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Red Bull GmbH v. Tony Marinelli [2001] GENDND 1246 (28 June 2001)

WIPO Arbitration and Mediation Center

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.

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.

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.

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.

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.

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.

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