WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

T.C. Pharmaceutical Industries Co., Ltd v. junzhi wang, beijing hongniuyinliao xiaoshouyouxiangongsi

Case No. D2021-1297

1. The Parties

The Complainant is T.C. Pharmaceutical Industries Co., Ltd, Thailand, internally represented.

The Respondent is junzhi wang, beijing hongniuyinliao xiaoshouyouxiangongsi, China, represented by Han Kun Law Offices, China.

2. The Domain Names and Registrar

The disputed domain names <hongniu.cc>, <红牛.net> [xn--11xv5x.net], <redbullbeijing.com>, <redbullchina.cc>, <redbullchina.com>, <redbullec.com>, <redbulleln.com>, <redbull-sponsor.com>, <redbullwork.cc>, <redbullwork.com>, and <红牛.tv> [xn--11xv5x.tv] are all registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).¹

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 27 and April 29, 2021, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant of all the disputed domain names 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 7, 2021. In accordance with the Rules, paragraph 5, the original due date for the Response was May 27, 2021. On May 6, 2021, prior to the formal notification of the Complaint, the Respondent had requested an extension of the due date for the Response, to which the Complainant objected on May 7, 2021. On May 8, 2021, the Respondent reiterated its request for an extension of the due date for the Response due to the COVID-19 pandemic and requested that the language of the proceeding be Chinese. On May 10, 2021, the Complainant objected to any extension of the due date for the Response and indicated that the default language of the proceeding shall be English because the language of the Registration Agreements for the disputed domain names is English. On May 11, 2021, the Respondent confirmed its requests for an extension of the due date for Response and that the language of the proceeding be Chinese. On May 12, 2021, in accordance with the Rules, paragraphs 5(b) and (e), the Center exceptionally extended the due date for the Response to June 6, 2021. Further, the Center indicated that the Registrar had confirmed that the language of the Registration Agreements for the disputed domain names is English, and the Panel has the discretion to determine the language of the proceeding in accordance with the Rules, paragraph 11(a). The Response was filed in English on June 6, 2021.

The Complainant sent an unsolicited supplemental filing to the Center on June 28, 2021. The Complainant sent a second unsolicited supplemental filing to the Center on July 15, 2021 and supplemented it with additional information on the following day.

The Center appointed Matthew Kennedy, Joseph Simone and Dr. Hong Xue as panelists in this matter on July 19, 2021. The Panel finds that it was properly constituted. Each member of the Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with the Rules, paragraph 7.

Pursuant to paragraphs 10 and 12 of the Rules, the Panel issued Administrative Panel Procedural Order No. 1 on August 10, 2021, in which it indicated that the Panel had decided to accept the Complainant’s supplemental filings, and it invited the Respondent to comment on the Complainant’s supplemental filings by August 16, 2021. In the same Order, the Panel extended the Decision due date to August 22, 2021. The Respondent submitted its comments on the Complainant’s supplemental filings on August 16, 2021. The Complainant submitted another unsolicited supplemental filing on August 18, 2021.

4. Factual Background

The Complainant is part of a Thai food and beverage group which sells energy drinks, electrolyte beverages, functional drinks and snacks. Its products include the RED BULL energy drink. RED BULL was ranked in 69th place in Forbes’ 2020 list of the world’s most valuable brands. The Complainant first established a commercial presence in mainland China in 1993 when the Complainant’s founder registered Hainan Red Bull Drink Co., Ltd. The Complainant owns trademark registrations in multiple jurisdictions, including:

- International trademark registration number 641378G for RED BULL, registered on February 24, 1995, specifying goods and services in multiple classes, including various beverages in class 32;

- Chinese trademark registration number 878073 for RED BULL 紅牛, registered on October 7, 1996, specifying various beverages in class 32; and

- Chinese trademark registration number 1289559 for 红牛 RED BULL and device, registered on June 28, 1999, specifying various beverages in class 32.

The Complainant entered into a joint venture agreement on November 10, 1995 with three other parties to form a joint venture company in Shenzhen named “红牛维他命饮料有限公司” or “Red Bull Vitamin Drink Co., Ltd”. Among the purposes of the joint venture was the introduction of the Red Bull vitamin drink to China. The agreement provided that the trademarks of the joint venture company’s products were part of the joint venture company’s assets. The Complainant entered into a new joint venture agreement on August 31, 1998 with three other parties to establish a joint venture company with the same name in Beijing. Red Bull Vitamin Drink Co., Ltd obtained a 20-year Chinese business license from September 30, 1998. The Complainant entered into trademark license agreements with Red Bull Vitamin Drink Co. Ltd, including an agreement dated November 1, 2006, covering Chinese trademark registration number 878073 and an agreement dated June 1, 2009 covering inter alia Chinese trademark registration number 1289559. The terms of both these agreements ran until October 6, 2016. They did not expressly authorize the licensee to register domain names. According to Beijing High People’s Court Civil Ruling (2019) 京清终4号, the business license of Red Bull Vitamin Drink Co., Ltd expired on September 29, 2018, as a result of which two foreign shareholders applied for compulsory liquidation of the company on October 15 and 17, 2018, respectively, but the company has not been liquidated due to a dispute regarding their share ownership. According to the Respondent, Red Bull Vitamin Drink Co., Ltd filed an application for a new business license, which is currently pending.

The China Beverage Industry Association certified that Red Bull Vitamin Drink Co., Ltd had a high production and market share among Chinese functional beverage companies in the years 1996 to 2017. Red Bull Vitamin Drink Co., Ltd also won various industry awards during the period 2004 to 2015.

A trademark ownership dispute arose between Red Bull Vitamin Drink Co., Ltd and the Complainant, in which the former claimed ownership of the RED BULL trademarks in China (including trademark registration number 878073). These claims were rejected by the Beijing High People’s Court and that judgement was upheld on appeal by the Supreme People’s Court of China on December 21, 2020. See (2020) 最高法民终394号. During the litigation, the Respondent provided a copy of a license agreement allegedly concluded on November 10, 1995 in which the Complainant and three other parties agreed that Sino-Thai Red Bull Vitamin Drink Co., Ltd (or the company with another government-approved name) had the exclusive right to manufacture and sell Red Bull drinks within the territory of the People’s Republic of China for 50 years. However, the Supreme People’s Court considered the authenticity of this document to be dubious and declined to accept it.

The Respondent individual is “junzhi wang” (王俊芝) which may also be written as “Wang Junzhi”, and the Respondent organization is “beijing hongniuyinliao xiaoshouyouxiangongsi”, presumably a transliteration of “北京红牛饮料销售有限公司” which may be translated as “Beijing Red Bull Beverage Sales Co., Ltd”.

The Respondent Wang Junzhi entered into an employment contract with Red Bull Vitamin Drink Co., Ltd for an indefinite duration from January 1, 2012. The contract was amended on July 16, 2014, January 1, 2017 and most recently on May 1, 2018, when she became head of the Application Systems Management Department within the Information Management Department of the company’s Strategic Research and Development (R&D) Center.

The disputed domain names were created on various dates between October 15, 2001, and April 3, 2015. According to archived screenshots provided by the Respondent, the disputed domain name <redbullwork.com> formerly resolved to an office work platform for Red Bull Vitamin Drink Co., Ltd from 2001 to 2003 and possibly as late as 2006; while the disputed domain name <redbullchina.com> formerly resolved to a website for Red Bull Vitamin Drink Co., Ltd where it promoted Red Bull drinks in 2005, 2007, from 2015 to 2017, in August 2019, and possibly at times in between.

The Respondent individual and organization acquired the disputed domain names by transfer during the periods set out in the table below.² These were not mere updates of the registration details. The prior registrant (but not necessarily the original registrant) was named in the Registrar’s WhoIs as “xuhui xie” or “xie xuhui” and the registrant organization was named as “redbull” or “redbull redbull”. Xie Xuhui (谢旭晖) was an employee in the Information Management Department of Red Bull Vitamin Drink Co., Ltd.

At the time of the filing of the Complaint, none of the disputed domain names resolved to any active website; rather, they were all passively held. However, at the time of this Decision, the disputed domain name <redbullwork.com> resolves to a website displaying Capri-Sun juice beverages or Vita-Coco coconut water and a username and password login form .

5. Parties’ Contentions

A. Complainant

The disputed domain names <redbullbeijing.com>, <redbullchina.cc>, <redbullchina.com>, <redbullec.com>, <redbulleln.com>, <redbull-sponsor.com>, <redbullwork.cc> and <redbullwork.com> are confusingly similar to the Complainant’s RED BULL registered trademark. The disputed domain names <红牛.net>, <红牛.tv> and <hongniu.cc> are identical to the Complainant’s 红牛 registered trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not licensed or otherwise authorized the Respondent to use any of its trademarks or any variations or combinations thereof or to register or use a domain name incorporating any of those trademarks. The disputed domain names currently do not resolve to any active websites. The Respondent individual’s name is very different from “Red Bull” and the Complainant never authorized any entity by the name of “beijing hongniuyinliao xiaoshouyouxiangongsi”.

The disputed domain names were registered and are being used in bad faith. The disputed domain names were registered later than the Complainant’s earliest Chinese trademark registrations for RED BULL and 红牛. Due to the renown of the Complainant’s RED BULL trademark, it would be implausible for the Respondent not to have been aware of them at the time of registration of the disputed domain names. Given the Respondent organization’s name, it is reasonably anticipated that it is engaged in beverage sales in direct competition with the Complainant and registered the disputed domain names primarily for the purpose of disrupting the business of the Complainant. Moreover, the Respondent has also registered domain names that contain “redbull” and “红牛” in the “.cn” country code Top-Level Domain (“ccTLD”) so the Complainant reasonably believes that it registered the disputed domain names in order to prevent the Complainant from reflecting its RED BULL and 红牛 trademarks in a corresponding domain name.

The Respondent is not Red Bull Vitamin Drink Co., Ltd. The business license of that company expired on September 30, 2018. The Respondent Wang Junzhi has only provided her employment contracts with that company up to 2018. The Complainant believes that she is no longer an employee of that company but, rather, that she has worked for a direct competitor of the Complainant since 2019 when the disputed domain names were transferred to her control. The Complainant’s trademark licenses to Red Bull Vitamin Drink Co., Ltd have terminated. The licensing agreements never explicitly authorized Red Bull Vitamin Drink Co., Ltd, let alone authorized an individual named Wang Junzhi, to register domain names containing the Complainant’s RED BULL trademark. Any domain names should have been registered in the name of the Complainant. Most if not all the disputed domain names were transferred to the control of Wang Junzhi in 2019 after the expiry of the licensing agreement between the Complainant and Red Bull Vitamin Drink Co., Ltd. Bad faith should be assessed as of the date on which the current registrant acquired the disputed domain names.

Red Bull Vitamin Drink Co., Ltd reached the end of its business license term as of September 30, 2018 and could no longer pay social insurance and taxes on behalf of its employees as required by law. Therefore, it can reasonably be concluded that Wang Junzhi has ceased to work for that company and is instead currently working for one of the subsidiaries of Reignwood Investment (China) Co., Ltd (“Reignwood”), possibly Beijing Red Bull Beverages Sales Marketing Co., Ltd, which coincides with the registrant organization name “beijing hongniuyinliao xiaoshouyouxiangongsi”. Reignwood is related to the Complainant’s former joint venture partner. Reignwood and its subsidiaries still engage in the sale of Red Bull vitamin functional drink even though the RED BULL trademark license from the Complainant expired in 2016. Reignwood and its subsidiaries also engage in the sale of other branded beverages such as Capri-Sun, Vita-Coco, War Horse and Voss, all of which are in direct competition with the Complainant. The Complainant has temporarily lost control over Red Bull Vitamin Drink Co., Ltd, notwithstanding that the ultimate beneficial owners of the Complainant are the majority shareholders, which explains why the Complainant could not complete the legal formalities to liquidate that company and also explains why the Complainant has limited access to information regarding that company’s employees. After the expiration of the trademark license agreements in 2016 and the expiration of the business license of Red Bull Vitamin Drink Co., Ltd in 2018, the Complainant believes that the disputed domain names were deliberately transferred to the Respondent’s control to serve Reignwood and its subsidiaries in which the Complainant has no equity interests. This pattern of behavior implemented by the Respondent constitutes bad faith registration and use of the disputed domain names.

B. Respondent

The Respondent Wang Junzhi and the original registrant of the disputed domain names, Xie Xuhui, are employees in the Information Management Department of Red Bull Vitamin Drink Co., Ltd. Both individuals have employment contracts of indefinite duration with that company and they remain employed with it. Red Bull Vitamin Drink Co., Ltd is the party that actually owns and uses the RED BULL trademarks. The Respondent Wang Junzhi and her colleague, the original registrant, are responsible for conducting registration/transfer/renewal of the disputed domain names. It was inaccurate for the Respondent to name “beijing hongniuyinliao xiaoshouyouxiangongsi” as the registrant organization when some disputed domain names were transferred to her.

Red Bull Vitamin Drink Co., Ltd has rights or legitimate interests in respect of the disputed domain names. Not only are “红牛” and “Red Bull” its trade names, they are also the brand names of its only product, i.e., Red Bull Vitamin Functional Drink. Red Bull Vitamin Drink Co., Ltd has sold drinks with these trade names on them for nearly 30 years in China and Red Bull has become a highly famous and extremely influential brand in Chinese market. Red Bull Vitamin Drink Co., Ltd has the exclusive right to use the trademarks 红牛 and RED BULL in mainland China according to a 50-year license agreement even though the trademarks are currently registered in the name of the Complainant. The Complainant clearly expressed its intention in the joint venture agreement to provide the trademarks 红牛 and RED BULL to Red Bull Vitamin Drink Co., Ltd and, for this purpose, the two parties even signed a series of pro forma trademark licensing agreements.

The disputed domain names were registered and are being used in good faith. The disputed domain names are closely related to the principal business of Red Bull Vitamin Drink Co., Ltd and are actually used by it for the operation and promotion of Red Bull vitamin functional drinks. The disputed domain names were long used by Red Bull Vitamin Drink Co., Ltd although some are not used at present. For example, the disputed domain name <redbullchina.com> was used in connection with the official website of Red Bull Vitamin Drink Co., Ltd to sell Red Bull vitamin functional drinks. In 2001, the disputed domain name <redbullwork.com> was used in connection with the online work platform of Red Bull Vitamin Drink Co., Ltd, together with a link connected to the official website of Red Bull Vitamin Drink Co., Ltd, and it is still used in connection with a business network work platform on which fast-moving consumer goods are sold (including Red Bull vitamin functional drinks). Certain disputed domain names were never actively used due to commercial considerations. Accordingly, Red Bull Vitamin Drink Co., Ltd used and is still using the trade names corresponding to the disputed domain names in connection with a bona fide offering of goods or services.

Most of the disputed domain names were registered more than 10 years ago in a context of friendly cooperation between the Complainant and Red Bull Vitamin Drink Co., Ltd. The Complainant even granted it licenses to the trademarks containing 红牛 and RED BULL. These facts indicate that the Complainant was aware of and recognized the fact that Red Bull Vitamin Drink Co., Ltd was registering the disputed domain names and using them to carry out business activities. This also explains why the Complainant never raised any objections or questions regarding the disputed domain names during the last 10 years before it filed the Complaint.

The Complaint and evidence submitted by the Complainant are not sufficient to prove that the registration and use of the disputed domain names are in bad faith. The Complainant licensed Red Bull Vitamin Drink Co., Ltd to use its trademarks and provided inputs and technical support. The Complainant failed to provide any evidence to prove its claim that the purpose of registering the disputed domain names was to interfere with the business of the Complainant. The Respondent/Red Bull Vitamin Drink Co., Ltd registered other domain names in the “.cn” ccTLD to meet its business development needs.

Red Bull Vitamin Drink Co., Ltd legally exists. Although the term in its business license expired in 2018, it submitted an application for extension to the relevant government authorities, which has been accepted and is being processed. Given that the Thai shareholder’s application for compulsory liquidation of Red Bull Vitamin Drink Co., Ltd was unsuccessful, the company has never entered the liquidation procedure and is a legally existing commercial subject. The Respondent has already provided her employment contract and other evidence to prove that she currently holds her position at Red Bull Vitamin Drink Co., Ltd. Her social security information is personal data and irrelevant to this case.

The 50-year license agreement is valid and provides that Red Bull Vitamin Drink Co., Ltd holds legitimate rights and interests in the “Red Bull series trademarks”. The parties specifically provided in the agreement for “exclusivity/non-competition” and an “operation period of 50 years”. Article 1 specifies that only Red Bull Vitamin Drink Co., Ltd has the right to produce and sell Red Bull drinks in China, which means that only that company has the right to use Red Bull series trademarks during the term of the agreement. Article 7 specifies that the term of the agreement is 50 years. The Agreement is authentic and effective and is the true declaration of intent of the parties, and therefore is binding on all contracting parties. All parties except the Complainant have confirmed its authenticity. An expert opinion has confirmed that the signatures of the Complainant’s legal representative on the agreement and the articles of association of Red Bull Vitamin Drink Co., Ltd are the same. The Complainant never previously objected to the authenticity of either.

The Respondent and Red Bull Vitamin Drink Co., Ltd never received the Complainant’s 2017 warning letter. The Respondent reasonably suspects that it was most probably produced or forged by the Complainant in the recent past. The Respondent and Red Bull Vitamin Drink Co., Ltd have been registering and using the majority of the disputed domain names for more than 10 years. Even if the validity of the trademark license agreement had been in dispute since 2017, as the Complainant claims, the Complainant became aware that Red Bull Vitamin Drink Co., Ltd registered and used the disputed domain names to carry out business activities. This also explains why the Complainant never raised any objections or questions regarding the disputed domain names during the last 10 years before it filed the Complaint in this proceeding.

6. Discussion and Findings

6.1. Preliminary Issues

A. Identification of the Respondent

The Response was filed on behalf of the Respondent Wang Junzhi only, who submits that it was “inaccurate” for her to fill out the name “beijing hongniuyinliao xiaoshouyouxiangongsi” in the registrant organization column when the disputed domain names were transferred to her.

According to the Rules, paragraph 1, the “Respondent” is the holder of a domain name registration against which a complaint is initiated. In the present proceeding, the Registrar has confirmed that, for all disputed domain name registrations, the holder or registrant name is “junzhi wang” and the holder or registrant organization is “beijing hongniuyinliao xiaoshouyouxiangongsi”. The Complainant has initiated the Complaint against both of them. The Registrar did not confirm that Red Bull Vitamin Drink Co., Ltd is the holder of any of the disputed domain names and the Complaint has not been initiated against that company.

Accordingly, the Panel finds that the Respondent individual in this proceeding is “junzhi wang” (referred to below as “Wang Junzhi”) and the Respondent organization is “beijing hongniuyinliao xiaoshouyouxiangongsi” (referred to below as “Beijing Red Bull Beverage Sales Co., Ltd”).

B. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “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 Registrar confirmed that the Registration Agreements for all the disputed domain names are in English.

The Respondent originally requested that the language of the proceeding be Chinese but subsequently submitted the Response in English. The Complainant requests that the language of the proceeding be English.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that both the Complaint and Response were filed in English, although some annexes are in Chinese. It is clear that both Parties understand English and Chinese, as does the Panel. Therefore, the Panel considers that requiring either Party to translate any document that it has not already translated would create an undue burden and delay whereas accepting all submissions in their original language without translation, where none was provided, does not create unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept annexes as filed in English or Chinese with or without translation.

C. Complainant’s Unsolicited Supplemental Filings

The Complainant made three unsolicited supplemental filings, the first one on June 28, 2021, the second one on July 15, 2021 (supplemented with further information on the following day), and the last one on August 18, 2021. The first two were filed after receipt of the Response and prior to the appointment of the Panel while the third was filed after receipt of the Respondent’s comments on those supplemental filings and after the appointment of the Panel. The Complainant made its first supplemental filing in order to address some of the issues raised in the Response and to present additional evidence. It made its second supplemental filing to further explain why it believed that the Respondent no longer worked for Red Bull Vitamin Drink Co., Ltd as of 2019, and to reiterate that the last trademark license agreement between the Complainant and Red Bull Vitamin Drink Co., Ltd ended as of October 6, 2016. It submitted its third supplemental filing to provide further clarifications and as well as to raise questions regarding the credibility of the Respondent regarding its statements in its comments on the Complainant’s previous supplemental filings.

Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.

As regards the Complainant’s first and second supplemental filings, the Panel notes that they seek to address the Respondent’s claims that she is employed by Red Bull Vitamin Drink Co., Ltd and that the company still has rights to the RED BULL trademarks. These supplemental filings provide relevant information regarding the status of those rights, which allows the Panel to rule on a fuller record. The Panel considers the circumstances of this case to be exceptional, as the Response raised issues regarding a party with whom the Complainant had a prior business relationship in China and which the Complainant could not reasonably have foreseen were relevant to the named Respondent. The Respondent does not object to the admission of these supplemental filings and has taken the opportunity afforded by the Panel to comment on them. In these exceptional circumstances, the Panel decides to accept the Complainant’s first and second supplemental filings.

As regards the Complainant’s third supplemental filing, the Panel notes that it seeks to further address matters that the Complainant has already addressed. The Respondent has not had an opportunity to comment on it. Accepting this filing will further delay the proceeding. Accordingly, the Panel sees no exceptional circumstances that would justify accepting this supplemental filing.

Therefore, the Panel will accept the Complainant’s first and second supplemental filings but declines to accept its third supplemental filing.

D. Requests for Panel Procedural Orders

In its first supplemental filing, the Complainant requests that the Panel issue two procedural orders to the Respondent. In considering these requests, the Panel recalls that paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”.

First, the Complainant seeks an order that the Respondent provide her employment contracts and social security records from 2019 to 2021 to identify her recent employment status and relationship. However, as the Respondent herself raised these factual issues, the Panel considers that it was for her to substantiate her assertions in this regard and for the Panel to examine the evidence regarding the relationship between her and the registrant organization of the disputed domain names.

Second, the Complainant seeks an order that the Respondent provide the dates on which she acquired the disputed domain names. However, the Respondent has already acknowledged that she acquired the disputed domain names by transfer and sufficient information regarding the timing of those transfers is already available to the Panel, as set out in Section 4 above.

Therefore, the Panel declines to make either of the procedural orders requested by the Complainant.

6.2. Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(i) the disputed domain names are 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 in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the RED BULL mark, the RED BULL 紅牛mark and the 红牛 RED BULL and device mark (described below as the “RED BULL marks”).

The Respondent claims that Red Bull Vitamin Drink Co. Ltd owns the RED BULL marks in China. However, this claim was rejected by the Supreme People’s Court of China in its judgement of December 21, 2020 in the trademark ownership dispute between that company and the Complainant, referred to in Section 4 above.

The disputed domain names <redbullbeijing.com>, <redbullchina.cc>, <redbullchina.com>, <redbullec.com>, <redbulleln.com>, <redbull-sponsor.com>, <redbullwork.cc> and <redbullwork.com> wholly incorporate the RED BULL mark as their respective initial elements. They also include a geographical term (“Beijing” or “China”) or letters (“ec” or “eln”) or another dictionary word (“sponsor” or “work”), in one case with a hyphen between the mark and the word. Given that the RED BULL trademark remains clearly recognizable within each of these eight disputed domain names, the Panel does not consider that the addition of these elements prevents a finding of confusing similarity. See WIPO Overview 3.0, section 1.8.

The disputed domain names <红牛.net> and <红牛.tv> wholly incorporate the characters “红牛” (meaning “red bull”) as their respective operational elements. Those characters are a dominant feature of the 红牛 RED BULL and device mark and also aurally identical to a dominant feature of the RED BULL 紅牛mark (in which the same characters appear in traditional script). Accordingly, the Panel considers these two disputed domain names to be confusingly similar to both these marks. See WIPO Overview 3.0, section 1.7.

The disputed domain name <hongniu.cc> incorporates the standard Pinyin transliteration of the characters “红牛” (in simplified script) or “紅牛” (in traditional script) (meaning “red bull”) as its operational element. Those characters are a dominant feature of the 红牛 RED BULL and device mark and also of the RED BULL 紅牛 mark. Accordingly, the Panel considers this disputed domain name to be confusingly similar to both these marks. See WIPO Overview 3.0, section 1.14.

Each of the 11 disputed domain names includes a generic Top-Level Domain (“gTLD”) suffix (“.com” or “.net”) or a ccTLD suffix (“.cc” or “.tv”) which is a technical requirement of domain name registration. A TLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain names are all confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel will assess the existence of the Respondent’s claimed rights or legitimate interests as at the present time, that is to say, based on the circumstances prevailing at the time of the filing of the Complaint in 2021. See WIPO Overview 3.0, section 2.11.

As regards the first and third circumstances set out above, the Panel notes that the disputed domain names were passively held at the time when the Complaint was filed and most are still passively held at the date of this Decision, the exception being <redbullwork.com> which has begun to resolve to a website for a drink that competes directly with the Complainant’s products. The disputed domain names incorporate the entirety, or a dominant feature, or a transliteration of a dominant feature, of one or more of the RED BULL marks. The Complainant submits that it has not licensed or otherwise authorized the Respondent to use any of its trademarks or any variations or combinations thereof or to register or use a domain name incorporating any of those trademarks. Accordingly, the Panel considers that the Complainant has made a prima facie case that the disputed domain names are not being used in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names either.

As regards the second circumstance set out above, the Respondent individual’s name is listed in the Registrar’s WhoIs database as “junzhi wang” (Wang Junzhi), which does not resemble any of the disputed domain names. The Respondent organization’s name is set out in the Registrar’s WhoIs database as “beijing hongniuyinliao xiaoshouyouxiangongsi” (Beijing Red Bull Beverage Sales Co., Ltd), a company name that incorporates the element “hongniu”, which is the operational element of the disputed domain name <hongniu.cc>, a transliteration of the operational element of the disputed domain names <红牛.net> and <红牛.tv> and a translation of the words “red bull” in all the other disputed domain names. Nevertheless, there is no evidence on the record of this proceeding that the Respondent organization or the Respondent individual has actually been commonly known (in trade) by any disputed domain name other than for purposes of a domain name registration.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Turning to the Respondent’s arguments, she submits that she acquired the disputed domain names in her capacity as an employee of Red Bull Vitamin Drink Co. Ltd, which includes “红牛” and “Red Bull” in its trade names and uses those brands in its offering of Red Bull vitamin functional drinks.

The Panel notes that the registrant organization of the disputed domain names is “beijing hongniuyinliao xiaoshouyouxiangongsi” (i.e., Beijing Red Bull Beverage Sales Co., Ltd) – not Red Bull Vitamin Drink Co. Ltd. The Panel considers it implausible that the Respondent listed Beijing Red Bull Beverage Sales Co., Ltd (which is an actual company) as transferee if she acquired the disputed domain names on behalf of Red Bull Vitamin Drink Co. Ltd, especially when, according to her version of events, the transfers took place between two employees of the same company, which would have merely required a change to the registrant name, not the registrant organization. In any event, regardless of the reason why she listed a new registrant organization in the disputed domain name transfer forms, the result is that Beijing Red Bull Beverage Sales Co., Ltd is the Respondent in this proceeding, for the reasons given in Section 6.1A above. There is no evidence in this proceeding that, notwithstanding the use of an organization name that incorporates “hongniu” in the Registrar’s WhoIs, Beijing Red Bull Beverage Sales Co., Ltd has any rights or legitimate interests in respect of the disputed domain names; indeed, to accept that the mere inclusion by a registrant of a particular name or term corresponding to a domain name in the registrar’s organization field in the WhoIs would grant a right or legitimate interest would render the Policy fruitless.

Further, the Respondent failed to substantiate her assertion that she was an employee of Red Bull Vitamin Drink Co. Ltd at the time when she acquired the disputed domain names and that she remains an employee of that company today. She provided evidence that she held an employment contract with that company for an indefinite duration, which was last amended on May 1, 2018. The business license of that company expired on September 29, 2018, which was on or prior to the date or dates on which the disputed domain names were transferred to the Respondent. She provides no evidence dating from any time in the last three years that would show that she has been or remains an employee of Red Bull Vitamin Drink Co. Ltd. This undermines the credibility of her assertion that she was an employee during that period, particularly since the three year gap in her evidence coincides with the period during which the company has not had a business license. She has not replied to the Complainant’s argument that, without a current business license, Red Bull Vitamin Drink Co. Ltd could no longer pay social insurance and taxes on behalf of its employees as required by law. When she acquired the disputed domain names, she did not list Red Bull Vitamin Drink Co. Ltd (or even “redbull”) as her employer and she has conspicuously omitted, in both the Response and her comments on the Complainant’s supplemental filings, to address her relationship to the company that she did list as the registrant organization.

For the above reasons, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith, but these circumstances are not exhaustive.

The Panel will assess registration in bad faith as of the dates on which the Respondent acquired the disputed domain names rather than the dates on which the disputed domain names were created by a third party or parties. See WIPO Overview 3.0, section 3.9. In the present proceeding, the Respondent acquired the disputed domain names during the periods set out in Section 4 above, i.e., between late September 2018 and 2019.

With respect to registration, the Respondent acquired the disputed domain names years after the registration of the RED BULL marks, including in China (in the case of two of those marks), where the Respondent is located. The disputed domain names incorporate the entirety, or a dominant feature, or a transliteration of a dominant feature, of one or more of the RED BULL marks. The Respondent Wang Junzhi had actual knowledge of the Complainant and its marks because she had worked since 2012 for the Complainant’s joint venture company and former licensee Red Bull Vitamin Drink Co., Ltd. She acquired the disputed domain names in the name of Beijing Red Bull Beverage Sales Co., Ltd, which neither Party alleges ever had any rights with respect to the Complainant’s trademarks.

The Respondent asserts that she was an employee of Red Bull Vitamin Drink Co. Ltd at the time when she acquired the disputed domain names, but she has failed to substantiate that assertion for the reasons given in Section 6.2B above. In any case, the Respondent failed to substantiate her claim that Red Bull Vitamin Drink Co., Ltd has the exclusive right to use the RED BULL trademarks in mainland China. She refers to an alleged 50-year trademark license, but the Supreme People’s Court of China declined to accept that document in the RED BULL trademark ownership litigation because its authenticity is dubious. She relies on a copy of the same document in this proceeding, albeit with a new expert opinion identifying a signature. The Respondent also raised the 1995 joint venture agreement but the Panel notes that in subsequent license agreements Red Bull Vitamin Drink Co. Ltd repeatedly confirmed that the Complainant owned the relevant trademarks. The evidence shows that the registered proprietor of the RED BULL trademarks, including in China, is the Complainant.

Accordingly, the Panel finds that the Respondent targeted the Complainant’s trademarks when she acquired the disputed domain names and registered them in bad faith.

With respect to use, the disputed domain names were passively held at the time when the Complaint was filed but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the disputed domain names incorporate the entirety, or a dominant feature, or a transliteration of a dominant feature, of one or more of the Complainant’s RED BULL marks. The Complainant has acquired a considerable reputation in the drinks market through longstanding use and promotion of its RED BULL marks. The Respondent acquired the disputed domain names through transfers in favor of Beijing Red Bull Beverage Sales Co., Ltd, which neither Party alleges ever had any rights with respect to the Complainant’s trademarks. The Respondent holds 11 disputed domain names confusingly similar to the Complainant’s RED BULL marks, which shows a pattern of conduct in bad faith. The Respondent submits that the party which owns and uses the disputed domain names is Red Bull Vitamin Drink Co., Ltd and, indeed, the evidence shows that one disputed domain name (<redbullchina.com>) resolved to a website for Red Bull Vitamin Drink Co., Ltd as recently as August 2019, after it was acquired by the Respondent. However, that disputed domain name and the associated website gave the false impression that it was an official Chinese website for RED BULL when the record indicates that, by that time, Red Bull Vitamin Drink Co., Ltd’s rights in the trademarks, by virtue of licenses granted by the Complainant, had expired. In the Panel’s view, these circumstances are indications of bad faith.

The Respondent argues that the Complainant has delayed filing a complaint regarding the disputed domain names for over 10 years and that it recognized that Red Bull Vitamin Drink Co., Ltd was registering and using the disputed domain names. However, the Panel notes that the Complaint is filed against the Respondent, who did not acquire the disputed domain names until less than three years ago, and that the ownership of the RED BULL trademarks was being litigated in China in the meantime. The Complainant filed the Complaint four months after the challenge to its ownership of the RED BULL marks was rejected by the Supreme People’s Court of China. Accordingly, there is no evidence of unwarranted delay, let alone consent to the acquisition and use of the disputed domain names by the Respondent.

Accordingly, the Panel finds that the Respondent is using the disputed domain names in bad faith.

The Panel notes that the use of the disputed domain name <redbullwork.com> has recently changed and that it has begun to resolve to a website for third party brand drinks that compete directly with the Complainant’s Red Bull drinks. The Panel finds that, by using this disputed domain name, the Respondent has intentionally attempted to attract for, commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s RED BULL mark as to the source, sponsorship, affiliation or endorsement of the website associated with this disputed domain name or of a product on that website, as envisaged by paragraph 4(b)(iv) of the Policy. This is a further indication of bad faith.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

For 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 <hongniu.cc>, <redbullbeijing.com>, <redbullchina.cc>, <redbullchina.com>, <redbullec.com>, <redbulleln.com>, <redbull-sponsor.com>, <redbullwork.cc>, <redbullwork.com>, <红牛.net> [xn--11xv5x.net] and <红牛.tv> [xn--11xv5x.tv] be transferred to the Complainant.

Matthew Kennedy
Presiding Panelist

Joseph Simone
Panelist

Dr. Hong Xue
Panelist (Dissenting)
Date: August 31, 2021

Dissenting Opinions

Under paragraph 15(e) of the Rules, in the case of a three-member Panel, any dissenting opinion shall accompany the majority decision.

Under paragraph 4(a)(ii) of the Policy, the complainant for prevailing in the administrative proceeding must prove that the respondent has no rights or legitimate interests in respect of the domain name.

The registration information confirmed by the Registrar shows the registrant name of all the disputed domain names is “junzhi wang” or “Wang Junzhi”, and the registration organization is “beijing hongniuyinliao xiaoshouyouxiangongsi”.

In the domain name system, every domain name is registered pursuant to a registration agreement between a registrant and a registrar. It is the registrant that shall be proved having no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.

The Respondent, i.e., the registrant of the disputed domain names, contends that she is an employee of Red Bull Vitamin Drink Co., Ltd, which has been using “红牛” and “Red Bull” as the trade names and brand names under a 50-year license agreement with the Complainant.

The Complainant rebuts that the Respondent has never been authorized to register the disputed domain names containing the Complainant’s RED BULL trademark and did not acquire the disputed domain names in 2019 as the employee of Red Bull Vitamin Drink Co., Ltd, which had neither valid business license from the competent authority nor trademark license from the Complainant.

With respect to the registrant organization “beijing hongniuyinliao xiaoshouyouxiangongsi”, the Complainant concludes in the second supplemental filling that is Beijing Hong Niu Beverage Sales Co., Ltd, one of the subsidiaries of Reignwood, the legal representative of which is related to “the ex-business partner to the ultimate beneficiaries of Complainant (the Yoovidhya Family) in their joint venture (i.e., ‘RBVC’) in China”.

The Panelist in minority view notes that from the above Complainant’s statement that the registration organization “beijing hongniuyinliao xiaoshouyouxiangongsi” is possibly a subsidiary entity of one of the shareholders of Red Bull Vitamin Drink Co., Ltd.

Considering both Parties’ submissions, the Panelist in the minority view finds, if any element below can be conclusively proved, the condition stipulated in paragraph 4(a)(ii) of the Policy is met:

- the Respondent had not been the employee of Red Bull Vitamin Drink Co., Ltd since acquiring the disputed domain names; or
- Red Bull Vitamin Drink Co., Ltd ceased to exist from September 30, 2018; or
- Red Bull Vitamin Drink Co., Ltd has no rights or legitimate interests in respect of the disputed domain names.

In the Panel’s majority view, the Respondent failed to substantiate the assertion about employment with Red Bull Vitamin Drink Co. Ltd at the time when acquiring the disputed domain names and to prove the employment with that company in recent three years.

The Panelist in minority view notes that employment means the condition of having paid work. Under the Chinese labor law, employment can be in a variety of forms. Apart from the formal employment that the employer shall “pay social insurance and taxes on behalf of its employees as required by law”, there are other forms of employment, such as labor dispatch, temporary workers, contractors, etc., legitimately existing in the job market. The evidence presented to the Panel cannot conclusively prove that the Respondent was not the employee of Red Bull Vitamin Drink Co. Ltd. when acquiring the registration of the disputed domain names and is not employed, in whatever form, with that company right now.

The business license of Red Bull Vitamin Drink Co., Ltd expired on September 29, 2018. The Decision of Beijing High People’s Court, issued on December 31, 2019, shows that the request made by Red Bull Vitamin Drink (Thailand) Co. Ltd. and Inter-Biopharm Holding Limited to liquidate Red Bull Vitamin Drink Co., Ltd was dismissed for unresolved share disputes being tried at the Chinese Supreme People’s Court. The Complainant also confirms that the legal formalities to liquidate Red Bull Vitamin Drink Co., Ltd has not been completed.

Under the Chinese Company Law and Administrative Regulations on Company Registration, a company whose business license expired still exists with legal personality before liquidation, although its legal capacity of business operation is under constraint. Since Red Bull Vitamin Drink Co. Ltd has not been liquidated legally, the likelihood that the Respondent acquired and has been maintaining the registration of the disputed domain names as the employee of that company cannot be excluded.

The Respondent contends that Red Bull Vitamin Drink Co., Ltd has the exclusive right to use the trademarks 红牛 and RED BULL in mainland China according to a 50-year license agreement with the Complainant concluded on November 10, 1995.

The Panel in its majority view does not accept the Respondent’s submission on 50-year license agreement relying on the Decision made by the Chinese Supreme People’s Court on December 21, 2020 (hereafter “(2020) SPC Civil Final No. 394 Decision”), which finds the document of 50-year trademark license agreement is questionable in authenticity.

The Panel correctly states that the (2020) SPC Civil Final No. 394 Decision is regarding the “trademark ownership dispute arose between Red Bull Vitamin Drink Co., Ltd and the Complainant, in which the former claimed ownership of the RED BULL trademarks in China (including trademark registration number 878073)”. The Chinese Supreme People’s Court upholds the first-instance Decision and dismisses Red Bull Vitamin Drink Co., Ltd’s appeals for ownership or coownership of RED BULL series of trademarks. What has been finally ruled is the ownership of RED BULL series of trademarks and Red Bull Vitamin Drink Co., Ltd’s use of the trademarks based on the Complainant’s authorization and license. It is worth noting the (2020) SPC Civil Final No. 394 Decision specifies that “the evidence of 50-year trademark license agreement submitted by Red Bull Vitamin Drink Co., Ltd in the second instance is not accepted by this Court, and the other litigation raised by Red Bull Vitamin Drink Co., Ltd regarding that agreement is irrelevant to this case”. Because the dispute regarding the 50-year license agreement is irrelevant to the dispute ruled in the (2020) SPC Civil Final No. 394 Decision, the Chinese Supreme People’s Court dismissed Vitamin Drink Co., Ltd.’s application for suspension of proceeding to investigate and acquire additional evidence.

The Panelist in minority view notes that the (2020) SPC Civil Final No. 394 Decision’s finding that “authenticity of the agreement remains questionable” should be read in context. It does not imply the Decision turns to rule on the irrelevant dispute of 50-year licensing agreement beyond the trademark ownership dispute.

In the present domain name dispute, the 50-year licensing agreement, instead, becomes a key issue for assessment of the Complaint under paragraph 4(a)(ii) of the Policy. The Respondent submitted the new evidence that had not been reviewed in the (2020) SPC Civil Final No. 394 Decision. Since administrative proceeding shall take place with due expedition under the Rules, the Respondent’s new evidence is not cross-examined by the Complainant.

The Panelist in minority view believes that the Parties’ complicated dispute regarding the 50-year licensing agreement (especially the new evidence) be more appropriately resolved through a full trial in other legal proceeding than in an expedited administrative case.

In assessment of the Complaint under paragraph 4(a)(ii) of the Policy, the Panel should take into consideration of both Parties’ submissions, but the Complainant shall always bear the burden to prove its case.

Based on the evidence presented by both Parties, the Panelist in minority view finds that none of the proofs that the Respondent had not been the employee of Red Bull Vitamin Drink Co., Ltd since acquiring the disputed domain names, that Red Bull Vitamin Drink Co., Ltd ceased to exist from September 30, 2018, or that Red Bull Vitamin Drink Co., Ltd provides unauthentic evidence of the 50-year licensing agreement is conclusive.

The Panelist in minority view, therefore, cannot agree with the Panel’s conclusion that the Complainant has successfully made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Dr. Hong Xue
Panelist (Dissenting)
Date: August 31, 2021

¹ The Complaint also included the domain name <redbulltime.com>. On May 3, 2021, the Center informed the Parties that the domain name <redbulltime.com> was set to expire on May 26, 2021 and the Registrar indicated that certain action including payment of a renewal/registration fee needs to be taken by one of the Parties to this dispute to ensure that the domain name <redbulltime.com> remains active (i.e., not expired) so that the administrative procedure can continue as required under the UDRP. The Center also informed the Parties that possible consequences for not renewing the domain name may include the dismissal (at the sole discretion of a Panel to be appointed) of the Complaint in relation to this particular domain name. On May 7, 2021, the Complainant indicated that it had made proper arrangement with the Registrar to renew the domain name <redbulltime.com>. On July 13, 2021, the Complainant further indicated that it had decided to be silent on renewal of the domain name <redbulltime.com> until the Decision is rendered and published by the Panel. No email communication was received from the Respondent in this matter. The Panel notes that at time of this Decision, the domain name <redbulltime.com> has been registered by a different registrant “xiao lei chen” with a different registrar “Wide Left Domains LLC” and a new creation date of August 13, 2021. Accordingly, the Panel has decided to dismiss the domain name <redbulltime.com> from the current proceeding.