WIPO Domain Name Decision: D2005-0078

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. J.E.

Case No. D2005-0078

1. The Parties

The Complainant is Red Bull GmbH, Fuschl am See, Austria, represented by Schönherr Rechtsanwälte OEG, Austria.

The Respondent is J.E., Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <redbullpremiumvodka.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2005. On January 25, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 25, 2005, eNom 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, billing, and technical contact. 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 February 17, 2005.

In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2005.

The Center appointed Mladen Vukmir as the Sole Panelist in this matter on March 29, 2005. 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 one of the largest worldwide producers of energy drinks. It is the producer of the RED BULL energy drink, which was first sold in Austria in 1987, and internationally since 1994. Currently, the RED BULL energy drink is sold in 120 countries all over the world. Since its launch in 1987 until 2003, the Complainant has spent 1.7 billion euros on overall marketing activities, including media expenses (television, cinema and radio). Based on these figures, the Complainant states that the brand has become the unchallenged market leader in all its markets. Currently, the Complainant has an annual turnover of approximately 1.25 billion euros. Additionally, Complainant has since 1995 sponsored, and until 2001 co-owned, Formula One racing cars, the RED BULL SAUBER PETRONAS team, and sponsored the motorcycle race team RED BULL YAMAHA WCM. Both teams have been televised on a world-wide basis, which has further contributed to making the mark RED BULL well-known all over the world. The Complainant provided as annexes to the Complaint various exhibits to confirm this fact, in particular, Annexes F and G.

The Complaint is based on Complainant’s rights in the marks consisting of or containing the mark RED BULL, which Complainant asserts is either identical or confusingly similar to the disputed domain name.

The Complainant annexed to the Complaint various trademark registrations and applications that cover an extensive range of goods and services covering 45 different trademark classes. The Complainant has also registered, or applied to register, trademarks consisting of or containing the words RED BULL in 199 countries worldwide, including Germany, France, Spain, ltaly, Ireland, United Kingdom, Russian Federation, Saudi Arabia, United Arab Emirates, South Africa, China, Japan, United States, Australia, Canada and New Zealand. In addition, the Complainant has obtained various registered Community Trademarks including the mark RED BULL. The Complainant enclosed a list of trademark registrations containing the mark RED BULL (Annex I to the Complaint). Tthe following are some of the trademarks applicable:

AT 150540 with the priority date September 7, 1993;

AT 179642 with the priority date October 15, 1998;

CTM 52787 with the priority date April 1, 1996;

CTM 52803 with the priority date April 1, 1996;

IR 612320 with the priority date September 7, 1993;

IR 641378 with the priority date September 1, 1994;

US 2494093 with the priority date February 28, 1995;

US 2852235 with the priority date February 28, 1995;

US 1935272 with the priority date October 24, 1994; and

US 1541794 with the priority date January 27, 1986.

Annex I to the Complaint contains copies of the printouts from the public databases of the respective intellectual property offices. The Panel accepts these submissions as evidence of valid trademark rights relevant in this administrative dispute.

5. Jurisdictional Basis

The dispute is within the scope of the Policy and the Panel has jurisdiction to decide the dispute. The Registrar’s registration agreement incorporates the Policy. The domain name was registered on May 22, 2003.

The Complainant asserts that each of the requirements of paragraph 4(a) of the Policy has been satisfied and the Respondent is therefore required to submit to a mandatory administrative proceeding under the Policy.

6. Parties’ Contentions

A. Complainant

The Complainant asserts that the RED BULL energy drink has become well-known in many countries and is famous in Austria, through sales activities, television broadcasts, Internet activities and events sponsored by Complainant.

The Complainant is the registrant of a large number of domain names containing the mark RED BULL, both under generic and country-code Top Level Domains.

The Complainant operates its principle website at “www.redbull.com”. The site contains information on the RED BULLl energy drink, sport events sponsored by Complainant, and links to other Red Bull Websites, all of which are evidence of the marketing activities of the Complainant.

The Complainant finally asserts that:

(a) the domain name is confusingly similar to Complainant’s RED BULL marks,

(b) the Respondent has no rights or legitimate interests in the domain name, and

(c) the domain name is registered and has been used in bad faith whereby the bad faith is established by the following circumstances:

- By virtue of the widespread use and reputation of the trademark RED BULL, members of the public worldwide will believe that the registrant of the disputed domain name is the Complainant or in some way associated with the Complainant. In addition, Internet users in numerous countries 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. As the Respondent must have been aware of this, this shows that Respondent intended to create confusion among consumers. These facts are evidence of bad faith registration of the disputed domain name under sub- paragraphs 4(b)(iii) and (iv) of the Policy.

- Any realistic use of the domain name in dispute must misrepresent an association with the Complainant and its good-will, 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 sub-paragraphs 4(b)(iii) and (iv) of the Policy.

- The fact of purposely providing incorrect Whois data and contact information to conceal the Respondent’s identity is another indication of bad faith. It is obvious that Respondent is aware of the infringement of Complainant’s rights through registration of the disputed domain name and therefore provided inaccurate Whois data and contact information to avoid being identified.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, the Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. The Panel notes that the Complainant did support its assertions with actual evidence and now turns to examine them in turn.

7. Discussion and Findings

The Panel now proceeds to consider this matter on the merits of the Complaint, the lack of Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, each of the following:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which 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.

In this case, the Panel finds that as a result of the Respondents’ default, pursuant to paragraph 14(b) of the Rules, the Respondent has failed to rebut any of the Complainant’s factual assertions in support of its case. The Panel does not draw any inferences from the default other than those that have been established from the facts presented by Complainant and that have not been rebutted by the Respondent as a result of the default.

In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name.

The Respondent has, by defaulting, failed to provide the Panel with any exculpatory information or reasoning that might have led the Panel to question Complainant’s argument that the Respondent has acted in bad faith.

A. Identical or Confusingly Similar

Complainant has proven that it is the owner of rights in the RED BULL trademarks.

In comparing Complainant’s marks to the domain name, it is well established that the generic top-level domain, in this case “.com”, must be excluded from consideration as being a generic or functional component of the domain name. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The disputed domain name is obviously not identical to the Complainant’s trademark and therefore the Panel turns to consider the confusing similarity argument.

The Panel is satisfied with the Complainant’s argumentation that the domain name <redbullpremiumvodka.com> integrates the trademark RED BULL in its entirety and that it is likely that consumers will think that Respondent’s <redbullpremiumvodka.com> is a variation of Complainant’s trademarks. The fact that the disputed domain name combines the terms used for both the energy drink RED BULL and the alcoholic drink “vodka” would most likely give the impression that the Complainant distributes and promotes a new product, possibly a cocktail mix drink or even its own alcoholic, vodka-based product.

The Complainant further argues that “premiumvodka” is a descriptive term, therefore not distinctive and should not be taken into account. The Complainant invoked the case Red Bull GmbH v. Chai Larbthanasub (WIP0 Case No. D2003-0709) where the panel considered that the addition of a mere descriptive term such as “thai” in <thairedbullcom> was not sufficient to avoid confusion between the domain name and the trademark. In the present case, the Panel finds that the term “premiumvodka” creates at least similar confusion as would the term “thai” in the cited case.

In Viacom International Inc. v. Emperor Sedusa (WIPO Case No. D2001-1438), the panel held that the first part of the <mtvasia.com> domain name was inherently distinctive and identical to the trademark MTV, and that by adding “asia” to it the Respondent had associated the term “asia” with MTV to create a domain name which was confusingly similar to the Complainant’s trademark. The Panel finds this case instructive and applicable to the situation at hand. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark RED BULL.

B. Rights or Legitimate Interests

The Complainant states that it had not licensed or otherwise permitted 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.

The Complainant further alleges that the Respondent is seeking to create the false and misleading impression that he acts in accordance with Complainant and that the Respondent has registered the disputed domain name to create the misleading impression that his business is in some way associated with Complainant by registering the name “redbullpremiumvodka”, even so under the TLD “.com”.

The Complainant argues that it is unlikely that given the fame and reputation of the RED BULL mark and also the activities of Complainant all over the world, the Respondent had been unaware of Complainant before registering the disputed domain name.

The burden of proving rights to and legitimate interests in the domain name shifts to the Respondent who has to prove the existence of, without limitation, any of the three circumstances listed in paragraph 4(c) of the Policy. The Complainant has put forward it arguments and contentions and, absent any reply from the Respondent, the Panel finds the Complainant’s contentions credible and hence concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant argues that the disputed domain name was registered and used in bad faith for three reasons.

Firstly, the Complainant states that the RED BULL mark is well-known all over the world and that the Respondent obviously knew of Red Bull. The Complainant goes on to conclude that the Respondent was most likely aware of this fact when registering the disputed domain name and the Panel accepts this postion.

Secondly, the Complainant states that the domain name in dispute does not resolve to an active website of the Respondent. It cites a related case law to prove that such inactivity itself, combined with appropriate circumstances, amounts to an act of bad faith. The Panel finds that all circumstances in the given matter indicate that the registration and “use” of the domain name was intended to block the legitimate entities from using it.

A third indication of bad faith is the way in which the Respondent registered the domain name with the Registrar, eNom. The Panel found convincing the reference to Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) where bad faith is considered existing where “Respondent has taken deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made”. It is clear that in the case at hand the Respondent supplied incorrect and incomplete contact information when registering the domain name, which indicates an intention of bad faith registration and use.

The Panel therefore concludes that the Respondent has registered and is using the domain name <redbullpremiumvodka.com> in bad faith.

8. 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 <redbullpremiumvodka.com> be transferred to the Complainant.

Mladen Vukmir
Sole Panelist

Dated: April 12, 2005