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Red Bull GmbH v. Tony Marinelli

WIPO Case No. D2001-0522

Outcome
Transfer
Domain names
redbullcanada.net, redbullcanada.org, redbullwesterncanada.com
Complainant
Red Bull GmbH
Respondent
Tony Marinelli
Panelist
F. Kunze
Decided
09 Jul 2001
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0522.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Red Bull

GmbH v. Tony Marinelli

Case No.

D2001-0522

1. The Parties

The Complainant in this

administrative proceeding is Red Bull GmbH, Brunn 115, A-5330 Fuschl am See,

Austria, represented by Dr. Christian Hauer Schönherr Barfuß

Torggler & Partners, Tuchlauben 13, A 1014 Vienna, Austria.

The Respondent is Tony

Marinelli, 312-225 Newport Drive, Port Moody, BC V5C3H4 CA, Canada.

2. The Domain Names

and the Registrar

The domain names at issue

are <redbullwesterncanada.com>, <redbullcanada.org> and <redbullcanada.net>.

The Registrar is CORE Internet

Council of Registrars, World Trade Center II, 29 Route de Pre-Bois, CH-1215

Geneva, Switzerland.

3. Procedural History

The Complaint was filed

with the WIPO Arbitration and Mediation Center (the Center) by e-mail on April

9, 2001, and a hardcopy was received by the Center on April 12, 2001.

The Center acknowledged the receipt of the Complaint on April 11, 2001.

On April 12, 2001, the Center requested the Complainant to amend the Complaint,

since the Complainant had stated that Computer Service Langenbach GmbH Duesseldorf

had registered the domain names at issue through CORE. The amendment stating

that CORE is the Registrar, was sent to the Center by e-mail on April 19, 2001,

and a hardcopy was received on April 23, 2001.

On April 12, 2001, the

Center transmitted to CORE a request for verification of registration data.

On May 9, 2001, CORE sent the confirmation dated April 20, 2001, (which

was not attached to the original response dated April 20, 2001), that it is

the Registrar of the domain names at issue, and that Tony Marinelli is the Registrant,

and indicated that the status of the domain names is "production".

On May 15, 2001, the Center

verified that the Complaint satisfied the Rules and the Supplemental Rules and

that payment was properly made. The Panel is satisfied that this is the case.

On the same day the Complaint

was properly notified in accordance with the Rules, paragraph 2(a), and the

administrative proceedings commenced.

On May 29, 2001 the Center

received a facsimile confirming receipt of the notification by the Respondent,

and informing the Center that the domain names at issue had been sold to a client

at a substantial amount. However, there is no evidence that the Respondent requested

to be deleted from the domain name database as registrant of the domain names

at issue. In fact, he is still listed as Registrant in the WHOIS database of

CORE. Accordingly, the UDRP is binding on the Respondent. Despite a reminder

from the Center, no further communication, and in particular no Response to

the Complaint, was received from the Respondent within the time limit set. The

Center therefore, on June 7, 2001, sent a default notification to the Respondent.

On June 18, 2001, the Center

notified the Parties that an Administrative Panel, composed of a single member,

Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted

a Statement of Acceptance and Declaration of Impartiality and Independence to

the Center.

No further submissions

were received by the Center or the Panel. The date scheduled for issuance of

the Panel’s decision is July 1, 2001.

4. Factual Background

A. Complainant

The Complainant is the

largest worldwide producer of energy drinks. It is the producer of the RED BULL

energy drink, which was first sold in Austria in 1987. In 2000, the Complainant

sold 900 millions units of the RED BULL energy drink in 55 countries all over

the world, including the United States (where the first shipment took place

in 1996), with an annual turnover of close to 700 millions EURO. Thanks to intensive

market activities, the RED BULL energy drink of the Complainant has become the

unchallenged market leader in its markets. Sponsoring of Formula One racing

cars, which has been televised on a worldwide basis, has also helped the RED

BULL brand to become known all over the world and also in the United States

and in Canada. The Complainant administers a sophisticated and informative website

under the general domain name <redbull.com> (providing a link to countries

where the Complainant operates) and a website, specifically directed to US-customers

under the domain name <redbullusa.com>. This website contains contact

addresses of Red Bull North America Inc, and also a large list of sales points

for the RED BULL energy drink all over the United States. At the Complainant's

websites the trademark "RED BULL" is shown prominently (the term "trademark"

is being used for covering the use of RED BULL for goods and services). The

Complainant is also the registrant of a number of other domain names, such as

<redbull.org>, <redbull.at>, <redbull.de> and <redbull.cd>.

The Complainant is the

registered owner of the trademark RED BULL (wordmark) and of device marks, containing

the word "red bull" in a large number of countries, including Austria,

Canada and the United States, which cover a wide list of goods and services.

The Complainant’s trademark registrations are listed in Annex I to the Complaint.

These facts are evidenced

by the attachments to the Complaint and, in the absence of any submission of

the Respondent to the contrary, the Panelist is satisfied that the documents

submitted by the Complainant truthfully reflect the factual circumstances of

the case.

B. Respondent

The Respondent is an individual,

who registered on August 1, 2001, the domain names <redbullwesterncanada.com>,

<redbullcanada.net> and <redbullcanada.org> with CORE. The domain

names have not been activated by the Respondent.

5. Parties’ Contentions

A. Complainant

Complainant submits that

(1) the domain names <redbullwesterncanada.com>, <redbullcanada.net>

and <redbullcanada.org> are identical or confusingly similar to a trademark

or service mark, in which the Complainant has rights; (2) the Respondent has

no rights or legitimate interests in respect of the domain names; (3) the domain

names were registered and are being used in bad faith.

B. Respondent

The Respondent has failed

to submit any statement. He has therefore not contested the allegations of the

Complaint.

6. Discussion and findings

Paragraph 4(a) of the Policy

lists three elements that the Complainant must prove to merit a finding that

the domain names of the Respondent be transferred to the Complainant or cancelled:

1) The domain names

are identical or confusingly similar to a trademark or service mark ("mark")

in which the Complainant has rights; and

2) the Respondent has

no rights or legitimate interests in respect of the domain names; and

3) the domain names

have been registered and are being used in bad faith.

A. Confusing similarity

with a mark in which the Complainant has rights

Complainant's trademark

RED BULL is composed of two common words of the English language, which in their

combination are arbitrarily used to distinguish the energy drink sold by the

Complainant and therefore are inherently distinctive. Such trademarks (other

examples are "apple" for computers and "camel" for cigarettes)

are in fact very strong marks. The Complainant's registrations of the mark RED

BULL in Canada and in the USA evidences that it has exclusive rights in that

mark in these countries, as in many others. To the knowledge of the Complainant

no other person has registered trademark rights in the word RED BULL for whatever

goods or services.

Furthermore, RED BULL is

a well-known trademark in many countries (such as in Austria, Germany and Switzerland)

and at least also known in the United States, following the sales activities

in that country since 1996, and in Canada (through overlapping of advertising

and Internet activities from the United States).

The domain names of the

Respondent are not identical with the trademark RED BULL of the Complainant,

but integrate it in its entirety followed by descriptions of geographical nature,

such as "canada". Furthermore the addition of the generic TLD indicators

"com", "net", and "org" cannot be taken into consideration

when judging confusing similarity. The combination of a trademark with a geographical

name is common practice for many domain names (see e.g. the domain name <redbullusa.com>

of the Complainant) and does not exclude confusing similarity (see e.g. Wal-Mart

Stores Inc v. Walmarket Canada, WIPO Case No. D2000-0150 relating to the

domain name <walmartcanada.com> and Inter-IKEA v. Polanski, WIPO

Case No. D2000-1614 relating to the domain name <ikeausa,com>). Confusing

similarity is evident in the real world, but also, when considering the particular

circumstances of use on the Internet. People in Canada, who are searching for

the Complainant’s RED BULL energy drink related website, may expect to find

it under its principal identifier "RED BULL" combined with some geographical

indicator, such as "canada". They may therefore type the sequence <redbullcanada.org>or

<redbullcanada.net>and will be misled to a non-active site of the Respondent.

Should the Respondent or somebody having acquired the domain names from the

Respondent start to entertain a website under one of the domain names registered

by the Respondent, visitors of that website would no doubt expect information

about the RED BULL energy drink of the Complainant. This is also true for the

domain name <redbullwesterncanada.com> which generally will also be understood

as a geographical reference to activities of the Complainant in a certain part

of Canada (e.g. the western territories, where the Respondent is located).

In conclusion, the Panel

is satisfied that the domain names <redbullwesterncanada.com>, <redbullcanada.net>

and <redbullcanada.org> are confusingly similar to trademarks in which

the Complainant has rights in many countries, including Austria, Canada and

the USA.

B. Legitimate rights

or interests in respect of the domain name

Given the fame of the RED

BULL mark and also the activities of the Complainant in The United States, it

is inconceivable that the Respondent was unaware of the Complainant before registering

the domain names at issue. It is remarkable that the Respondent found and chose

three domain names which were not yet registered by the Complainant, who indeed

has registered a large list of domain names incorporating its trademark RED

BULL, including the domain names <redbull.cd> and <redbullusa.com>.

It can therefore reasonably be excluded beyond any doubt that the Respondent

created a fantasy name, which happened to consist of the trademark RED BULL

of the Complainant and geographical denominations ("canada" and "westerncanada"

respectively).

Furthermore, the Respondent's

domain names are not descriptive terms, in which he might have an interest.

Even if "red" and "bull" are common words of English language,

their combination creates a term with a distinct meaning, which is not communicating

any common message, since red bulls do not exist in nature.

The Complainant has not

consented to the Respondent's use of the domain names, which are incorporating

his trademark RED BULL. Simple stocking of the domain names by the Respondent

does not create any right or legitimate interest in the domain names.

Furthermore, none of the

circumstances listed under 4(c) of the Policy, possibly demonstrating rights

or legitimate interests, are given. The Respondent has never used the domain

name in connection with a bona fide offering of goods or services, and he has

not demonstrated any preparations for such use. According to a submission, sent

by the Respondent to the Center, he has sold the names for a substantial amount

to a third party. This demonstrates that the sole purpose of registering the

domain names at issue was to sell them for an amount of money in excess of out-of-pocket

costs directly related to the domain name.

Therefore, in the absence

of any submission of the Respondent, the Panel concludes that the Respondent

has no rights or legitimate interests vis-a-vis the Complainant in the domain

names <redbullwesterncanada.com>, <redbullcanada.net> and <redbullcanada.org>.

C. Registration and

use in bad faith

For a Complainant to succeed,

the Panel must be satisfied that a domain name has been registered and is being

used in bad faith. As an example, Paragraph 4(b)(i) of the Policy mentions registration

of the "domain name primarily for the purpose of selling, renting or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant for

valuable consideration in excess of out-of-pocket costs directly related to

the domain name."

A generally applied test

is therefore whether a Respondent has attempted to sell the domain name(s) for

a sum in excess of the Respondent’s out of pocket expenses in registering the

domain name.

The Respondent has not

attempted to sell the domain names to the Complainant and, at present does not

actively use them. However, in a facsimile sent to the Center in response to

the notification of the Complaint, the Respondent has informed the Center that

the domain names had been available for purchase in Canada and had been sold

to a client at a substantial amount. Consequently the Respondent has admitted

the facts that under the Policy are considered to be registration and use in

bad faith.

The Panel therefore concludes

that the allegation of the Complainant that the Respondent has registered and

is using the domain names in bad faith is sustained.

7. Decision

The Panel decides that

the Complainant has proven each of the three elements of paragraph 4(a) of the

Policy.

The Panel requires that

the registration of the domain names <redbullwesterncanada.com>, <redbullcanada.net>

and <redbullcanada.org> be transferred to the Complainant.

Dr. Gerd

F. Kunze

Sole Panelist

Dated: June

28, 2001

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