registered in bad faith by the Respondent.
"being used in bad faith"
The Respondent does not present its own website under the domain name in dispute - the domain name in dispute points to the Complainant's website; there is no evidence that a website or another online presence of the Respondent is in the process of being established which will use the domain name. There is also no evidence of advertising, promotion or display to the public of the domain name; the domain name in dispute was and is not actively used in the sense of presenting a website.
This Panel, however, follows in this respect the arguments clearly pointed out in Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003):
The relevant issue is not a "positive action in bad faith" in relation to the domain name at issue, but "acting in bad faith." The distinction between these two cases is important, because "being used in bad faith" is not limited to positive actions - inaction is within the concept: In certain circumstances, therefore, it is possible that inactivity by the Respondent may amount to the domain name being used in bad faith. This understanding of paragraph 4(a)(iii) of the Policy is also supported by the actual provisions of the Policy - only paragraph 4(b)(iv) involves a positive action - and other Panel decisions (See Red Bull GmbH v. Manuel Sousa, WIPO Case No. D2001-0584).
The circumstances identified in paragraphs 4(b)(i) to (iii) of the Policy involve also a passive holding/or inaction of the domain name registration, even though these provisions require additional facts. It must be recalled that the circumstances listed under paragraphs 4(b)(i) to (iv) of the Policy are "without limitation" - that is, paragraph 4(b) also expressly recognizes other circumstances giving evidence of bad faith.
The Panel, therefore, has to examine the following facts and circumstances, which amount to the Respondent acting in bad faith:
- The Complainant's trademarks have a strong reputation and are widely known internationally and especially in Austria, as evidenced by numerous trademark registrations, including a variety of Austrian trademarks (Annexes L, M), and widespread advertising campaigns (e.g., TV-spots and sponsoring, etc., Annexes G, H).
- The Respondent has given no evidence, whatsoever, of any actual or contemplated good faith use by it of the domain name - it even failed to submit a response.
- From August 23, 2001 until September 7, 2003, Complainant sought an amicable resolution of this matter - without success (Annexes I - K).
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by unfair competition law or an infringement of the Complainant's rights under trademark law.
Given the widespread use and notoriety of the RED BULL mark, it is the Panel's conviction that the Respondent must have known that the use of the domain name in dispute would mislead and deceive users on the Internet and that it inevitably and to the Respondent's knowledge would disrupt, dilute or otherwise harm the reputation of the Complainant.
The Panel thus finds that the Complainant has proven that the domain name is being used in bad faith according to paragraph 4(a)(iii) of the Policy by the Respondent.
7. Decision
For all 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.
Peter Burgstaller
Sole Panelist
Date: May 23, 2004
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