The Complainants are Dietrich Mateschitz of Fuschl am See, Austria and Red Bull GmbH of Fuschl am See, Austria, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is The Gratitude Juice Foundation of Melhourne, Victoria, Australia.
The disputed domain name <dietrichmateschitz.com> (“the Domain Name”) is registered with Crazy Domains FZ-LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2014 On August 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 20, 2014, the Registrar 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” 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”).
On August 30, 2014, the Center received an informal email communication from the Respondent. The Center acknowledged its receipt on September 3, 2014.
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 September 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the commencement of panel appointment process on September 24, 2014.
The Center appointed Isabel Davies as the sole panelist in this matter on October 1, 2014. 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.
In 1984, Dietrich Mateschitz (the First Complainant) co-founded Red Bull GmbH (the Second Complainant), where since its creation he has held the position of the Managing Director.
The First Complainant is also originator of a Red Bull Media House project.
The First Complainant, with the net worth of USD 9,2 billion as of June 2014, is the richest person in Austria, ranked on the 162 position of the Forbes’ Billionaires List.
The Second Complainant is the producer of the famous Red Bull energy drink, which was first sold in Austria in 1987 and internationally since 1992. Currently, the Red Bull energy drink is sold in 159 countries all over the world and the Second Complainant has sold over 5.2 billion serving units globally in 2012 and over 138.0 million units in Australia in 2012. The RED BULL marks are protected in 207 jurisdictions worldwide.
The First Complainant is owner of international trademark registration IR 1193833 DIETRICH MATESCHITZ with a priority date of November 12, 2013. The Second Complainant is a licensee of the trademark.
The Domain Name was registered on July 27, 2013.
1. Complainants’ Activities
The Complainants state that the First Complainant is an Austrian businessman – co-founder and Managing Director of the Second Complainant.
In 1984, the First Complainant co-founded the Second Complainant, where since its inception he has held the position of the Managing Director. With the launch in 1987, subsequently, the First Complainant turned the Red Bull drink into a world market leader among energy drinks.
As a sport enthusiast, the First Complainant created a whole Red Bull marketing strategy based on investing in sports, enterprises and ventures, sponsorship of athletes and buying various sports teams, such as Red Bull New York and FC Red Bull Salzburg football clubs or Red Bull Racing Formula One’s team. His dedication to the latter one resulted in the First Complainant becoming internationally recognized not only as the Managing Director of the Second Complainant, but also as the boss of the Red Bull’s Formula One team.
The First Complaint is also originator of a Red Bull Media House project.
The First Complaint, with the net worth of USD 9,2 billion as of June 2014, is the richest person in Austria, ranked on the 162 position of the Forbes’ Billionaires List.
2. The Second Complainant is the Largest Worldwide Producer of Energy Drinks
It is the producer of the famous Red Bull energy drink, which was first sold in Austria in 1987 and internationally since 1992. Currently, the Red Bull energy drink is sold in 159 countries all over the world and the Second Complainant has sold over 5.2 billion serving units globally in 2012 and over 138.0 million units in Australia in 2012. The RED BULL marks are protected in 207 jurisdictions worldwide.
The Complainants state that since its launch in 1987, the Second Complainant’s marketplace penetration was focused on TV, cinema and radio. In 1987, Red Bull invested over EUR 577,000 and already in 2012, this number has grown to over EUR 1.7 billion worldwide in 2012. Based on these figures, the brand has become the unchallenged market leader in all its markets.
Additionally, the Second Complainant has promoted the RED BULL trademark and the device of two fighting bulls by very substantial international advertising. Much of this advertising by its nature is global or regional.
Recently the Red Bull Stratos project caused great media attention. On Sunday morning October 14, 2012, Felix Baumgartner climbed up to 128,100 feet (39,045 meters) in a capsule carried by a helium-filled balloon. He jumped out of the capsule and reached an estimated speed of 833.9 mph (1,342.8 km/h), which when certified will make him the first man breaking the speed of sound in freefall. Felix Baumgartner broke two other world records (highest freefall, highest manned balloon flight).
Countless millions of people around the world watched his ascent and jump live on television broadcasts and live stream on the Internet. With over 8 million concurrent viewers on the YouTube live stream, it was the most viewed live stream so far (previous record was only 500.000 for 2012 Summer Olympics). The event caused 25 million visits to the Red Bull websites, over 267.000 Red Bull TV iOS app downloads. On Facebook and Twitter the jump generated 500.000 likes, 20.000 comments and 66.000 shares and 3.2 million tweets with official hashtags.
For this event, the Second Complainant registered special domain name <redbullstratos.com>.
Furthermore, the Second Complainant organizes the RED BULL X-Fighters event which attracts thousands of spectators at each event. The Second Complainant also organizes the RED BULL FLUGTAG event during which competitors attempt to fly in homemade flying machines. The event was first held in Vienna, Austria, in September 1992 and attracted around 25.000 spectators. First held in 1998 in Berlin, the RED BULL MUSIC ACADEMY (workshops on music history, technology and business) was established in Dublin, New York, London, Sao Paulo, Cape Town, Rome, Toronto, Melbourne, Barcelona and Seattle, increasing the international mix of students to 32 countries.
They state that the Second Complainant’s sponsorship of sports events is an essential part of their marketing. In particular, the Second Complainant has been extensively involved in Formula One Racing. In 1995 the Second Complainant began its participation in Formula One Circuit/Racing, sponsoring the RED BULL SAUBER PETRONAS team which it co-owned until 2001. In January 2005, Red Bull took over the former Jaguar team and re-named it RED BULL RACING. In 2010, 2011 and 2012 Red Bull Racing won both the World Constructors’ (WCC) and Drivers Championship Title.
The Second Complainant, it is stated, also is involved in many other sports and sponsorship.
Therefore, through sales activities, television broadcasts, Internet activities and events sponsored by the Second Complainant, the RED BULL energy drink and the trademark RED BULL have become extremely well-known in many countries and famous in Austria. That reputation is confirmed by the statistics of studies conducted in 2003 in Germany and Austria, where 83,7% and 90% of the general public spontaneously associated the trademark RED BULL with the Second Complainant’s RED BULL energy drink. In a survey conducted in 2011 by the monthly magazine magic numbers, 94% of the worldwide respondents knew the brand Red Bull.
The Second Complainant is the registrant of a large number of domain names containing the RED BULL mark, both under generic and country-code Top-Level Domains. The Second Complainant’s main website “www.redbull.com” contains information on the RED BULL energy drink, sport activities, video records of sport events sponsored by the Second Complainant and links to other RED BULL websites, all of which regard marketing activities in relation to the famous trademark RED BULL. The RED BULL website “www.redbull.com” received approx. 430 million page views in 2013. It includes Red Bull’s local country and events websites. One single page view causes in average 8 hits on RED BULL websites.
The Second Complainant is the owner of multiple registrations and applications of trademarks consisting of or containing the famous RED BULL mark. The various trademark registrations and applications RED BULL of the Second Complainant cover an extensive range of goods and services and span all of 45 trademark classes. The Second Complainant and its subsidiaries hold national and international trademark registrations or applications consisting of or containing the mark RED BULL in Austria and further 206 jurisdictions worldwide such as Australia, Malta, the United States of America, Russian Federation, Canada, Germany, the United Kingdom, Brazil, South Africa, Hong Kong, China, Taiwan, Japan and Saudi Arabia. In addition, the Complainant holds various registered Community Trademark registrations or applications.
3. Complainants’ Trademark Rights
The Complainants hold exclusive rights to the DIETRICH MATESCHITZ word trademark.
The First Complainant is the owner of the international trademark registration IR 1193833 with the priority date November 12, 2013. The trademark is registered in 32, 36 and 41 trademark classes. The Second Complainant is a trademark licensee.
In addition, the Complainants hold unregistered or common law trademark rights in the name of the First Complainant
The Complainants state that according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.6 “While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name”.
The Complainants refer to Soin International LLC v. Michael W. Solley, PrivateRegContact Admin/TECH, WIPO Case No. D2007-0094, where the panel stated that “the consensus view among UDRP panelists is that a complainant may show that his or her personal name has taken on such a cachetthat it has become a trademark, but that to succeed in doing so the complainant will have to show that the name has actually been used in trade or commerce. The Complainant states that this is a considerable hurdle to vault and that the reason why some cases have failed to establish trademark rights in a personal name is that the evidence has shown only that the name is famous and not that it has been used in trade or commerce”.
The Complainants state that this present case involves a businessman who is the leader of the company that does not carry his own name. They refer to Chung, Mong Koo and Hyundai Motor Company v. Individual WIPO Case No. D2005-1068, in which the panel underlined that “eventually, such cases come down to whether the evidence establishes sufficient of a nexus between the name itself and its use and association in trade and commerce. […] [the] factors would include the extent to which the commercial community identifies the individual with the company, the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company, the extent of the personal ownership of the company by the individual, the degree of personal control that the individual exercises over the enterprise, the extent to which the individual is identified with any major achievements of the enterprise and whether, as was the case in Rattner, it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use”.
The Complainants state that the First Complainant is the co-founder and the Managing Director of the Second Complainant, where he holds 49 percent of the company's shares. They state that he is however internationally recognized not just simply as a billionaire who founded an energizing drinks company, but above all as the creator of the enormous marketing success of the Red Bull brand. His entrepreneurial skills and business sense are globally appreciated not as such, but always in connection with the Red Bull’s marketing philosophy.
They state that the First Complainant’s skills and achievements have been widely reported in the trade and general media, always being linked with the Red Bull brand. They refer to media citations, such as: “Master marketer – Dietrich Mateschitz – the brains behind the Red Bull energy drink”, “Selling energy – How Dietrich Mateschitz turned Red Bull into a cult tipple” (The Economist, May 9, 2002), “Marketing with wings: Dietrich Mateschitz and the art of branding”, “The man behind Red Bull's meteoric rise” (“How Dietrich Mateschitz Ignored The Haters And Created The Top Energy Drink On The Planet” – Business Insider website, “Learning from Dietrich Mateschitz, the Man Who Energized Red Bull” (Mc Graw Hill Business Blog).
The Complainants state that the First Complainant’s ability to promote the Red Bull brand through different kinds of sport events and activities was an inspiration for the Coventry University researchers’ work entitled “Entrepreneurship in Sport: How Dietrich Mateschitz built the Red Bull brand in a day”. The authors underlined the fact that, “the success of Red Bull as a brand, and Mateschitz as a sport entrepreneur, extends further than their success in building on the extreme sports counter-culture ethos that emerged in the 1980s and 1990s. Mateschitz and his partners took their time in developing the core product, its brand image, and marketing and extension strategies, in order best build the brand” (S. Chadwick, S. Gorse, N. Burton, The CIBS Working Paper Series no. 11, Coventry University 2009).
They also state that in 2012 the First Complainant was nominated for the Marketing Society’s “Marketer of the Year” award. The nomination was grounded on the fact that “Mateschitz is one of the most successful entrepreneurs of our age and a true marketing visionary. Not content with cracking the beverage market, he has also been instrumental in the success of the Red Bull Formula One motor racing team over the past 12 months. He is making inroads into the media world, too, with a burgeoning film, TV and magazines operation and plans to make Red Bull a leading content provider”.
The Complainants rely on their contention that Dietrich Mateschitz has not been nominated simply because of his involvement in the soft beverages industry in general, but because of his impact on the Red Bull marketing success.
They also contend that the First Complainant is internationally recognized as the boss of the Red Bull Racing Formula One team – winner of the 2010, 2011, 2012 and 2013 World Constructors’ (WCC) and Drivers Championship Title – and often cited in this role by media all over the world.
They state that the First Complainant is internationally known for being the Red Bull Managing Director and its success creator. A Google search of “Dietrich Mateschitz” name conducted on August 18, 2014 includes over 400,000 “hits” that relate to him and/or his business. They state that his clear connection between the First Complainant’s name and the Second Complainant’s goods and activities is shown by the results of Google Images search for “Dietrich Mateschitz” – most of the pictures present the First Complainant together with the RED BULL trademarks, Red Bull drink or with the Red Bull Racing Formula One Team.
The Complainants refer to Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0402: “in Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299, where it was held that, for a claim to be brought under the ICANN Policy based on a personal name, the Complainant must establish the distinctive character of the name. The panelist in that decision goes on to equate the distinctive character with whether or not the person in question is sufficiently famous in connection with the services offered by that complainant”.
The Complainants aver that, in the present case, there is a significant nexus between the First Complainant’s name itself and its use and association in trade and commerce. The name “Dietrich Mateschitz” is automatically associated with the Second Complainant and its activities. Due to long standing and extensive use of Dietrich Mateschitz name in connection with the Second Complainant’s brand, goods and activities both Complainants hold a common law trademark in the name Dietrich Mateschitz – they have thus demonstrable interest in protecting this name in the commercial use.
4. Respondent’s Identity and Activities
The Respondent is the owner of the Domain Name <dietrichmateschitz.com>.
The Domain Name incorporates “Dietrich Mateschitz” name and trademark in its entirety. The Complainants contend that the Respondent registered and is using the Domain Name in bad faith. They state that initially the Domain Name was used by the Respondent to display links to the offers of the Registrar – Crazy Domains LLC-FZ. After receiving the Second Complainant’s cease and desist letter of October 1, 2013, the Respondent removed the above content. They state that the content of the website under the Domain Name was, at the time of filing the complaint as follows: “Under construction. Nothing to Show Right Now. It appears whatever you were looking for is no longer here or perhaps wasn't here to begin with. You might want to try starting over from the homepage to see if you can find what you're after from there”. The Respondent did not however comply with the Second Complainant’s request to cancel the Domain Name. Instead, the Second Complainant was informed that the Respondent will consider “all reasonable offers and donations” in an exchange for the eventual transfer of the Domain name.
5. The Domain Name is Identical with or Confusingly Similar to Trademarks in which the Complainants Have Rights
The Complainants state that they hold an unregistered or common law trademark in DIETRICH MATESCHITZ. Through long standing and extensive use of DIETRICH MATESCHITZ in connection with the Red Bull GmbH’s brand, goods and activities, both Complainants hold an unregistered or common law trademark in DIETRICH MATESCHITZ. There is a significant connection between the First Complainant’s name itself and its use and association in trade and commerce. DIETRICH MATESCHITZ is automatically associated with the Red Bull company and its activities.
Additionally, the First Complainant owns a registration of the international word trademark DIETRICH MATESCHITZ. The First Complainant is the owner of the international trademark registration IR 1193833 with the priority date November 12, 2013. The trademark is registered in 32, 36 and 41 trademark classes.
The Domain Name completely integrates DIETRICH MATESCHITZ and the generic Top-Level Domain (“gTLD”) “.com”. It contains no additional words or suffixes.
The Complainants state that it is permissible for the panel to ignore the generic domain suffix.
The Complainants also refer to the panel stating in Barry Diller v. INTERNETCO CORP, WIPO Case No. D2000-1734, that “it being by now well-settled that the addition of a top level domain and the dropping of a space are irrelevant for the purposes of domain name mark analysis (see e.g. Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299, June 9, 2000)”.
As regards the content of the website under the Domain Name, the consensus view of the UDRP panelists is that it is irrelevant in the finding of confusing similarity. In particular, in Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the Panel stated that “there is an important distinction between the domain name on the one hand and the Website on the other. The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”.
The Complainants therefore submit that it has to be concluded that the Domain Name is identical to the DIETRICH MATESCHITZ name and trademark.
6. Respondent Has no Rights or Legitimate Interests in Respect of the Domain Name
The Complainants state that they have not licensed or otherwise permitted the Respondent to use DIETRICH MATESCHITZ, or to register or use any domain name incorporating this name and trademark.
They state that the Respondent is not commonly known by the domain name. Dietrich Mateschitz is not a common, popular name. Especially, it is extraordinary for the English-speaking countries, such as Australia, where the Respondent is located. Therefore, nobody would legitimately choose such a domain name, unless seeking to create an association to the Complainants.
This, the Complainants contend, confirms that the Respondent registered the Domain Name intentionally. Based on the fame of Dietrich Mateschitz and the fact that his name is automatically connected with the Second Complainant’s brand, goods and activities, they aver that it can be concluded beyond any doubt that the Respondent purposefully created a domain name, which consists of the First Complainant’s name. The Respondent has registered it to create the misleading impression of being in some way associated with the Complainants. They contend that the Respondent was and is quite obviously trying to exploit the fame and reputation of the Complainants’ trademark. The possible aim was to attract to the Respondent’s website Internet users looking for information on the Complainants and their activities. The Respondent had no legitimate reason for registering DIETRICH MATESCHITZ as a domain name. The Complainants state that the Respondent has registered and is using the domain name illegitimately.
Furthermore, the Complainants state, the panel correctly stated in case CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071, “A domain name is not merely an address, it is also a means of identification. As noted in the final report of WIPO: ‘Domain names were intended to perform a technical function in a manner that was convenient to human users of the Internet. They were intended to provide addresses for computers that were easy to remember and to identify without the need to resort to the underlying IP numeric address. Precisely because they are easy to remember and to identify, however, domain names have come to acquire a supplementary existence as business or personal identifiers. The adoption by the Respondents of an Internet address substantially identical or confusingly similar to that of the name, Internet address and trade marks of the Complainant must inevitably and misleadingly divert consumers to that address and have the effect of tarnishing the trade marks.” This is the same as in this case - the Respondent had no legitimate reason for registering DIETRICH MATESCHITZ as a domain name. The Respondent has registered and is using the Domain Name illegitimately.
The Complainants state that none of the circumstances listed under paragraph 4(c) of the Policy, possibly
demonstrating rights or legitimate interests, apply. The Respondent is not authorized or related to either of the Complainants in any way. The Respondent is not commonly known by the Domain Name. The Respondent is making illegitimate use of the Domain Name with intent to derive commercial advantage from its registration and prevents the trademark holders from exercising their rights to the trademark and managing their presence in the Internet.
7. The Domain Name was Registered and is Being Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith, which are as follows:
(i) circumstances indicating that you 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 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 your web site or location or of a product or service on your web site or location.
The Complainant relies on a statement by the panel in Brown & Williamson Tobacco Corp., et al. v. Dennis Wilkins, WIPO Case No. D2001-0865: “the four criteria set forth in the Policy paragraph 4(b) are nonexclusive - case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith”.
The Complainants state that initially the Domain Name was used by the Respondent to display links to the offers of the Registrar – Crazy Domains LLC-FZ. They state that on October 1, 2013, the Second Complainant sent the cease and desist Letter to the Respondent stating that the usage of the Domain Name was unlawful. After receiving the cease and desist letter the Respondent removed the above content. The Respondent did not however comply with the Second Complainant’s request to cancel the Domain Name. Instead, the Complainants were informed in the Respondent’s reply that the Respondent will consider “all reasonable offers and donations” in the exchange for the eventual transfer of the Domain Name.
The Complainants rely on Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556, in which the panel resolved that “Respondent’s bad faith is further illustrated by the fact that it was officially informed of Complainant’s rights in the VOLVO mark after receiving a cease and desist letter requesting the transfer of the first spotted disputed Domain Name <volvomasters.com> to Complainant. Respondent failed to comply with such request offering instead, which is a further indication of its bad faith, to sell the disputed Domain Name to Complainant for US $135.00, which is in excess of the out of pocket expenses (US $14.95) incurred by Respondent for the Domain Name’s registration with the Registrar. Although the selling of the Domain Name may not appear to be the primary purpose of registering the Domain Name by Respondent, the Panel is of the opinion that Respondent by this unreasonable offer has been only guided into making again easy profit out of the Domain Name if not by successfully trading on the fame of the trademark through the website, at least by re-selling it to Complainant for an unreasonable sum exceeding by far the Domain Name registration fees paid by Respondent”. This, the Complainants contend, is also applicable in the current case – the Respondent did not cancel the Domain Name, counter to the Complainant’s cease and desist letter requesting the cancellation, but in order to make an easy profit of the Domain Name offered to re-sell it to the Complainants.
What is more, they state, as a panel recognized in one previous decision “in his reply to the Complainants’ first Complaint, the Respondent stated: “If you really need the domain name, I am amicably willing to negotiate for settlement.” This a clear indication that the Respondent was willing to sell the registration in exchange for money – more than likely in excess of his out-of-pocket costs. There could be no other reason for the Respondent registering a domain name comprising an unusual combination of trademarks with which he had no previous connection and in respect of which he had no rights or legitimate interest (see Sonera Ojy and Telia AB (Publ.) v. Daungsoo Ghim, WIPO Case No. D2002-0403). Likewise in the current case, they submit, there can be no other reason for the Respondent registering a domain name comprising a well-known businessman’s name in which both Complainants hold a common trademark rights and international trademark rights as well, with which he had no previous connection and in respect of which he had no rights or legitimate interest.
They refer to Redcats S.A. And La Redoute S.A. v. Tumay Asena, WIPO Case No. D2001-0859: “additionally, in WIPO Case No. D2000-0003, paragraphs 7.9 to 7.11, as well as in other WIPO decisions, it was ascertained that passive holding of a domain name may be sufficient to constitute bad faith use, taking into consideration the overall context of Respondent's behavior”.
The Domain Name, although deactivated has not been cancelled. The Complainants contend that the Respondent’s inaction since October 2013 resulted from Complainant’s cease and desist letter constitutes a passive holding of the Domain Name. Parking the Domain Name makes it easy to be resold or activated at any time by the Respondent and should be treated as acting in bad faith. Taking into account the Respondent’s behavior (offer to sell), the Complainants state that it is not possible to imagine of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate. Considering all circumstances of the case, in particular the Complainants’ trademark and common trademark rights in the First Complainant’s name, as recommended by the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Complainants submit that it should be concluded that the Domain Name is being used in bad faith by the Respondent.
Additionally, the Complainants state that the Respondent is the owner of another domain name consisting of another well-known businessman’s name: <darwindeason.com> as well. Darwin Deason is a founder of ASC (Affiliated Computer Services), which he sold to XEROX for USD 6.4 billion in 2010. He is ranked in the Forbes Magazine’s Billionaires List on the 1342 position. It cannot be mere coincidence or innocence that the Respondent registered the domain name incorporating the other famous businessman’s name.
All above constitute evidence of bad faith registration and use according to paragraphs 4(b)(i), (ii) and (iii) of the Policy, the Complainants submit.
With regard to the registration date of the word trademark DIETRICH MATESCHITZ No. 1193833 which is later than the registration of the Domain Name, the Complainant states that, according to the WIPO Overview 2.0, paragraph 3.1, “when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found”.
The Complainants rely on the fact that UDRP panels have previously found the bad faith in the registration of the domain names which were prior to trademark or service mark registration applications of the Complainants inter alia in cases: AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598.
In Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320, the panel stated that, “on the other hand, as the translations to the trademark and service mark registrations of Complainant show that Respondent's registration of the Domain Name was prior to any of the trademark or service mark registration applications of Complainant, the first of which were filed in 1999, whereas the Domain Name was registered in 1998. The Panel is well aware that that this situation is not directly addressed by paragraph 4(b) of the Policy. Paragraph 4(b), however, is a non-exclusive enumeration of circumstances that may prove the existence of bad faith of the disputed domain name holder. Considering the circumstances under which the Respondent registered the Domain Name - Kangwon Land, Inc. was established in June 1998, and Respondent registered the Domain Name in September of the same year -, the Panel comes to the conclusion that Respondent registered the Domain Name fully conscious of what "business" he could make out of mistakenly being affiliated with the Complainant. As a Korean national allegedly in the online casino business, Respondent must have known Complainant's reputation as a state-run casino, established by special law”.
The same, the Complainants submit, applies to the present case. Evidence materials presented in this Complaint show that the Respondent must have known of the First Complainant and his connection with the Second Complainant’s brand and activities. Therefore, they contend that the Respondent registered the Domain Name fully conscious of what "business" he could make out of mistakenly being affiliated with the Complainants.
Both the Respondent’s registration and use of the Domain Name, they claim, were intentional for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainants who are the owners of the common trademark rights and the international trademark rights, for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Name. Registration of the Domain Name in question may be also considered as made in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. The Domain Name appears to be designed to take advantage of the confusion between the Domain Name and the Complainants trademark rights and appears to cause confusion with the Complainants’ marks and websites.
In light of all above, the Complainants submit that the requirement of registration and use of the Domain Name by the Respondent in bad faith is fulfilled for the Domain Name.
The Respondent did not formally reply to the Complainant’s contentions despite having indicated that it would do so in its email communication of August 30, 2014.
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainants to obtain relief. These elements are:
(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainants have rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) The Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed further below.
The Complainants must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.
In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009). However, it is common practice for panelists to make their own enquiries when considering the claims set out in the Complaint.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Domain Name.
The Complainants submit that the Domain Name is identical to the common law and international trademark registered on November 12, 2013, which the First Complainant has registered in his own name and is licensed to the Second Complainant. The only difference is the addition of the generic Top-Level Domain (“gTLD”) suffix “.com”. The Panel finds that that the Domain Name is identical as the “.com” suffix may be disregarded in this comparison.
However, in the context of the common law trade mark asserted, the issue of whether this personal name can be a common law trade mark arises.
According to the WIPO Overview 2.0, paragraph 1.6: “While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name”.
In Soin International LLC v. Michael W. Solley, PrivateRegContact Admin/TECH, WIPO Case No. D2007-0094, the panel stated that “the consensus view among UDRP panelists is that a complainant may show that his or her personal name has taken on such a cachet that it has become a trademark, but that to succeed in doing so the complainant will have to show that the name has actually been used in trade or commerce. It will instantly be seen that this is a considerable hurdle to vault and that the reason why some cases have failed to establish trademark rights in a personal name is that the evidence has shown only that the name is famous and not that it has been used in trade or commerce”.
The case in issue in the proceedings now in dispute involves a businessman who is the leader of the company that does not carry his own name. Such a situation was recognized, inter alia, in Chung, Mong Koo and Hyundai Motor Company v. Individual WIPO Case No. D2005-1068, in which the panel underlined that “eventually, such cases come down to whether the evidence establishes sufficient of a nexus between the name itself and its use and association in trade and commerce. In undertaking that exercise, it is useful to consider a number of guides, for they can be no more than that, that will tend to suggest one way or the other, whether such a nexus has been established and might over time help to establish the ‘pattern’ of consistent authority that the panelist in the Asper Case lamented is presently absent. Those factors would include the extent to which the commercial community identifies the individual with the company, the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company, the extent of the personal ownership of the company by the individual, the degree of personal control that the individual exercises over the enterprise, the extent to which the individual is identified with any major achievements of the enterprise and whether, as was the case in Rattner, it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use”.
The First Complainant is the co-founder and the Managing Director of Red Bull GmbH, where he holds 49 percent of the company's shares. He is however internationally recognized not just simply as a billionaire who founded an energizing drinks company, but above all as the creator of the enormous marketing success of the Red Bull brand.
The recognition and accolades of the First Complainant relate to his very successful promotion of the Second Complainant through high profile sporting activities, sponsorship and a wide range of marketing activities which he spearheads.
The Respondent has not challenged the evidence provided by the Complainants in connection with the First Complainant’s international reputation in this context as evidenced by the media citations linking the First Complainant to the Second Complainant’s brand or the nexus between the First Complainant’s name and his role as co-founder, 49% shareholder and Managing Director of the Second Complainant. The Panel accepts that the First Complainant and his activities are inextricably linked to the business of the Second Complainant.
The Panel finds that the First Complainant’s name is being used for trade and commerce in a manner which is to the advantage of the Complainants.
The First Complainant’s registered trade mark is also identical to the Domain Name and the Panel accepts that in the circumstances the later registration does not affect the finding of identity. See WIPO Overview 2.0, paragraph 1.4.
Accordingly, the Panel finds that the Complainants have satisfied the first requirement.
The Respondent has failed to provide any explanation to undermine the Complainants’ contention that the registration was not based on any rights or legitimate interests.
The Panel accepts that the Complainants have not licensed or otherwise permitted the Respondent to use DIETRICH MATESCHITZ, or to register or use any domain name incorporating this name and trademark.
The Panel accepts that the Respondent is not commonly known by the Domain name. Dietrich Mateschitz is not a common, popular name and that it is an unusual name for the English-speaking countries, such as Australia, where the Respondent is located. It accepts that nobody would legitimately choose such a domain name, unless seeking to create an association to the Complainants.
The Panel accepts that the Respondent had no legitimate reason for registering DIETRICH MATESCHITZ name and trademark as a domain name.
The Panel finds that none of the circumstances listed under paragraph 4(c) of the Policy, possibly
demonstrating rights or legitimate interests, are given. The Respondent is not authorized by or related to either of the Complainants in any way. The Respondent is not commonly known by the Domain Name.
In addition the Respondent is the owner of other domain name consisting of other well known businessman’s name: <darwindeason.com> domain name as well. Darwin Deason is a founder of ASC (Affiliated Computer Services), which he sold to XEROX for USD 6.4 billion in 2010.
The Panel therefore accepts that the Respondent is making illegitimate use of the Domain Name with intent to derive commercial advantage from its registration and prevents the trademark holders from exercising their rights to the trademark and managing its presence in the Internet.
The Complainants have therefore made out their case on the second requirement of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith, which are as follows:
(i) circumstances indicating that you 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 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 your web site or location or of a product or service on your web site or location.
As the panel stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003: “the four criteria set forth in the Policy paragraph 4(b) are nonexclusive - In addition to these criteria, other factors alone or in combination can support a finding of bad faith”. See also Brown & Williamson Tobacco Corp., et al. v. Dennis Wilkins, WIPO Case No. D2001-0865.
The Panel accepts that initially the Domain Name was used by the Respondent to display links to the offers of the Registrar – Crazy Domains LLC-FZ and that on October 1, 2013 the Second Complainant sent the cease and desist letter to the Respondent stating that the usage of the Domain Name was unlawful. The Panel accepts that after receiving the letter the Respondent removed the above content and that the Respondent did not however comply with the Second Complainant’s request to cancel the Domain Name, instead informing the Complainants that the Respondent would consider “all reasonable offers and donations” in the exchange for the eventual transfer of the Domain Name.
In Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556, the Panel resolved that “Respondent’s bad faith is further illustrated by the fact that it was officially informed of Complainant’s rights in the VOLVO mark after receiving a cease and desist letter requesting the transfer of the first spotted disputed Domain Name <volvomasters.com> to Complainant. Respondent failed to comply with such request offering instead, which is a further indication of its bad faith, to sell the disputed Domain Name to Complainant for US $135.00, which is in excess of the out of pocket expenses (US $14.95) incurred by Respondent for the Domain Name’s registration with the Registrar. Although the selling of the Domain Name may not appear to be the primary purpose of registering the Domain Name by Respondent, the Panel is of the opinion that Respondent by this unreasonable offer has been only guided into making again easy profit out of the Domain Name if not by successfully trading on the fame of the trademark through the website, at least by re-selling it to Complainant for an unreasonable sum exceeding by far the Domain Name registration fees paid by Respondent”.
The Panel accepts that this is also applicable in this case – the Respondent did not cancel the Domain Name, but indicated that it was looking for “offers and donations”.
In this case, the Panel accepts that there can be no other reason for the Respondent registering a domain name comprising a well-known businessman’s name in which the Complainants hold unregistered or common trademark rights and international trademark rights either as proprietor or licensee, with which he has no previous connection and in respect of which he has no rights or legitimate interests.
As stated in Redcats S.A. And La Redoute S.A. v.Tumay Asena, WIPO Case No. D2001-0859, “additionally, in WIPO Case No. D2000-0003, paragraphs 7.9 to 7.11, as well as in other WIPO decisions, it was ascertained that passive holding of a domain name may be sufficient to constitute bad faith use, taking into consideration the overall context of Respondent's behavior”.
The Panel accepts that the Domain Name, although deactivated, has not been cancelled and that the Respondent’s inaction since October 2013 resulted from the Complainant’s cease and desist letter constitutes a passive holding of the Domain Name and that parking the Domain Name makes it easy to be resold or activated at any time by the Respondent and the Panel accepts that this shall be treated as acting in bad faith. Taking into account the Respondent’s behavior (offer to sell), it is not possible to imagine of any legitimate plausible actual or contemplated active use of the Domain Name by the Respondent.
With regard to the registration date of the word trademark DIETRICH MATESCHITZ No. 1193833 which is later than the registration of the Domain Name, the Panel accepts that, according to the WIPO Overview 2.0, paragraph 3.1, “when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found”.
Considering all circumstances of the case, in particular the Complainants’ registered and unregistered trademark rights in the First Complainant’s name, the Panel finds that the Domain Name was registered and is being used in bad faith by the Respondent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <dietrichmateschitz.com> be cancelled.
Isabel Davies
Sole Panelist
Date: October 15, 2014