The Complainant is Red Bull GmbH, of Am Brunnen, Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Sp. Jawna, Poland.
The Respondent is iWork Inc., of Coronado, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <redbulldvd.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2008. On June 9, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On June 9, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 June 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2008.
The Center appointed Jacques de Werra as the sole panelist in this matter on July 15, 2008. 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 July 16, 2008, the Respondent submitted a brief email communication. The Panel’s consideration of this document indicates that its content does not affect the Panel’s finding in the case.
4. Factual Background
The Complainant is the largest producer worldwide of energy drinks, including the Red Bull energy drink, first sold in Austria in 1987 and sold internationally since 1994. Today, the Red Bull energy drink is distributed in 145 countries all over the world. In 2007, the Complainant sold over 3.5 billion units of this energy drink.
Its marketing expenses totaled in excess of € 1.2 million the same year, including € 200 million for media expenses. Marketing activities included the sponsoring of sports events widely covered by the media, such as Formula One racing (“Red Bull Racing” team since 2005, “Scuderia Torro Rosso” team since 2006) and soccer (“FC Red Bull Salzburg” since 2005, “Red Bull New York” since 2006).
The Complainant also organizes the Red Bull X-Fighters event and the Red Bull Air Race World Series which both attract thousands of spectators at each event. The Red Bull Air Race World Series is broadcast both live and in long-time reports through 88 TV channels (status April 2006) around the world.
The Complainant owns numerous RED BULL trademarks throughout the world, including Austrian registration no. 150 540 of September 7, 1993, Community trademark registration no. 52787 of April 1, 1996, Community trademark registration no. 52803 of April 1, 1996, international registration no. 612320 of September 7, 1993, US trademark registration no. 2494093 of September 1, 1994 and US trademark registration no. 3086964 of December 13, 2001 (together the “RED BULL Trademark”).
The Complainant is the registered owner of a large number of domain names containing the RED BULL Trademark, including <redbull.com> under which information on the Red Bull energy drink and sports events sponsored by the Complainant is provided as well as links to other Red Bull websites, all of which relate to marketing activities made in relation to the RED BULL Trademark.
The Disputed Domain Name was first created on November 12, 2007. It is presently used as a parking/ landing page, which offers a list of sponsored links referring to products some of which compete with Complainant’s products, i.e. energy drinks1.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three conditions specified in Paragraph 4(a) of the Policy is met in this case, i.e.:
(1) The Disputed Domain Name is confusingly similar to the widely known RED BULL Trademark in which the Complainant has exclusive rights because the RED BULL Trademark has been incorporated in its entirety into the Disputed Domain Name and is followed simply by a generic term (“DVD”), which does not change the overall impression of the designation as referring to the Complainant’s RED BULL Trademark. The presence of the word “DVD” in the Disputed Domain Name further creates an undue association to the Red Bull events that take place all over the world, as being recorded and then displayed to the Internet users.
(2) The Respondent has no rights to or legitimate interests in the Disputed Domain Name as it has not been licensed or otherwise permitted by the Complainant to use the RED BULL Trademark or variations thereof or to register corresponding domain names. The Complainant further contends that the Respondent neither uses the Disputed Domain Name in connection with a bona fide offering of goods and services nor is commonly known under the Disputed Domain Name. Thus, the Respondent cannot have any rights or legitimate interests in respect of the Disputed Domain Name.
(3) The Complainant finally contends that the Disputed Domain Name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that - given the fame and reputation of the RED BULL Trademark and the Complainant’s activities all over the world - it is inconceivable that the Respondent was unaware of the Complainant and of the RED BULL Trademark at the time of registration of the Disputed Domain Name. With regard to bad faith use, the Complainant contends that the Respondent’s intent is to misleadingly divert customers to its website. The Respondent is causing confusion by creating, for commercial gain, the impression of an economic relationship with or sponsorship or endorsement by the Complainant.
B. Respondent
The Respondent did not formally reply to the Complainant’s contentions in the formal deadline granted to him for filing his response but sent an email on July 16, 2008 to the Center in which he alleged (among other things) that the Disputed Domain Name was for sale.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has duly established that it is the owner of various trademarks which are registered in Austria and in other countries for the RED BULL Trademark.
As already decided by other panels in other similar cases concerning the RED BULL Trademark and domain names containing the RED BULL Trademark to which generic and/or descriptive words were added, the Panel considers here that the Disputed Domain Name is confusingly similar to the RED BULL Trademark. See Red Bull GmbH v. Madummal K Durganand,
WIPO Case No. D2007-1613; Red Bull GmbH v. Domains by Proxy Inc./New Gold Mine,
WIPO Case No. D2007-0684; Red Bull GmbH v. Emory Virgil,
WIPO Case No. D2005-0381.
The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it 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.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.
In this case, the Panel finds no evidence that the Respondent has any right or legitimate interest in the Disputed Domain Name. The Complainant has further demonstrated that the Disputed Domain Name now hosts a website providing links to websites offering products which are for part of them directly competing with the energy drinks sold under the RED BULL Trademark by the Complainant in what appears to be a “click-through” site which is part of a parking program. Even though it has not been demonstrated that the Respondent previously sold unauthorised video records of Red Bull Air Race using Complainant’s Red Bull Marks without its authorization on the Disputed Domain Name in the past, it remains in any case that the use of the Disputed Domain Name in a parking program cannot create any right or interest of the Respondent in the Disputed Domain Name. See Rhino Entertainment Company v. DomainSource.com, Inc.,
WIPO Case No. D2006-0968 and Prestige Brands Holding Inc., and Prestige Brands International, Inc. v. The domain is not for sale / Motohisa Ohno,
WIPO Case No. D2006-0608 (the registration of a domain name for no reason other than to connect it to a parking page for “revenue-per-click” does not of itself give rise to a legitimate interest in respect of the domain name at issue).
The Panel further acknowledges that the Complainant never authorized, licensed or permitted the Respondent to use the RED BULL Trademark in any manner and that the Respondent is not commonly known by the Disputed Domain Name.
On this basis, the Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name and similarly that the Respondent has not established any rights to or any legitimate interests in the Disputed Domain Name (it being noted that the Respondent’s apparent willingness to sell the Disputed Domain Name does not affect this conclusion). The Panel is consequently satisfied that the Complainant has established that the second requirement of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
Based on the uncontradicted evidence filed by the Complainant, the Panel is prepared to find that the Respondent registered the Disputed Domain Name in bad faith because it appears inconceivable that the Respondent was unaware of the Complainant and of the RED BULL Trademark at the time of registration of the Disputed Domain Name. In such circumstances, bad faith results from the fact that the Respondent registered the Disputed Domain Name incorporating the Complainants’ widely known RED BULL Trademark, despite having no connection to the Complainant. See Red Bull GmbH v. Domains by Proxy Inc./New Gold Mine, supra; see also Rhino Entertainment Company v. DomainSource.com, Inc., supra citing Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (holding that Respondent’s domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
The Panel notes in this respect that the Complainant’s RED BULL Trademark can be considered as having a strong reputation and as being widely known all over the world as this was held by previous panels. See Red Bull GmbH v. Pregio Co., Ltd., WIPO Case No. D2006-0909; Red Bull GmbH v. Web Wax Designer, WIPO Case No. D2006-0746.
The Disputed Domain Name is being used by the Respondent for the purpose of attracting traffic to sites offering products which are competing with the energy drinks of the Complainant for commercial gain (i.e. for “revenue-per-clicks”). Such use of the Disputed Domain Name can only be explained by the intent of the Respondent to attract Internet traffic by capitalizing on the Complainant’s RED BULL Trademark. Such use of the Disputed Domain Name constitutes sufficient evidence of the bad faith of the Respondent under paragraph 4(b)(iv) of the Policy. See Red Bull GmbH v. Domains by Proxy Inc./New Gold Mine,supra; see also Rhino Entertainment Company v. DomainSource.com, Inc., supra and Imperial Chemical Industries PLC v. RareNames,supra.
On this basis, the Panel is convinced that the Respondent is trading on the goodwill of the Complainant’s widely known RED BULL Trademark, and is diverting Internet traffic intended for the Complainant’s various official websites for its own commercial interest. This type of use of the Disputed Domain Name constitutes evidence of the bad faith by the Respondent under paragraph 4(b)(iv) of the Policy.
For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.
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 <redbulldvd.com> be transferred to the Complainant.
Jacques de Werra Sole Panelist
Dated: July 29, 2008
1 The Panel notes that the Complainant has alleged in the Complaint that unauthorized videos of the Red Bull Air Race in San Diego which made unauthorized use of the Red Bull Trademarks were previously offered for sale on the Disputed Domain Name and that the Complainant sent a cease and desist letter to the Respondent in late January 2008 requesting the cancellation of the Disputed Domain Name which however only resulted in the stopping of such sales by Respondent « by approximately February 8, 2008 ». These factual assertions are however not supported by written evidence filed by the Complainant (it being noted that even if duly confirmed such factual elements would not affect the outcome of the case).
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