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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. Redbull Ltd/ Michael Atkins

Case No. DNU2005-0001

 

1. The Parties

The Complainant is Red Bull GmbH, Fuschl am See, Austria, represented by Schцnherr Rechtsanwдlte OEG, Austria.

The Respondent is Redbull Ltd/ Michael Atkins, Upplands, Vдsby, Sweden.

 

2. The Domain Name and Registrar

The disputed domain name <redbull.nu> is registered with .NU Domain Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2005. On August 24, 2005, the Center transmitted by email to .NU Domain Ltd. a request for registrar verification in connection with the domain name at issue. On August 23, 2005, .NU Domain Ltd. transmitted by email to the Center its verification response confirming that the disputed domain name is registered and providing the contact details for the administrative, billing, and technical contact. .NU Domain Ltd. was not in a position to confirm that the Respondent is the current registrant of the domain name in the absence of any indication to that effect in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 26, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2005. The Respondent submitted his Response on September 13, 2005, represented by one Mr. Johan Hansen, allegedly the technical and administrative contact for the domain name. Accordingly, the Center notified the Response to the Complainant. On September 15, 2005, the Complainant submitted “Comments to the statement of Johan Hansen” which were notified to the Respondent. The Center acknowledged Receipt of the Response on September 16, 2005. On September 19, 2005, the Respondent submitted to the Center a document identified as “In reference to Comments to statement of Johan Hansen”.

The Center appointed Michel N. Bertschy as the Sole Panelist in this matter on September 28, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The language of these administrative proceedings is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant is the largest worldwide producer of energy drinks. It is the producer of the RED BULL energy drink, first sold in Austria in 1987 and internationally since 1992 (Exhibits E and  E1). More specifically, first shipments of Red Bull energy drinks took place on September 15, 1995, to Spain, November 12, 1996, to Sweden, and September 23, 1996, to New Zealand (Exhibit E1). Currently, the product is sold in 127 countries and is available on all continents (Exhibit E1).

The annual turnover of the Complainant is of approximately € 1,66 billion in 2004. Its marketing expenses totaled in excess of € 496 million the same year (Exhibits E and E1). Much of these expenses are related to the sponsoring of sports events widely covered by media, such as Motorbike (“Red Bull Yamaha WCM” team) and Formula One racing (“Red Bull Sauber Petronas”, “Red Bull Racing” teams), (Exhibits E and E7). Other events of note for the sake of the present dispute are the “Nordic Extreme Championship” (Riksgrдnsen, Sweden), “Snowmobile Freestyle Cross Big Jump” (Kiruna, Sweden), “Red Bull Big Air Final, Дre” (Дre, Sweden), “Red Bull Big Air Qualifier” (Hцgfjдllet Sдlen, Sweden), “Red Bull Battle of Kings” (Ibiza, Spain), “Red Bull Ride to Reel” (New Zealand), “Red Bull Flugtag” (Wellington, New Zealand) (Exhibit E7). The Complainant has widely advertised its products by way of TV commercials (Exhibit E5).

Red Bull GmbH operates its principle website at “www.redbull.com” since January 5, 1998. The site contains information on its products and sponsored sports events, and provides links to other Red Bull websites (Exhibit E10).

Moreover, among the trademarks owned by the Complainant, the following International registrations are asserted for the purpose of these proceedings: RED BULL, No. 423593, registered on December 27, 1993 (Exhibit H1); RED BULL, No. 179642, registered on December, 1998 (Exhibit H2); RED BULL, No. 612320, registered on December 27, 1993 (Exhibit H5); RED BULL, No. 641378, registered on February 24, 1995 (Exhibit H6). In addition, the Complainant is the owner of the Community Trademarks Red Bull, No. 52787, registered on April 27, 2001 and RED BULL, No. 52803, registered on March 16, 2001 (Exhibits H3 and H4). Finally, the trademark RED BULL is registered in New Zealand in word and figurative forms since September 27, 1995 and April 27, 1999, respectively (Exhibits H7 and H8).

The figurative trademarks, two bulls charging at each other, the TV commercials and the sponsored sports (Formula One, motocross, rallye, mountain bike, skateboarding soapbox racing, acrobatic flying, freediving, parachuting, kitesurfing, windsurfing, surfing, snowboarding, freeskiing, ice climbing, etc.) convey a message of force, energy, freedom and youth clearly sought to be associated with the Red Bull energy drink.

The domain name <redbull.nu> was registered on May 31, 1998, (Exhibit A, .NU Domain Ltd Whois database), by “Redbull Ltd”, Michael Atkins,  Upplands Vдsby, Sweden. The Registrar advised that the technical contact is “Mickey’s Web & Comm, Michael Atkins, Madrid, Spain. The Respondent subsequently informed the Center that the information provided by .NU Domains Ltd is erroneous and that the technical and administrative contact is in fact Johan Hansen, Solna, Sweden.

The domain name at issue operates an e-mail service for a community of persons and promotes a future “gaming community” allegedly set up by an unnamed member of the “community”. The reference to the future “gaming community” has been present on the website operated by <redbull.nu> since 2003.

The Respondent is not using the domain name for any offering of services or products.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is proprietor of multiple registrations and applications of trademarks consisting of or containing the words REDBULL and has traded under this name since 1987 in Austria and since 1994. Referring to PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I) and EMS COMPUTER INDUSTRY (a/k/a EMS) WIPO Case No. D2003-0696, the Complainant contends that it is common practice with internet domain names to omit the blank spaces to form a company domain name and that the addition of the generic top-level domain (gTLD) “.com” to the said name is without any significance as to the likelihood of confusion. The domain name at issue is therefore confusingly similar to the trademark of the Complainant.

Moreover, the Respondent has no rights or legitimate interest in respect of the domain name. The Complaint has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to use any domain name incorporating any of those marks or any variations thereof. Since the Respondent uses the combination of the words “red” and “bull” in order to create an association with the Complainant, thus creating the false and misleading impression that he acts he is associated with it. Furthermore, none of the prerequisites listed under paragraph 4(c) of the Policy demonstrating rights or legitimate interests are fulfilled.

According to the Complainant the Respondent registered and is using the domain name in bad faith. The Respondent could not have ignored the existence of the trademark at the date to the registration of the domain name. The Complainant contends that it was registered in order to prevent it from registering a corresponding domain name under the ccTLD “.nu” domain. To quote the Complainant, its “[…] well-known and strong trademark RED BULL is obviously connected by the public with Complainant. The ccTLD ‘.nu’ appears to be very popular in particular in certain European countries, as shows the list of ‘.nu’ websites on Registrar’s website (see Annex K₁). When pronouncing the ccTLD ‘.nu’ it sounds like the English word ‘new’, which appears to be an attractive choice for a domain name, in-tended to be used internationally and not only focused on the small island of Niue. ‘.nu’ domains appear to be also especially popular in Sweden since ‘nu’ means ‘now’ in Swedish (see Annex K₂, page 3 bottom). Respondent intentionally tries to exploit the notoriety of the trademark RED BULL and intends to lead to a likelihood of confusion by registering a domain name incorporating such trademark under the quite popular, albeit remote, ccTLD ‘.nu’.”

The registration of the disputed domain name was therefore made in bad faith, and any use by the Respondent of the domain name necessarily creates the likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (paragraph 4(b)(iv) of the Policy.)

The Complainant requires the transfer of the <redbull.nu> domain name.

B. Respondent

The Respondent contends that <redbull.nu> was registered as early as 1998 by a group of friends who needed a domain name for their online community and various Internet related services. Back in 1998, the now (emphasis of the Respondent) well known Red Bull energy drink was not even launched in Sweden and rarely heard of. Moreover, the combination of “red” and “bull” is “[…] not that far fetched as the Complainant want’s it to be. In this case the use of the word redbull is purely coincidental. It was only chosen because it sounded cool […]”. The Respondent also states that “[…] It’s easy for a big multinational company to use their lawyers to correct their mistakes, like in this case. If redbull.nu is so important, why did they not register it back in 1998?”.

The Respondent states that <redbull.nu> has been providing e-mail services to 100 users, a group of friends and members of their families, who use “redbull.nu” mail accounts. <redbull.nu> comprises also around 20 sub-domains providing web space for personal use and various forums. Though <redbull.nu> is not used as a “web front-end (Respondent’s words)” does not mean that <redbull.nu> is not used.

The reference to a future gaming site on the domain name’s web page was set up by a member of the “redbull.nu” community who intended to name the corresponding gaming site “I got no style at all”. The Respondent considers that the transfer of the domain name would cause “[…] great damage to all those relying on the continuous services made possible through redbull.nu”.

The Respondent concludes that the use of <redbull.nu> is non-commercial and strictly private.

 

6. Discussion and Findings

I. Preliminary issues

The Complainant submitted on September 15, 2005, unsolicited “Comments to Statement of Johan Hansen” to which the Respondent replied on September 19, 2005, by an unsolicited document identified as “In reference to Comments to statement of Johan Hansen”. The Panel accepts these submissions on its own motion, bearing in mind that the parties both submitted unsolicited supplemental filings before the transmission of the case to the Panel, thus having the opportunity to present their case (see in particular Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner D2001-1447 <delikomat.com>; AutoNation Holding Corp. v. Rabea Alawneh D2002-0058 <autoway.com>, De Dietrich Process Systems v. Kemtron Ireland Ltd. D2003-0484 <de-dietrich-process-systems.com>).

II. Substantive issues

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) the respondent’s domain name is 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 domain name; and

(iii) the respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

The Complainant holds several trademarks for RED BULL worldwide, including in Sweden, where the Respondent has his postal address. The Panel finds that the Complainant has rights in the RED BULL trademarks.

For the purpose of assessing whether the Domain Name is identical or confusingly similar to the trademarks in which the Complainant has rights, the ccTLD “.nu” is disregarded, being a necessary element of Domain Name. The relevant parts of the Domain Name are “red” and “bull”, which are clearly identical to the Complainant’s trademarks. The Panel finds that the Domain Name as a whole is confusingly similar to the Complainant’s RED BULL trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lays out a non-exhaustive list of circumstances which can be contended by the Respondent to demonstrate his rights or legitimate interests.

The Complainant bears the “general burden of proof” under paragraph 4(a)(ii) of the Policy, which burden rests on the Respondent once the Complainant makes his case prima facie (Neusiedler Aktiengesellschaft v. Ninayak Kulkarni, WIPO Case No. D2000-1769; Dow Jones & Company and Dow Jones LP v. The Hephzibah Intro-Net Project Limited, WIPO Case No. D2000-0704; De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c)(iii) of the Policy sets forth examples of circumstances whereby a domain name registrant may demonstrate a right or legitimate interest in a domain name, including: “... making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainants’ marks. The Complainant has therefore made his case prima facie.

The Complainant has demonstrated that Respondent’s Domain Name does not resolve to a website or other substantive online presence. The Respondent acquired the Domain Name on May 31, 1998, after the registration of the Complainant’s own main website ”www.redbull.com”, and has not taken any steps to develop a website or use the Domain Name. Respondent’s failure to use, or prepare to use, the Domain Name in a bona fide offering of goods and services is sufficient to show that Respondent has no legitimate interest in the Domain Name (TABCORP Holdings v. Steven Hertzberg, WIPO Case No. D2000-0566).

Moreover, it is not possible to discern the true identity of Respondent based on the information provided by the Respondent to the Registrar. The registration of the domain name at issue was made by a company named “Redbull Ltd”, which is clearly neither the Complainant nor a company authorized by it to register the domain name <redbull.nu>. Moreover, the technical contact is supposedly located in Madrid at a post office box.

The Respondent’s failure to use the Domain Name for any apparent purpose also negates the possibility that Respondent is making a legitimate non commercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

Respondent has failed to come forward with any evidence other than a list of e-mail addresses and sub-domains all containing the “redbull” name to meet the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c).

In these circumstances, the Respondent’s use of the Domain Name does not give him any right or legitimate interest. There is no reason to suppose that the Respondent could claim a right or legitimate interest in respect of the Domain Name on any other basis. The Panel finds that the second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive conditions that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including: (1) “[the Respondent] has registered or has 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 the Respondent’s documented out-of-pocket costs directly related to the domain name, or”; (2) “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” (3) “[the Respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor, or”; (4)“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location”.

<redbull.nu> was registered on May 31, 1998, on behalf of Redbull Ltd by Michael Atkins, supposedly located in Upplands Vдsby, Sweden. The first shipment of goods made by the Complainant to Sweden intervened on September 23, 1996. The RED BULL energy drink was internationally commercialized since 1992. Moreover, the Complainant sponsors sports events widely covered by media, such as Motorbike (“Red Bull Yamaha WCM” team) and Formula One racing (“Red Bull Sauber Petronas”, “Red Bull Racing” teams). Many sponsored events take place in Nordic countries: “Nordic Extreme Championship” (Riksgrдnsen, Sweden), “Snowmobile Freestyle Cross Big Jump” (Kiruna, Sweden), “Red Bull Big Air Final, Дre” (Дre, Sweden), “Red Bull Big Air Qualifier” (Hцgfjдllet Sдlen, Sweden). There is sufficient evidence to uphold the finding that RED BULL was known at the time of the registration. Last but not least, the association of the words “red” and “bull” cannot be considered to be evident. The Respondent’s assertion that the name “redbull” was chosen because “[…] it sounded cool […]” tends to confirm that the registrant was at the least influenced by the marketing of the Complainant. The Panel notes that the words “red bull” do not have the particular connotation that “raging bull” or “sitting bull” would have had at the time. The Panel holds therefore that the domain name was issued in bad faith.

Whether the Respondent has used Complainant’s name in bad faith is less clearly evident on the facts. Indeed, the Respondent’s conduct is distinctive in the fact that it has registered, but does not appear to have used, the domain name in dispute in any distinctive way other than as an e-mail address provider. There is no evidence that Respondent has used the domain name to attract the Complainant’s customers to the Respondent’s business, nor even that the Respondent has any business at all, other than having registered the domain name for providing e-mail addresses and possibly redirecting users to a gaming site. No evidence has been adduced that the Respondent has sought to sell the disputed domain names to others. Nor has Respondent sought to extract a sales price from Complainant. What can reasonably be concluded is that the Respondent is a cyber squatter even though his exact purpose is as yet undetermined, other than to deliberately appropriate the Complainant’s name. This is a classic case of passive holding, as outlined in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <redbull.nu> be transferred to the Complainant.

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Michel N. Bertschy
Sole Panelist

Dated: October 13, 2005