Complainant is Red Bull GmbH of Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
Respondent is Credit du Léman SA, Jean-Denis Deletraz of Switzerland.
The disputed domain names <redbull-fx.com>, <redbullfx.com>, <redbull-fx.net> and <redbullfx.net> are registered with Namebay.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2011. On December 15, 2011, the Center transmitted by email to Namebay a request for registrar verification in connection with the disputed domain names. On December 16, 2011, Namebay transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On December 21, 2011 the Center sent to the parties an email communication regarding the language of the proceedings. On December 23, 2011 Complainant filed a request that English be the language of the proceedings. Respondent objected requesting that be French the language of the proceedings on December 28, 2011.
The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2012. The Response was filed with the Center on January 9, 2012. On January 19, 2012 Complainant submitted a Supplemental filing to which Respondent replied on the same date.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on January 26, 2012. 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.
The Complainant is a known producer of energy drinks and in particular of the famous RED BULL energy drink. The Complainant is the holder of various registered trademarks consisting of or containing the RED BULL sign, which it uses in relation to its business. Complainant shows to be the holder of following registered trademarks:
- RED BULL and design, registered as a Community trademark under number 005225611 on July 21, 2009 and applied for on July 27, 2006;
- RED BULL, registered as an International trademark under number 972114 on March 19, 2008;
- RED BULL, registered as an International trademark under number 961854 on March 19, 2008.
Respondent registered the disputed domain names <redbull-fx.com>, <redbullfx.com>, <redbull-fx.net> and <redbullfx.net> on October 29, 2010. Respondent has not been using these domain names in connection with an active website. Complainant has requested Respondent to cancel the registration of the disputed domain names in a cease and desist letter. Respondent did not cancel the registration of the disputed domain names voluntarily.
Complainant considers the disputed domain names to be confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain names. According to Complainant, Respondent has not constructed an active website at any of the links associated with the disputed domain names. Finally, Complainant considers that the disputed domain names were registered and being used in bad faith.
In its additional submission, Complainant replied to Respondent’s argument that it would have been a shareholder of a Swiss company which would have registered multiple domain names containing the mention “fx”. According to Complainant, Respondent did not provide any evidence confirming such statement. Furthermore, the mention of “fx” would be purely descriptive for the goods and services Respondent’s former company would have been offering. The distinctive element of the disputed domain names is “redbull” according to Complainant. According to Complainant, Respondent groundlessly indicates that “red bull” would be generic and should not be protected. Complainant argues that the RED BULL designation is purely fanciful and renowned.
Respondent admits that it is not using the disputed domain names and suggests that Complainant issues an offer if it wants the disputed domain names.
Respondent claims to have been a shareholder of a Swiss foreign exchange (forex) company. In that framework, Respondent asserts having registered multiple domain names containing the mention “fx”.
Respondent further considers the terms “red” and ”bull” to be generic. It claims that such terms cannot be protected in Switzerland. Respondent claims that its company used the sign of a bull as a logo and that it legally acquired the disputed domain names.
In its additional submission, Respondent provided a list with domain names containing the mention ”fx” which it claims to have registered. According to Respondent there would be no risk of confusion between energetic drinks and “forex”. Finally, Respondent claims that the words “red” and “bull” cannot be protected.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain names; and
3. The disputed domain names have been registered and are being used in bad faith.
The Panel will therefore deal with each of these requirements in turn.
As the Complaint was not filed in the language of the Registration Agreement and the Parties did not agree on the language of the administrative proceeding, the Panel may decide on the language of the administrative proceeding, having regard to the circumstances of the administrative proceeding. Indeed, paragraph 11(a) of the Rules reads: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Panel is satisfied that both parties speak and write English. Based on the evidence adduced before the Panel, the Panel finds Respondent, a Swiss company, to be proficient in the English language. Respondent has responded to a cease and desist letter from Complainant in English. Furthermore, Respondent’s reply to the Complaint, although in French, shows that Respondent understood the language of the Complaint. Therefore, the Panel finds that these elements show that Respondent has a sufficient understanding of English.
Accordingly, the use of the English language in the proceedings would not be prejudicial to the interests of Respondent, whereas it would be a disadvantage for Complainant to be forced to translate the Complaint. Therefore, the Panel decides to use the English language in the present proceedings (See e.g., The Dow Chemical Company v. Hwang Yiyi, WIPO Case No. D2008-1276, decision according to which, “where [a] respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even it is different to the language of the registration agreement”).
Nevertheless, Respondent wrote a succinct response to the Complaint in French. As the Panelist is proficient in French, and “in order to procure for the parties a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases, and that both parties be treated with equality in these administrative proceedings, the Panelist has agreed to receive and consider all writs, information and documents submitted also in the [French] language” (See Red Nacional de Ferrocarriles Españoles v. Jesús Hidalgo Álvarez, WIPO Case No. D2000-1025).
Complainant must first establish that there is a trademark or service mark in which it has rights. Since Complainant is the holder of the widely known RED BULL trademark it is clearly established that there is a trademark in which Complainant has rights.
The Panel considers the only difference between the disputed domain names <redbull-fx.com>, <redbullfx.com>, <redbull-fx.net> and <redbullfx.net> and Complainant’s trademark, the addition of a hyphen followed by the letters “fx “. According to the Panel, the addition of a hyphen and two letters are insufficient to avoid confusing similarity, as such minor modifications to a trademark do not diminish in any significant way the confusing similarity between the disputed domain names and Complainant’s trademark (See e.g., Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768; Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281).
Furthermore, the letters “fx” can be considered an abbreviation of the term “forex”, which itself is an abbreviation for “foreign exchange”. The Panel is also of the opinion that the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy. (See L'Oréal and Lancôme Parfums et Beauté et Compagnie v. Deco Trends & Art, K. Plooyer, WIPO Case No. D2011-0524, where the addition of the non-distinctive generic terms “online”, “shop” and/or “gifts” and the addition of the geographical term “paris” to a name that is confusingly similar to complainant’s trademark, were considered insufficient to reduce the identity or confusing similarity, as set out in paragraph 4(a)(i) of the Policy; Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253, where the addition of the non-distinctive generic term “shoes” to a name that is confusingly similar to complainant’s DR. MARTENS trademark does nothing to reduce the confusing similarity between the complainant’s trademark and the disputed domain name; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275, where the addition of the generic word “machines” to complainant’s trademark CAT did not serve to distinguish the domain name <catmachines.com>; Nike, Inc. v. Farrukh Zia, WIPO Case No. D2000-0167, where the domain name <enike.com> was held to be confusingly similar to the trademark NIKE).
Therefore, the Panel finds that the disputed domain names are confusingly similar with Complainant’s RED BULL trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish.
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain names.
It is established case law that it is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the disputed domain names in order to place the burden of rebuttal on Respondent. (See: Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that Respondent has not been commonly known by the disputed domain names and that Respondent has not acquired trademark or service mark rights in “redbull-fx” and “redbullfx”. Respondent’s use and registration of the disputed domain names was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed. The argument that Respondent would use a “bull” as a logo for activities in the foreign exchange market is not supported by any evidence. Furthermore, the fact that Respondent would have registered multiple domain names, containing the term “fx” does not create a legitimate interest in the disputed domain names, which are confusingly similar to Complainant’s widely known trademark.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate non commercial or fair use of the disputed domain names. In fact, Respondent is not making any use of the disputed domain names at all. According to the Panel, the passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (See American Home Products Corporation vs. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244; Paws, Inc. v. garlfieldonline.com, NAF Claim No. 97328; Victoria’s Secret et al v. This Domain Name For Sale, NAF Claim No. 96486).
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith is the registration or acquisition of 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.
1. Bad Faith Registration
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant’s rights in the RED BULL trademark at the moment it registered the disputed domain names, since Complainant’s trademark is a widely known trademark. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. (See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
2. Bad Faith Use
Respondent is not using the disputed domain names. According to the Panel, the passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of the disputed domain names by the Respondent that would be legitimate and not infringing the Complainant’s well-known mark or unfair competition and consumer protection legislation (See Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The fact that a complainant’s trademark has a strong reputation and is widely used and the absence of evidence whatsoever of any actual or contemplated good faith use are further circumstances that may evidence bad faith registration and use in the event of passive use of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the present case, the Panel is of the opinion that Complainant’s trademark has a strong reputation and is widely known, which makes it impossible to conceive any plausible legitimate future use of the disputed domain names by Respondent. Furthermore, there is no sign of any good faith use in relation to the disputed domain names. It seems that Respondent invited to cancel the registration of the disputed domain names only in return for an offer. According to the Panel, this serves as an indication that Respondent registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names’ 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 Respondent’s documented out-of-pocket costs directly related to the disputed domain names.
Therefore, it is established that the disputed domain names have not only been registered, but are also used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <redbull-fx.com>, <redbullfx.com>, <redbull-fx.net> and <redbullfx.net> be cancelled.
Flip Jan Claude Petillion
Sole Panelist
Dated: February 9, 2012