WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Bull GmbH v. Melbourne Red Bulls Football Club Pty Ltd
Case No. DAU2018-0001
1. The Parties
The Complainant is Red Bull GmbH of Fuschl am See, Austria, represented by Davies Collison Cave, Australia.
The Respondent is Melbourne Red Bulls Football Club Pty Ltd of South Melbourne, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <melbourneredbullfc.com.au> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2018. On January 8, 2018, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On January 9, 2018, GoDaddy.com, LLC 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 22, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 16, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
A. Complainant
The Complainant is a company incorporated in Austria and is the producer of energy drinks sold worldwide under the trade mark RED BULL (the “Trade Mark”).
The Complainant is the owner of numerous registrations in jurisdictions around the world for the Trade Mark, including several registrations in Australia, for example Australian registration No. 654166, registered from February 24, 1995, entered on the Register on April 24, 1998, and with a priority date of September 1, 1994.
The Complainant is also the owner of numerous domain names comprising the Trade Mark.
The Complainant sponsors a number of sporting events, sports persons and sporting teams, including the soccer teams RB Leipzig and New York Red Bulls, under the Trade Mark. The Complainant is also the owner of a large number of domain names in relation to its sponsorship of soccer teams in Europe.
B. Respondent
The Respondent is a company incorporated in the State of Victoria, Australia on April 9, 2017.
C. The Disputed Domain Name
The disputed domain name was registered on April 10, 2017.
D. The Website at the Disputed Domain Name
The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered or subsequently used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark, together with the word “Melbourne” and the commonly used acronym for “football club”, “fc”. In light in particular of the Complainant’s history of sponsoring sporting teams including soccer teams, the Panel finds that, for the purposes of the first limb under paragraph 4(a) of the Policy, the addition of the word “Melbourne” and of the letters “fc” does not serve to distinguish the disputed domain name from the Trade Mark in any significant way.
Accordingly, the Complainant has fulfilled the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by many years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
According to the undisputed evidence filed by the Complainant:
1. There were several newspaper articles in Australia in March 2017 regarding the possibility of the Complainant and/or its Austrian co-founder owning or sponsoring a soccer team in Football Federation Australia’s A League competition (the “A League”);
2. The director and ultimate beneficial owner of the Respondent, Mr. Daniel Stephen Cobb (“Mr Cobb”), has registered, in addition to the disputed domain name, a large number of generic Top-Level Domain (“gTLD”) domain names incorporating the Trade Mark or abbreviations of the Trade Mark, which were recently the subject of a domain name proceeding filed by the Complainant with the Center under the Uniform Domain Name Dispute Resolution Policy;
3. Mr. Cobb claims to be a businessman and entrepreneur interested in the sport of soccer. He was the managing director of the A-League club, Brisbane Roar, for a tumultuous1 two month period from June 2016 to August 2016;
4. On June 15, 2017, following his receipt of a letter of demand from the Complainant’s solicitors, and following his ensuing telephone conversation with one of the Complainant’s solicitors, Mr. Cobb sent an email to the Complainant’s solicitors asserting that: “the business and domain names were registered for the sole purpose of presenting Red Bull with an opportunity to partner with Australia’s largest infrastructure project ($30 billion AUD). Red Bull is being offered a unique opportunity to have a $400-500 million AUD stadium and world class training facility to be constructed if they would consider having a football presence in Australia and Asia”;
5. Mr. Cobb stated further in his email: “I can assure that the business names and the domain name were only recently registered in order to make the presentation to Red Bull and to prevent the names and the football concept from being hijacked. I can confirm there has been no use of or trading in any form with the names”; and
6. Mr. Cobb also offered, in his email, as follows: “(if) Red Bull decides it does not want to proceed with the project in Australia, we are happy to cancel the registrations or transfer over the registrations to Red Bull”.
The Respondent has failed to show that it has acquired any genuine trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. The disputed domain name has not been used.
The uncontested evidence clearly demonstrates that the disputed domain name was registered opportunistically on behalf of an individual with no rights in the Trade Mark, using a corporate vehicle incorporated the day before the disputed domain name was registered, and just weeks after press reports regarding the Complainant’s possible expansion into the Australian soccer market.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish genuine rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has fulfilled the second condition of paragraph 4(a) of the Policy.
C. Registered or Used in Bad Faith
In light of the factors highlighted in Section B above, the Panel has no hesitation in concluding that the disputed domain was registered in bad faith.
Furthermore, according to the uncontested evidence filed by the Complainant, amongst other things:
1. The Complainant has never had any meetings with Mr. Cobb or with representatives of Mr. Cobb or of the Respondent; and
2. The Respondent and Mr. Cobb have taken no steps to cancel or transfer the disputed domain name, as promised.
Accordingly, the Complainant has fulfilled the third condition of 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 name <melbourneredbullfc.com.au> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: March 2, 2018
1 (According to an entry on Mr Cobb’s personal website at “www.danielcobb.com.au”).