Red Bull GmbH v. Criag Jackson

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. Craig Jackson

Case No. D2002-0068

1. The Parties

The Complainant is Red Bull GmbH, ("Red Bull"), a company incorporated in Austria, whose registered office is at Brunn 115, A-5330 Fuschl am See, Austria ("Complainant"). The Complainant is represented by Dr. Christian Hauer, Schönherr Barfuß Torggler & Partners, with a mailing address of Tuchlauben 13, A-1014 Wien, Austria.

The Respondent is Craig Jackson, with a mailing address of Private bag MBE P 224, Auckland, 1030, New Zealand ("Respondent").

2. The Domain Names and Registrar

The domain names subject to this Complaint are <redbullradio.com> and <redbullradio.net> (hereinafter the "Disputed Domain Names"). The registrar of the Disputed Domain Names is Register.com, Inc., 575 8th Avenue - 11th Floor, New York, NY 10018, United States of America ("Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

"Center") on January 23, 2002 (electronic copy) and January 28, 2002

(hard copy) and assigned the case number D2002-0068.

The Center verified that the Complaint satisfied the formal requirements of

the Uniform Domain Name Dispute Resolution Policy ("Policy"), the

Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"),

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

("Supplemental Rules"), in accordance with Paragraph 4(a) of the Rules,

and Paragraph 5 of the Supplemental Rules. The Administrative Panelist ("Panel")

is satisfied that the Complaint satisfied the Rules and Supplemental Rules.

Notification of the Complaint and commencement of the administrative proceeding

were given to Respondent by notice dated February 5, 2002. The notification

of Complaint and commencement of administrative proceeding were sent by courier,

facsimile, and e-mail. The Panel has seen Respondent’s acknowledgment of the

e-mail notification. There has been no return of the post and the facsimile

notification and therefore the Panel is satisfied that the Complaint satisfied

the Rules and Supplemental Rules with regard to notification. No substantive

response was received by the expiry of the twenty-day deadline on February 26, 2002.

Notification of Respondent’s default was given on February 26, 2002, by email

at the address given in the Complaint. Respondent answered the Notification

of Respondent’s default on February 26, 2002. The Panel is therefore

satisfied that the notification of Respondent’s default was effectively given.

The Panel was properly constituted. The undersigned Panelist submitted a Statement

of Acceptance and Declaration of Impartiality and Independence.

The Panel has not received any requests from Complainant or Respondent regarding

further submissions, waivers, or extensions of deadlines. The Panel has not

found it necessary to request any further information from the parties, as a

consequence of which the date scheduled for the issuance of the Panel’s decision

was April 11, 2002. The Panel has requested additional time to review

the information received and the new decision date is April 18, 2002.

4. Factual Background

Under Paragraph 5(e) of the Rules, "[i]f a Respondent does not submit

a response, in the absence of exceptional circumstances, the Panel shall decide

the dispute based on the [C]omplaint." Since Respondent failed to submit

a timely Response, the Panel adopts here the following asserted facts in the

Complaint as undisputed facts, and decides the dispute between Complainant and

Respondent based on the following undisputed facts and Respondent’s non-substantive

communications:

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. Currently the Red Bull energy drink is sold in 56 countries

all over the world and the Complainant has sold approximately 900 million

units in 2000. Currently, Complainant has an annual turnover of approximately

EURO 790 million. Additionally, since 1995, the Complainant has sponsored and

co-owned Formula One racing cars, the RED BULL SAUBER PETRONAS teams, which

have been televised on a worldwide basis and which have made the trademark RED

BULL ("Trademark") well known all over the world.

The Complainant has traded under the Trademark 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 Trademark, details

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

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

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

to register, a range of trademarks consisting of or containing the Trademark

in a large number of countries such as the United States, Canada, Russian Federation,

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

Saudi Arabia and also Australia and New Zealand. In addition, the Complainant

has obtained various registered Community Trademarks including the mark "RED BULL."

The Complainant also states that it is the registrant of numerous domain names

incorporating the Trademark, including <www.redbull.com >, < www.redbull.org>,

<www.redbull.com.au> and <redbullentertainment.com>. The Complaint

states that the principal website at <www.redbull.com> operated by the

Complainant contains information on the Red Bull energy drink, sports events

sponsored by the Complainant and links to other Red Bull websites, all of which

are evidence of the entertainment activities of the Complainant.

On July 11, 2001, Complainant sent Respondent a letter via mail informing the

Respondent that the registration of the Disputed Domain Name <redbullradio.com>

was an infringement of the Complainant’s trademark rights in its "RED BULL"

trademarks and trademark applications and demanded that Respondent transfer

the Disputed Domain Name. Respondent did not respond to Complainant’s letter.

Respondent is the registrant of the Disputed Domain Names <redbullradio.com>

and <redbullradio.net>. The Disputed Domain Names were not functional

at the time of the Complaint.

On February 5, 2002, Respondent acknowledged receipt of the Complaint by replying

to the Center stating "The fact that I purchased > redbullradio.com

and > redbullradio.net. Should be of no ones business but my own. There are

a number of companies registered in new Zealand that bear the name "red

bull" One being a drinks manufacturer (the complaint I believe) another

being a mining industry company, My self am in the film television and radio

industry, an industry that as fare as I can see has no conflict with any others

of the same name" (sic.).

5. Parties’ Contentions

The Complainant contends:

(i) The Disputed Domain Names <redbullradio.com> and <redbullradio.net>

registered by Respondent are confusingly similar to the Complainant’s Trademark

because they incorporate the entire Trademark. Complainant contends that consumers

will associate the Disputed Domain Names with the Trademark and are likely to

believe falsely that Complainant is affiliated with or endorses Respondent.

(ii) Respondent has produced no evidence to show a right or legitimate interest

in the Disputed Domain Names. Complainant has not licensed or otherwise permitted

Respondent to use its Trademark or to use any domain name incorporating its

Trademark. Complainant further contends that since Respondent registered the

Disputed Domain Names, they have not been functional. There is no evidence that

a website or other on-line presence is in the process of being established which

will use the Disputed Domain Names.

(iii) Respondent registered and used the Disputed Domain Names in bad faith.

Citing the "fame" of the RED BULL trademarks, Complainant contends

that Respondent necessarily had actual knowledge of Complainant’s rights in

its Trademark.

Complainant sent Respondent a demand letter on July 11, 2001, to which Respondent

did not reply. This failure to respond, according to Complainant, is further

evidence of Respondent’s bad faith.

The Respondent contends:

Respondent’s email response dated February 5, 2002, to the Center stated:

"In reply to your email. The fact that I purchased > redbullradio.com

and > redbullradio.net. Should be of no ones business but my own. There are

a number of companies registered in new Zealand that bear the name "red

bull" One being a drinks manufacturer (the complaint I believe) another

being a mining industry company, My self am in the film television and radio

industry, an industry that as fare as I can see has no conflict with any others

of the same name."

Respondent’s email response dated February 26, 2002 to the Center

stated:

"Hi, as i am a very small company that neither has the time or the resorses

to fight a company the size of Red Bull I am giving up this fight. A fight that

i may ad is totally un-fare as i am trying to make a product that has nothing

to do with the complainants product. But the bully boy tactic of multi nationals

wins out again. Viva la Globalisation."

To the extent either of Respondent’s email communications is, more substantive,

the Panel will attempt to take them in account. Otherwise, Pursuant to Paragraph

5(e) of the Uniform Rules, in the absence of a timely Response from the Respondent,

"the Panel shall decide the dispute based on the complaint." The Panel

will independently determine the merits of the Complaint on the basis of all

evidence available.

6. Discussion and Findings

(i)The domain name registered by Respondent is confusingly similar to a mark

owned by the Complainant.

The domain names in dispute are <redbullradio.com> and <redbullradio.net>.

The Disputed Domain Names contain the Complainant’s Trademark and imply endorsement

by the Complainant.

The Complainant has numerous trademark applications and registrations in Austria

and various other countries containing the RED BULL trademark. In Red Bull

GmbH v. Tony Marinelli, WIPO Case No.

D2001-0522, the Panel found that "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 are in fact very strong

marks." Therefore, apart from the TLO suffixes forming part of the Disputed

Domain Names, which do not have 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 "radio" in the Disputed

Domain Names.

While the Disputed Domain Names of the Respondent are not identical with the

Complainant’s Trademark, the addition of the word "radio" to the Trademark

in the Disputed Domain Names has, in the Panel’s view, no impact on the viewer’s

primary focus, namely "redbull."

Prior decisions make it clear that common nouns, such as radio, are rarely

distinguishing characteristic of domain names. Even though, the Complainant’s

principal business is the manufacture of energy drinks and not radio broadcasting,

the strength of the Complainant’s Trademark and the fact that Complainant sponsors

certain broadcast and entertainment events, the Panel finds that the domain

names <redbullradio.com> and <redbullradio.net> are confusingly

similar to Complainant’s Trademark.

The Panel finds for the Complainant on the first element, that Respondent’s

domain names are confusingly similar to the trademarks in which the Complainant

has rights.

(ii)Respondent has no right or legitimate interest in the domain names.

Except for having registered and maintained the Disputed Domain Names, there

is no evidence to suggest Respondent has ever used, or demonstrated preparations

to use, the Disputed Domain Names, or a name corresponding to the Disputed Domain

Names in connection with a bona fide offering of goods and services. Although

Respondent has stated that he is in the "film television and radio industry,"

Respondent provided no evidence to support this statement or his preparations

to use the domain name in such industry. There is no evidence that Respondent

has been commonly known by the Disputed Domain Names. There is also no evidence

that Respondent is making or intends to make a legitimate non-commercial or

fair use of the Disputed Domain Names. The Respondent is not licensed or otherwise

permitted to use Complainant’s Trademark or to apply for any domain name incorporating

Complainant’s Trademark. The Respondent has not proven that it has rights or

legitimate interests in the Disputed Domain Names.

Based on Complainant’s assertions, and Respondent’s default, the Panel has

no choice but to agree with Complainant that Respondent has no right or legitimate

interest in the Disputed Domain Names.

The Panel therefore concludes that Respondent has no right or legitimate interest

in the Disputed Domain Names. Mere registration alone cannot constitute such

rights.

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

The Panel finds that Respondent registered and used the Disputed Domain Names

in bad faith. Paragraph 4(b) of the Policy provides four circumstances that

are evidence of registration and use in bad faith: (i) evidence of the registration

and use of a domain name in circumstances indicating registration for the purpose

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

the Complainant; (ii) evidence of registration of the domain name in order to

prevent the owner of the trademark or service mark from using the mark in a

corresponding domain name, provided that Respondent has engaged in such conduct;

(iii) evidence of the registration of the domain name for the purpose of disrupting

the business of a competitor; or (iv) evidence of use of the domain name to

intentionally attract, for commercial gain, Internet users to the website by

creating a likelihood of confusion with the Complainant’s mark as to the source,

sponsorship, affiliation, or endorsement of the website.

The Panel finds that Complainant’s Trademarks are well known and Respondent

knew or should have known of Complainant’s Trademarks. In fact, in Respondent’s

February 5, 2002 e-mail, Respondent acknowledges his awareness of

Complainant’s Trademark for drinks, but states that he is trying to make a product

that has nothing to do with Complainant’s product. While Respondent could have

chosen almost any name for its website, it chose a name consisting of Complainant’s

Trademark. The Panel finds untenable the fact that Respondent chose a name which

encompasses Complainant’s Trademark without wishing to attract Internet users

to Respondent’s website by creating a likelihood of confusion with Complainant’s

mark as to the source, affiliation or endorsement of its products.

Although the Disputed Domain Names are currently inactive, Respondent has made

it clear that he is trying to make a product that has nothing to do with Complainant’s

product. It appears that Respondent wishes to place these products on the websites

of the Disputed Domain Names. The Panel assumes this to be true without any

additional information from Respondent. The fact that Respondent registered

but has not made use of the Disputed Domain Names has no bearing at all on the

bad faith elements. It has been established in a number of cases that registration

together with "inaction" and other facts can constitute bad faith

use. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003, Ingersoll-Rand v. Frank Gully, d/b/a Advcomren,

WIPO Case No. D2000-0021, and Guerlain,

S.A. v. Peikang, WIPO Case No. D2000-0055).

The Complainant should not have to wait for Respondent to place its products

(possibly competing products) on its websites in order to meet the element of

bad faith. Otherwise, people everywhere would be allowed to hold hostage any

domain name that they see fit.

The Panel finds that under Paragraph 4(b)(iv) of the Policy that Respondent

registered the Disputed Domain Names to attract, for commercial gain, Internet

users to Respondent’s website by creating a likelihood of confusion with the

Complainant’s mark as to the source, sponsorship, affiliation, or endorsement

of a product or service on Respondent’s website. Consequently, the Panel finds

that the Disputed Domain Names have been registered and are being used in bad

faith.

The Panel finds that the Complainant has succeeded in proving that the Disputed

Domain Names were registered and are being used in bad faith.

Thus, Complainant has proven its three submissions in accordance with Paragraph 4(a)

of the Policy, and accordingly, Complainant has succeeded in its Complaint.

7. Decision

In light of the foregoing, the Panel decides that the Disputed Domain Names

registered by Respondent are confusingly similar to the Trademarks of Complainant,

that Respondent has no right or legitimate interest in respect to the Disputed

Domain Names, and that Respondent’s Disputed Domain Names have been registered

and are being used in bad faith. Accordingly, pursuant to Paragraph 4(a) of

the Policy, the Panel requires that registration of the Domain Names <redbullradio.com>

and <redbullradio.net> be transferred to Complainant.

Timothy D. Casey

Solo Panelist

Dated: April 18, 2002

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