Red Bull GmbH v. Manuel Sousa

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Red Bull

GmbH v. Manuel Sousa

Case No.

D2001-0584

1. The Parties

1.1 The Complainant

is Red Bull GmbH, a company incorporated in Austria with its registered

office in Fuschl am See, Austria.

1.2 The Respondent is

Manuel Sousa, of 1830 E. Sahara Suite 101, Las Vegas, NV 89104, U.S.A.

2. The Domain Names

and Registrar

2.1 The domain names

upon which this Complaint is based are <redbullentertainment.com>, <redbullentertainment.org>

and <redbullentertainment.net>. The registrar of the domain names as at

the date of the Complaint is Register.com, Inc ("RCI").

3. Procedural History

3.1 The Complaint was

made pursuant to the Uniform Domain Name Dispute Resolution Policy approved

by the Internet Corporation for Assigned Name and Numbers ("ICANN")

on October 24, 1999 (the "Policy"), in accordance with the Rules for

Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October

24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy in effect as of December 1, 1999

(the "Supplemental Rules").

3.2 The Complaint was

received by the WIPO Arbitration and Mediation Center (the Center") by

email on April 23, 2001 and in hard copy on April 27, 2001. The fees prescribed

under the Supplemental Rules have been paid by the Complainant. The Complaint

states that a copy of the Complaint together with the cover sheet as prescribed

by the Supplemental Rules have been sent to the Respondent and that a copy of

the Complaint has been sent to the Registrar of the domain name in dispute,

RCI.

3.3 On April 24, 2001,

the Center sent to the Complainant’s representative an Acknowledgment of Receipt

of Complaint.

3.4 The Center sent

a Request for Registrar Verification to RCI on April 24, 2001, by email. RCI

responded to the Center’s request on April 24, 2001, stating:

(a) that RCI was the

registrar for the domain names in dispute;

(b) that the Respondent

was the current registrant of the domain names in dispute;

(c) that the domain

names in dispute were active;

(d) the Respondent’s

contact details; and

(e) that the Uniform

Dispute Resolution Policy was applicable.

3.5 The Panel notes

that in its response to the Center’s Request for Registrar Verification, RCI

stated that it did not confirm that a copy of the Complaint regarding

the domain names in dispute was sent to it by the Complainant as required by

the Supplemental Rules. The Complaint states, at paragraph 17: "A copy

of this Complaint has been sent or transmitted to the concerned registrar on

April 23, 2001, by e-mail attachment.".

3.6 In the absence of

any relevant evidence, the Panel is of the view that although the Complainant

may have sent a copy of the Complaint to an email address which it took to be

that of RCI on April 23, 2001, RCI, for whatever reason, had not received that

email at the time of its response to the Center’s Request for Registrar Verification.

The Panel notes, however, that the Center emailed details of the Complaint to

RCI on May 23, 2001. For the purposes of paragraph 10 of the Rules, the Panel

is satisfied that no unfairness to the Respondent resulted from the fact that

RCI may not have received full details of the Complaint until May

23, 2001.

3.7 The Center contacted

the Complainant’s representative by email on May 1, 2001, to request four additional

copies of the video tape (of various commercials made for the Complainant to

advertise its Red Bull energy drink) which was originally provided

with the Complaint. The four additional copies of the videotape originally provided

with the Annexures to the Complaint were received by the Center on May 22, 2001.

3.8 The Center sent

the Notification of Complaint and Commencement of Administrative Proceeding

on May 23, 2001, to the Respondent by post/courier (with enclosures), by facsimile

(without attachments) and by email (without attachments), and to the Complainant’s

representative by email (without attachments).

3.9 On May 23, 2001,

the Center received an email from the Respondent which is discussed below. On

May 31, 2001, the Center contacted the Respondent by email to inform the Respondent

that the deadline by which the Respondent could file a full Response was June

11, 2001.

3.10 On June 14, 2001,

the Center sent to the Respondent an Acknowledgement of Receipt of Response,

referring to the email Response received by the Center from the Respondent on

May 23, 2001.

3.11 On June 25, 2001,

the Center sent a Notification of Appointment of Administrative Panel to the

Complainant’s Representative and to the Respondent by email.

3.12 The Center sent

a Transmission of Case File to Administrative Panel by email on June 25, 2001.

The documentation was received in hard copy by the Panel, together with a copy

of the videotape, on June 28, 2001 in Sydney, Australia.

3.13 All other procedural

requirements appear to have been satisfied.

4. Factual Background

4.1 Activities of the

Complainant

The following information

is asserted as fact in the Complaint.

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 and in Germany in 1994.

In 2000, the Red Bull energy drink was sold in 55 countries all over the world

and the Complainant has sold approximately 900 million units in 2000. Currently,

Red Bull has an annual turnover of approximately EURO 790 million. Additionally,

the Complainant has since 1995 sponsored and co-owned Formula One racing cars,

the RED BULL SAUBER PETRONAS team, which have been televised on a world wide

basis and which have made the trade mark RED BULL well-known also in the USA

and Canada.

4.2 The Complainant’s

trade marks

The following information

is asserted as fact in the Complaint.

The Complainant has traded

under the name "Red Bull" in Austria since 1987, and outside Austria

since 1992 (the international launch date of the Red Bull energy drink).

The Complainant is the

proprietor of more than 12 registrations and applications in Austria of trademarks

consisting of or containing the mark "RED BULL", details of which

are set out in Annex G to the Complaint. The various trademark registrations

and applications cover an extensive range of goods and services, and span all

of the 42 trademark classes. As well, the Complainant has registered, or applied

to register, a range of trademarks consisting of or containing the words "RED

BULL", in a large number of countries such as U.S.A., Canada, Russian Federation,

United Kingdom, Germany, France, Spain, Italy, Ireland, China, South Africa

and Saudi Arabia. In addition, the Complainant has obtained various registered

Community Trademarks including the mark "RED BULL", details of which

are set out in Annex H to the Complaint.

The Complainant also states

that it is the registrant of numerous domain names incorporating the words "redbull",

including <redbull.com>, <redbull.org> and <redbull.co.uk>.

The Complaint states that the principal website operated by the Complainant

(at <www.redbull.com>) contains information on the Red Bull energy drink,

sports events sponsored by the Complainant, download-versions of different Red

Bull commercials and links to other Red Bull websites, all of which are evidence

of the entertainment activities of the Complainant.

4.3 Activities of the

Respondent

No formal Response has

been received from the Respondent in this proceeding, and no information is

available to the Panel as to the activities of the Respondent. As stated above,

an email from the Respondent was received by the Center on May 23, 2001, but

this email, which is discussed below, contained no information as to the activities

of the Respondent.

5. The Complainant’s

contentions in the Complaint

5.1 The Complaint asserts

that each of the elements specified in paragraph 4(a) of the Policy have been

satisfied.

5.2 In reference to

the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the

relevant part of the domain names in dispute is the expression "Red Bull",

which is clearly identical with or confusingly similar to the various trademarks

and trademark applications "RED BULL", which are registered and/or

owned by the Complainant. The Complaint refers to the Administrative Panel Decision,

WIPO Case No. D2000-0766, Red Bull

GmbH v. Harold Gutch.

The Complainant alleges

that the addition of the word "entertainment" to the words "redbull"

leads to the conclusion that the domain names in dispute have been registered

by a branch or subsidiary of the Complainant dealing with its entertainment

activities, which creates additional confusion for the relevant public.

5.3 In reference to

the element in paragraph 4(a)(ii) of the Policy, the Complaint states that the

Complainant has not licensed or otherwise permitted the Respondent to use any

of its trademarks or to apply for or use any domain name incorporating any of

those marks. The Complaint further states that combination of the words "Red

Bull" is a purely fanciful combination of words, as there does not exist

a red-coloured bull and, therefore, no trader would legitimately choose this

mark unless seeking to create an impression of association with the Complainant.

The Complaint alleges that in this respect, the Respondent seeks to create the

false and misleading impression that he acts in accordance with the Complainant

conducting entertainment activities. Accordingly, the Respondent has no rights

or legitimate interests in respect of the disputed domain names. The Complaint

refers to the Administrative Panel Decision, WIPO

Case No. D2000-0766, Red Bull GmbH v. Harold Gutch.

5.4 In reference to

the element in paragraph 4(a)(iii) of the Policy, the Complaint recites paragraph

4(b) of the Policy and sets out the circumstances, which shall be evidence of

the registration and use of a domain name in bad faith under this paragraph.

The Complaint goes on to state that evidence of bad faith registration and use

of the domain names in dispute in this case is established by the following

circumstances:

- The trademark "RED

BULL" is one of the best known trademarks not only in Austria but all over

the world, and it is inconceivable that the Respondent would not be aware of

the fact.

- By virtue of the widespread

use and reputation of the trademark "RED BULL", members of the public

in the U.S.A. would believe that the Respondent was the Complainant or in some

way associated with the Complainant. In addition, Internet-users in countries

such as Austria and Germany, where the trademark "RED BULL" is very

well-known by the public, would immediately believe that the disputed domain

names are in some way associated with the Complainant.

- Any realistic use

of the domain names in dispute must misrepresent an association with the Complainant

and its goodwill, resulting in passing off, breaches of Unfair Competition legislation

and trademark infringement.

- Two of the domain

names in dispute, <redbullentertainment.org> and <redbullentertainment.net>

are not yet functional. There is no evidence that a website or other on-line

presence is in the process of being established which will use these domain

names. There is no evidence of advertising, promotion or display to the public

of the domain names. There is no evidence of advertising, promotion or display

to the public of the domain names. Finally, there is no evidence that the Respondent

has offered to sell, rent or otherwise transfer the domain names to the Complainant

or any other person. As the Administrative Panel correctly stated in Telstra

and Red Bull, "the relevant issue is not whether the Respondent is

undertaking a positive action in bad faith in relation to the domain name, but

instead whether, in all circumstances of the case, it can be said that the Respondent

is acting in bad faith: "..... the concept of a domain name ‘being used

in bad faith’ is not limited to positive action; inaction is within the concept.

.... it is possible .... for inactivity by the Respondent to amount to the domain

name being used in bad faith.".

- With regard to the

domain name <redbullentertainment.com>, this domain name is used in connection

with a website solely containing the words "for a good time call"

and the U.S. telephone number 702-862-8999. Obviously, the opponent is using

the reputation and fame of the Complainant in bad faith for this website of

dubious qualities.

The Complaint states that

the requirement of registration and use of the disputed domain names by the

Respondent in bad faith is therefore fulfilled.

6. The Respondent’s

contentions in its email response dated May 23, 2001.

6.1 In his email

to the Center dated May 23, 2001, the Respondent states:

"I have no

interest in redbullentertainment.com, .net, .org. I sent an email to the fact

that I would discontinue using the redbullentertainment company which never

actually did any business and never was established. I will assume that your

purpose is only to waste my time and harass me.

All I did was register

the name without knowing that there would be a conflict, since my company has

nothing to do with yours. When I registered <redbullentertainment.com>,

.net, .org the domain names were available, I did nothing wrong by simply paying

the registering fee. If you continue to pursue this matter I will seek legal

counsel to file a lawsuit for your continued harassment."

7. Discussion and Findings

7.1 This section is

structured by reference to the elements required by paragraph 4(a) of the Policy.

In order to be successful, the Complainant has the burden of proving, on the

balance of probabilities, that all three elements are present.

7.2 Domain Name identical

or confusingly similar to Complainant’s trade mark

The domain names in dispute

are <redbullentertainment.com>, <redbullentertainment.org> and <redbullentertainment.net>.

The Complainant has numerous trade mark applications and registrations in Austria

and various other countries of the words "RED BULL". Therefore, apart

from the gTLD suffixes forming part of the domain name, which do not have a

relevant distinguishing function in determining whether a domain name is identical

or confusingly similar to a trade mark or trade name, the difference between

the disputed domain names and the Complainant’s "RED BULL" trademarks

is the addition of the word "entertainment" in the domain names.

As far as a comparison

between the disputed domain names and the Complainant’s trade marks of the word

"Red Bull" is concerned, the addition of the word "entertainment"

to the words "redbull" in the domain names has, in the Panel’s view,

marginal incremental impact on what the viewer focuses on, namely, the "redbull".

This Panel’s view, consistently

expressed in prior decisions, is that common nouns are rarely distinguishing

elements. Notwithstanding that the Complainant’s principal business does not

relate to entertainment, but rather to the manufacture of energy drinks, the

Complainant does sponsor participants in certain entertainment events, such

as a team of Formula One racing cars. Accordingly, the Panel has come to the

view that, although potentially descritpive, "redbullentertainment"

is similar to the Complainant’s trademarks, and confusingly so.

The Panel therefore finds

that the Complainant has proven paragraph 4(a)(i) of the Policy.

7.3 The Respondent has

no rights or legitimate interests in the Domain Name

The Complaint asserts that

the Respondent has no rights or legitimate interests in the disputed domain

names. As stated above, the only response from the Respondent in any time in

this proceeding was the Respondent’s email to the Center dated May 23, 2001,

the first line of which is, "I have no interest in <redbullentertainment.com>,

.net, .org.". The Respondent therefore appears to admit that he does not

in fact have any rights or legitimate interests in the domain names in dispute.

It is clear to the Panel

that the Complainant owns the "RED BULL" trademarks discussed above,

and that there is no relationship or connection whatsoever between the Complainant

and the Respondent. The question before the Panel is therefore whether, notwithstanding

the ownership of the "RED BULL" trade marks by the Complainant, the

Respondent does have legitimate rights or interests in the disputed domain names.

Paragraph 4 (c) of the

Policy lists a number of circumstances which, if proven to exist by the Respondent,

can be taken to demonstrate a Respondent’s rights or legitimate interests in

a disputed domain name. There is no evidence whatsoever before the Panel that

any of the situations described in paragraph 4(c) of the Policy apply in the

case of the Respondent. Similarly, the Respondent has not put before the Panel

any evidence of its use of or preparation to use the disputed domain names,

and has in fact stated in his Response that "I sent an email to the fact

that I would discontinue using the redbullentertainment company which never

actually did any business and never was established.".

The Panel finds that the

Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.

7.4 Domain Name has

been registered and is being used in bad faith

The Panel notes that

paragraph 4(b) of the Policy states:

"For the purposes of Paragraph

4(a)(iii), the following circumstances, in particular but without limitation,

if found by the Panel to be present, shall be evidence of the registration and

use of a domain name in bad faith:

(i) circumstances indicating

that you have registered or you have acquired the domain name primarily for

the purpose of selling, renting, or otherwise transferring the domain name registration

to the complainant who is the owner of the trademark or service mark or to a

competitor of that complainant, for valuable consideration in excess of your

documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered

the domain name in order to prevent the owner of the trademark or service mark

from reflecting the mark in a corresponding domain name, provided that you have

engaged in a pattern of such conduct; or

(iii) you have registered

the domain name primarily for the purpose of disrupting the business of a competitor;

or

(iv) by using the domain

name, you have intentionally attempted to attract, for commercial gain, Internet

users to your web site or other online location, by creating a likelihood of

confusion with the complainant’s mark as to the source, sponsorship, affiliation,

or endorsement of your web site or location or of a product or service on your

web site or location."

In order to show that the

Respondent registered the domain name in bad faith, the Complainant has alleged:

first, that it is likely that when the Respondent registered the domain name

it knew or should have known of the existence of the Complainant’s "RED

BULL" trade marks; secondly, that as a result of the widespread use and

reputation of the "RED BULL" trade marks, members of the public in

the U.S.A. would believe that the Respondent was associated with the Complainant;

and thirdly, that any realistic use of the domain names results in passing off,

breaches of unfair competition legislation and trademark infringement. The Complainant

further asserts that the fact that the <redbullentertainment.net> and

.org domain names are not yet being positively used is not a bar to the domain

names having been registered and used in bad faith; finally, the Complainant

alleges that the bad faith use of the <redbullentertainment.com> domain

name is evidence by the fact that that domain name resolves to a "web site

of dubious qualities."

Therefore, the Complainant

appears to suggest that the circumstances outlined in paragraphs 4(b)(iv) are

applicable in this dispute: namely, that the Respondent has registered the domain

name either to attract Internet users to its web site by creating a likelihood

of confusion with the Complainant’s mark as to the source, sponsorship, affiliation,

or endorsement of its web site.

However, the Panel notes

that one of the disputed domain names, <redbullentertainment.com>, currently

resolves to a Whitewing Labs, Inc web site which, amongst other things, encourages

a healthy lifestyle and, in particular, a President’s Message suggesting a reduction

in the consumption of caffeine. Unusually, the ability to view the site’s source

code has been suppressed.

As regards the bad faith

registration and use of this disputed domain name by the Respondent, in the

Panel’s opinion, the circumstances set out in paragraph 4(b)(i) of the Policy

exist in respect of this dispute: namely, that the Respondent registered the

disputed domain name <redbullentertainment.com> primarily for the purpose

of selling, renting, or otherwise transferring the domain name registration

to a competitor of the Complainant for valuable consideration in excess of his

out-of-pocket expenses directly related to that domain name. The fact that the

Complainant did not allege that the circumstances set out in paragraph 4(b)(i)

of the Policy exist in respect of this dispute may due to the fact that at the

time of making the Complaint the domain name <redbullentertainment.com>

was not being used by Whitewing Labs, Inc. but allegedly resolved to a web site

of "dubious qualities".

In respect of the other

two disputed domain names, <redbullentertainment.net> and <redbullentertainment.org>,

the Panel has come to the view that the Respondent registered these domain names

with the same primary purpose as that discussed above regarding <redbullentertainment.com>,

notwithstanding the fact that these other two domain names do not currently

resolve to any active web site: the Panel accepts the argument put forward by

the Complainant, and consistently expressed in other administrative panel decisions,

that it is possible for inactivity by the Respondent to amount to a disputed

domain name being used in bad faith. Occupying an entry in the DNS is "use"

in any event, since it has a blocking function.

The Panel is of the view

that the domain names in dispute were registered and are being used in bad faith

by the Respondent at least at the time of the Complaint. Accordingly, the Panel

finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.

8. Decision

8.1 The Panel has found

that all of the requirements of paragraph 4(a) of the Policy have been proven

by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the

Policy, the Panel orders that the domain names <redbullentertainment.com>,

<redbullentertainment.org> and <redbullentertainment.net> be transferred

by RCI to the Complainant, Red Bull GmbH.

Philip N.

Argy

Sole Panelist

Dated: July

3, 2001

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