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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. Bayer Shipping & Trading Ltd.

Case No. D2003-0271

 

1. The Parties

The Complainant is Red Bull GmbH, of Fuschl am See, Austria a company incorporated in Austria, with its registered office in Fuschl am See, Austria.

The Respondent is Bayer Shipping & Trading Ltd., of the United Arab Emirates.

 

2. The Domain Name and Registrar

The Respondent is the registrant of the disputed Domain Name <myredbull.com>. The Registrar is Network Solutions, Inc., 21355 Ridgetop Circle 20170 Dulles, Virginia 20166 USA.

 

3. Procedural History

The Complaint was filed by e-mail on April 4, 2003, and in hardcopy on April 17, 2003, with the WIPO Arbitration and Mediation Center (the "Center").

The Center has found that the Complaint satisfies 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").

On April 10, 2003, the Center transmitted a request to Network Solutions, Inc., to verify the following facts:

- that a copy of the Complaint was sent to Network Solutions, Inc., as required by the WIPO Supplemental Rules by the Complainant,
- that <myredbull.com> is registered with Network Solutions, Inc.,
- that the entity identified in the present case, as the Respondent is the current registrant of the Domain Name,
- that the full contact details available in Network Solutions, Inc., WHOIS database for the registrant, technical contact, administrative contact and billing contact, for the said Domain Name were provided,
- that the Policy applies to the disputed Domain Name,
- the current status of the Domain Name.

Via communication dated April 14, 2003, Network Solutions, Inc informed the Center:

- that Network Solutions, Inc., is in receipt of the Complaint sent to them by the Complainant,
- Network Solutions, Inc., is the Registrar of the Domain Name registration,
- that Bayer Shipping & Trading Ltd., is the current registrant of the <myredbull.com> Domain Name registration,
- that the Policy applies to this Domain Name, and
- that the Domain Name registration is on "HOLD" status.

On April 22, 2003, the Respondent was notified of the Complaint filed by the Complainant and opportunity was granted as per the Rules for filing of a Response. The Administrative Panel finds that the Center has satisfied its notification obligations under Rule 2(b).

The Center did not receive any response from the Respondent.

On May 13, 2003, the Center notified the Respondent of its default in complying with the deadline indicated in the notification of complaint and commencement of the administrative proceeding.

On May 20, 2003, the Center appointed Mr. Maninder Singh as a Sole Panelist, and this was notified to the Complainant and the Respondent.

The language of the administrative proceeding is English.

 

4. Factual Background

The Complainant in this administrative proceeding is Red Bull GmbH, Am Brunnen 1, A-5330 Fuschl am See, Austria a company incorporated in Austria, with its registered office in Fuschl am See, Austria. The Complainant has claimed rights in relation to the mark "RED BULL". Its registered domain name is <redbull.com>. The dispute in the present complaint relates to the registration of the Domain Name <myredbull.com> registered by the Respondent. The Complainant has thus requested a transfer of Domain Name <myredbull.com> from the Respondent.

 

5. Parties’ Contentions

Complainant

The Complainant is the largest worldwide producer of energy drinks. It is the producer of the RED BULL energy drink, which was first sold in Austria in 1987, and in Germany in 1994. Currently, the RED BULL energy drink is sold in 87 countries all over the world and the Complainant has sold approximately 1,2 billion units in 2002. Media expenses of the Complainant in 2002 amounted to EUR 127 million. Since 1987 until 2002, Red Bull has spent EUR 1,3 billion on overall marketing activities, including media expenses. In 2002, Red Bull’s total marketing expenses were more than EUR 377 million. Based on these figures, the brand has become the unchallenged market leader in all its markets.

Currently, Red Bull has an annual turnover of approximately EUR 1,1 billion. Additionally, the Complainant has since 1995, sponsored and until 2001 co-owned Formula One racing cars, the RED BULL SAUBER PETRONAS team, which have been televised on a world-wide basis and which have made the mark RED BULL well-known all over the world (see Annex F, Enclosures ./1 to ./5 with regard to all the facts contained in this paragraph; Annex G, promotional materials and materials evidencing the use of the trademark RED BULL in various countries).

Furthermore, through television broadcasts, sales activities, internet activities and events sponsored by the Complainant, the RED BULL energy drink has become well-known in many countries and famous in Austria (see Annexes F and G). Evidence of the activities of the Complainant – also in the entertainment-field – can also be found on the Complainant’s main website under "www.redbull.com".

The Complainant has traded under the name "Red Bull" in Austria since 1987, and outside Austria since 1992, the international launch-date of the RED BULL energy drink (Annex F, Enclosure ./1).

The Complainant is the proprietor of 20 registrations and applications in Austria of trademarks consisting of or containing the mark "Red Bull". The various trademark registrations and applications cover an extensive range of goods and services, and span all of the 42 trademark classes. As well, the Complainant has registered, or applied to register, a range of trademarks consisting of or containing the word "RED BULL", in 193 countries worldwide such as U.S.A., Australia, Canada, New Zealand, Russian Federation, United Kingdom, Germany, France, Spain, Italy, Ireland, China, South Africa, Saudi Arabia and the United Arab Emirates. In addition, the Complainant has obtained various registered Community Trademarks including the mark "Red Bull" (details of trademark applications and registrations are set out in Annexes H und J to the Complaint).

The Complainant is the registrant of a large number domain names containing the mark "Red Bull", both under generic and country-coded Top Level Domains.

The Complainant operates its principal website at "www.redbull.com". The site contains information on the RED BULL energy drink, sports events sponsored by the Complainant and links to other Red Bull websites, all of which are evidence of the entertainment activities of the Complainant.

The Respondent is the registrant of the Domain Name <myredbull.com>. The Domain Name is linked to a promotional website "FreeDomainReservation.com" with the message "This Domain is Under Construction". A printout of the appearance of the website on February 5, 2003, under the domain name <myredbull.com> is attached as Annex K.

The Complainant’s local office has contacted the Respondent. The Respondent replied with a letter dated December 22, 2002, (attached as Annex L) implying that the Domain Name would be traded to the Complainant for USD 100,000. The Respondent threatened the Complainant that if there would be no response by Complainant by the end of the year, the name would be sold through an internet auction.

Identical or Confusingly Similar (Policy para. 4(a)(i))

It has been contended by the Complainant that the disputed Domain Name contains the Complainant’s trademark as a whole and therefore in particular implies endorsement by Complainant. The Complainant in this regard has placed reliance on the decision of the Center in Red Bull GmbH v. Redbulls Itc. Ltd., WIPO Case No. D2002-0541.

The Domain Name <myredbull.com> is confusingly similar to the various trademarks and trademark applications "RED BULL", which are registered and/or owned by the Complainant. It is common practice with internet domain names that blank spaces in trade names or trademarks are omitted to form a company’s domain name (as also the Complainant did for its main website under the domain name <redbull.com>). The Respondent merely adds the word "my" to the trademark and trade name of the Complainant, thereby creating the impression of economic relation with or sponsorship or endorsement of his company by the Complainant.

It is the submission of the Complainant that it is well established case-law of the WIPO administrative panels that an additional word – in this case "my" – is to be ignored in comparing the mark in which a complainant has rights and the domain name that is the subject of the dispute. Reliance has been placed on the decision of the Center in Pfizer Inc. v. Myviagra / Wilbert Smith, WIPO Case No. D2002-0463. In this case it was held that the domain name <myviagra.com> was clearly confusingly similar to the mark in which the complainant in those proceedings had rights.

In Red Bull GmbH v. Tony Marinelli, WIPO Case No. D2001-0522, it is the submission of the complainant that the panel correctly stated, that "Complainant's trademark RED BULL is composed of two common words of the English language, which in their combination are arbitrarily used to distinguish the energy drink sold by the Complainant and therefore are inherently distinctive. Such trademarks are in fact very strong marks." Therefore, in the case of the disputed Domain Name, consumers worldwide (the gTLD <.com> is intended and commonly used for international appearance on the internet) including the United Arab Emirates will think that "Red Bull" is a variation of the Complainant’s trademarks and therefore, also in this respect, confusing similarity between the Complainant’s trademarks and the disputed Domain Name is established.

With regard to issue of the Respondent’s rights or legitimate interests in the Domain Name as per para. 4(a)(ii) of the Policy, it has been stated by the Complainant that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to apply for or use any domain name incorporating any of those marks or any variations thereof. Combination of the words "RED" and "BULL" is a purely fanciful combination of words, as there does not exist a red colored bull. Therefore, nobody would legitimately choose this mark or any variation thereof, unless seeking to create an impression of association with the Complainant. In this respect, the Respondent seeks to create the false and misleading impression that he acts in accordance with the Complainant. Apparently, the Respondent has registered the Domain Name in dispute to create the misleading impression that he is in some way associated with the Complainant by registering the Domain Name "myredbull" under the Top-Level-Domain <.com>, which is not the case. The Respondent is quite obviously trying to exploit the fame and reputation of the Complainant's "RED BULL" trademarks.

The Complainant has further contended that given the fame and reputation of the RED BULL-mark and also the activities of the Complainant all over the world (including the United Arab Emirates), it is inconceivable, that the Respondent was unaware of the Complainant before registering the disputed Domain Name. It therefore can be excluded beyond any doubt, that the Respondent created a fantasy name, which happened to consist of a variation of the trademark RED BULL of the Complainant.

Furthermore, none of the circumstances listed under para. 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent has never used the Domain Name in connection with a bona fide offering of goods or services. As a result, the Respondent has no rights or legitimate interests vis-a-vis the Complainant in the Domain Name <myredbull.com>. For this purpose the Complainant has placed reliance on the decision of the Center in Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766.

For establishing the point that the Domain Name has been registered in bad faith the Complainant has highlighted the following circumstances, in particular but without limitation, that shall be evidence of the registration and use of a domain name in bad faith according to para. 4(b) of the Policy:

(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark (normally the Complainant) or to a competitor of that Complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name; or

(ii) Whether the domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or

(iii) Whether the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) Whether by using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s web site 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 the registrant’s web site or location or of a product or service on the registrant’s web site or location.

The fact that the Respondent offered to sell the disputed Domain Name for USD 100,000, according to the Complainant, a consideration clearly in excess of any arguable out-of-pocket costs directly related to the Domain Name, clearly indicates the Respondent’s bad faith according to para. 4(b)(i) of the Policy. From the website currently displayed under the disputed Domain Name ("FreeDomainReservation.com") it is further obvious that the Respondent apparently even registered the Domain Name for free, which clearly indicates that the Respondent was doing so to gain profit from selling the domain to the rightful holder of the famous trademark incorporated in the Domain Name.

It is also contended by the Complainant that bad faith under para. 4(b)(i) and (ii) of the Policy is clearly established by the fact that the Respondent in reaction to Complainant’s local office contacting the Respondent threatened to place the Domain Name in an internet auction, which would have caused the Complainant to try to establish contact with a new registrant somewhere in the world to enforce its rights and to end the blockage of the Domain Name by an illegitimate registrant.

The trademark "RED BULL" is one of the best known trademarks not only in Austria but all over the world (including the United Arab Emirates), and the Complainant has submitted that it is inconceivable that the Respondent would not be aware of this fact. As a consequence, the disputed Domain Name has been registered in bad faith according to para. 4(b)(ii) and (iii) of the Policy.

By virtue of the wide-spread use and reputation of the trademark "RED BULL", members of the public worldwide and also in the United Arab Emirates would believe that the Respondent was the Complainant or in some way associated with the Complainant. In addition, internet-users also in countries such as Austria and Germany – where the trademark "RED BULL" is very well known by the public – would immediately believe that the disputed Domain Name is in some way associated with the Complainant. These facts are evidence of bad faith registration of the disputed Domain Name under para. 4(b)(ii), (iii) and (iv) of the Policy.

Further, any realistic use of the Domain Name in dispute must misrepresent an association with the Complainant and its goodwill, resulting in passing off, breaches of unfair competition legislation and trademark infringement. This results in bad faith registration and use of the disputed Domain Name according to para. 4(b)(ii) and (iii) of the Policy.

Finally, the Domain Name in dispute resolves apparently to the website of an internet provider and does not resolve in a functional website for Respondent. There is no evidence, that a website or other on-line presence, which will use the Domain Name, is in the process of being established. As the administrative panel correctly stated in Red Bull GmbH v. Manuel Sousa, WIPO Case No. D2001-0584 that it has been "consistently expressed in other administrative panel decisions, that it is possible for inactivity by the respondent to amount to a disputed domain name being used in bad faith. Occupying an entry in the DNS is "use" in any event, since it has a blocking function."

Therefore, the requirement of registration and use of the Domain Name <myredbull.com> by the Respondent in bad faith is also fulfilled. There is evidence before the Panel that all the circumstances established in para. 4(b) of the Policy are applicable in this dispute.

Respondent

The Respondent has not furnished any response to the Complaint. However, on the basis of the record made available by the Complainant and verified by the Center, it appears that the Respondent is the registrant of the Domain Name <myredbull.com>. The Domain Name is linked to a promotional website "FreeDomainReservation.com" with the message "This Domain is Under Construction". A printout of the appearance of the website on February 5, 2003, under the Domain name <myredbull.com> is attached as Annex K.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trademark in which the Complainant has rights; and
(2) That the Respondent has no legitimate interests in respect of the domain name; and
(3) That the domain name has been registered and used in bad faith.

Identical or Confusingly Similar

It is the case of the Complainant that the disputed Domain Name <myredbull.com> is virtually and confusingly similar to the Complainant's trademark "RED BULL". The addition of word ‘my’ deserves to be ignored as the addition of this word by the Respondent creates an impression of economic relation with or sponsorship or endorsement of his company by the Complainant. No such relationship exists between the Complainant and the Respondent. The Complainant has neither licensed nor otherwise permitted the Respondent to use any of its trademarks or any variation thereof or to apply for or use any domain name incorporating any of those marks or any variations thereof.

There is every possibility that consumers world wide and also in the United Arab Emirates will think "My Red Bull" is a variation of the Complainant's trademark "RED BULL" on account of confusing similarity between the complainant's trademark and the disputed Domain Name.

Apart from the decisions which have been relied upon by the Complainant, it would also be useful to refer to certain other decisions of the Center in the following cases wherein despite certain prefixes and suffixes, the disputed domain names were held to be confusingly similar.

(a) Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409: In this case the Center has held that user of various other prefixes and suffixes with the mark SONY such as <sonyacademy.com>, <sonycampus.com>, <sonycollege.com>, <worldsony.com>, <sunsony.com>, <dreamsony.com> etc. would not entitle the respondent in that case to continue with the disputed domain names registrations and the order for their transfer in favour of the complainant was passed.

(b) Dellcomputer Corporation v. Alex and Birgita Ewaldsson, WIPO Case No. D2000-1087: In this case, the complainant known for its computers challenged various domain name registrations of the respondent containing the word Dell, such as, <deldrivers.com>, <dellit.com> etc. The Center, after consideration of the facts directed the transfer of the 122 domain names in favour of the complainant.

(c) Carrefour S.A. v. Multigestiones Puetonorte S.L., WIPO Case No. D2000-0837: In this case, the complainant was carrying on the business of retail sales through its super market outlets in more than 30 countries with the trademark CARREFOUR and was having trademark registrations in numerous jurisdictions. The respondent had the following domain name registrations: <carrefour-group.com>, <carrefourgroup.com> and <newcarrefourgroup.com>. The Center directed the transfer of these three domain name registrations of the respondent in favour of the complainant.

(d) India.com Portal Pvt.Ltd. v. Akram Ali, V.M. Hardware, WIPO Case No. D2000-1489: The Center in this case held that there is no doubt that the name <indya.com> of the complainant and the impugned domain name i.e., <indianews.com>, <indyanews.net> and <indyanews.org> by the respondent are identical and confusingly similar.

(e) Sony Corporation Vs. Park Kwangsoo, WIPO Case No.D2001-0167: In this case, the Center has held that the domain name registered by the respondent, namely, <newsony.com> is virtually identical and confusingly similar to the domain name of the complainant <sony.com>.

The Panel therefore holds that the disputed Domain Name <myredbull.com> is confusingly similar to the trademark/trade name of the Complainant, namely, "RED BULL".

Rights or Legitimate Interests

The Panel finds force in contentions of the Complainant that the Respondent is neither licensed nor otherwise permitted the Respondent to use any of its trademarks or any variation thereof or to apply for or use any Domain Name incorporating any of those marks or any variations thereof. As such the Respondent has no right or legitimate interests in relation to Domain Name <myredbull.com>.

Registered and Used in Bad Faith

In the light of the documentary evidence placed on record regarding the sales, marketing and advertisement of the products of the Complainant in approximately 193 countries including United Arab Emirates, the Panel also finds merit in the contention of the Complainant that the Respondent had registered the Domain Name <myredbull.com> being fully aware of the Complainant’s considerable reputation and the fact that they are the proprietors of the famous mark "Red Bull". The record also reveals that the Respondent approached the Complainant for selling the impugned Domain Name for US$ 100,000 with the stipulation in righting in their communication dated December 22, 2002, that if there would be no response by the Complainant by the end of the year, the name would be sold through and internet auction. The Panel is, therefore, of the opinion that the registration of the disputed Domain Name by the Respondent is in bad faith.

 

7. Decision

The Panel decides that the Respondent’s domain <myredbull.com> should be transferred to the Complainant.

 

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Maninder Singh
Sole Panelist

Dated: June 3, 2003