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Red Bull GbmH v. Emory Virgil [2005] GENDND 1124 (3 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Red Bull GbmH v. Emory Virgil

Case No. D2005-0381

1. The Parties

1.1 The Complainant is Red Bull GbmH, Fuschl am See, Austria, represented by Hogan & Hartson, L.L.C., United States of America.

1.2 The Respondent is Emory Virgil, San Diego, California, United States of America.

2. The Domain Name and Registrar

2.1 The disputed domain name <redbullscasino.biz> is registered with eNom.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2005. On April 13, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same date, eNom transmitted by email to the Center its verification response and locking the domain name, that Respondent is listed as the registrant with the contact details for the administrative, billing, and technical contact was confirmed by a whois check. The Center verified that 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”).

3.2 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 April 19, 2005. In accordance with the Rules, paragraphs 5(a), the due date for Response was May 9, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2005.

3.3 The Center appointed Jay Simon as the sole panelist in this matter on May 20, 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, paragraphs 7.

4. Factual Background

4.1 Red Bull manufactures and distributes an energy drink which features the mark RED BULL. The product was first distributed in 1987 and was introduced into the United States in 1996/1997. The mark has been in continuous use since its initial distribution in connection with energy drinks, advertising, and promotional events, e.g., athletic competitions, sports exhibitions, entertainment events, etc., as well as various merchandise, including but not limited to, clothing items.

4.2 Red Bull energy drinks are sold world-wide in 121 countries and are found in numerous outlets including beverage stores, convenience stores, grocery stores, supermarkets, restaurants, gas stations, etc.

4.3 Sales of Red Bull energy drinks grew from 113 million units in 1994 to over 1.4 billion units in 2003, including almost 500 million units in the United States.

4.4 Red Bull has advertised extensively and spent 1.7 billion euros between 1987 and 2003. In 2003 alone, Red Bull spent 418 million euros on marketing activities.

4.5 The mark RED BULL is a coined-term and is not descriptive of any goods or services offered by Complainant. As such, it has a presumptive distinctiveness. Complainant has several relevant registrations of marks with the United States Patent and Trademark Office:

Registration No.	Mark
2,494,093	RED BULL
2,594,767	RED BULL ENERGY WEAR
2,877,140	RED BULL RAMPAGE
2,877,141	RED BULL HEAVY METAL

Complainant has subsequent trademark registrations and applications in many countries, all of which incorporate the term RED BULL.

4.6 Complainant registered the domain name <redbull.com> on January 5, 1998, and through its U.S. representative registered the domain name <redbullusa.com> on December 23, 1999.

4.7 Complainant’s counsel sent a cease and desist letter (and e-mail) to Respondent on August 3, 2004. No response was received. A further e-mail was sent by Complainant’s counsel on November 30, 2004. Again, no response was forthcoming.

4.8 Respondent appears to have registered the disputed domain name on February 2, 2004 (based on the WHOIS database). Respondent had earlier registered the domain name <redbullscasino.com>. Respondent allowed this registration to lapse, and Complainant acquired the registration.

4.9 Respondent did not file a response in these proceedings and was notified of its default by the Center on May 10, 2005.

5. The Parties Contentions

A. Complainant

5.1 Complainant contends that its activities: distribution of the Red Bull Energy Drink, its extensive advertising, sponsorship of events, etc., as well as its trademark registrations of the RED BULL mark and family of marks, that the marks are unique and distinctive, that Complainant has acquired rights in the RED BULL mark and the family of RED BULL marks. Complainant cites articles in leading publications, e.g., Newsweek, The Economist, regarding its impact on the public and the recognition of its name and marks.

5.2 Complainant further contends that its use of RED BULL mark and variations thereof began long before Respondent’s registration of the disputed domain name (and, presumably, before Respondent’s registration of the lapsed domain name, currently registered to Complainant).

5.3 Complainant contends that it is the owner of the RED BULL mark and that the disputed domain name is confusingly similar to the mark in which it has rights; pluralizing “bull” and adding a descriptive term “casino” notwithstanding.

5.4 Complainant further contends that the disputed domain name fully incorporates the mark in which Complainant has rights thereby making the disputed domain name confusingly similar to Complainant’s mark. (This Panel notes that domain names consist of alpha numeric symbols and that confusing similarity is measured by the relationship between the alpha numerics of the mark in which a complainant has rights and the alpha numerics of the disputed domain name. Thus, the depiction of the single or double bull designs is not a consideration in determining confusing similarity but can be considered in the context of paragraphs 4(b) of the Policy, particularly regarding Respondent’s activities in representing itself as having a connection to Complainant).

5.5 Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name in that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services; Respondent has falsely claimed endorsements for its website; Respondent is not making any legitimate, non-commercial use or fair use of the disputed domain name; but rather, Respondent’s use of the disputed domain name is for commercial purposes (e.g., the user must deposit money into a casino account before playing at an on-line casino); and that Respondent was not commonly known by the disputed domain name or any variation thereof.

5.6 Presumably, Complainant has not authorized or licensed Respondent to use the disputed domain name (or if so that authorization or license has been revoked): witness the letter and e-mail sent to Respondent requesting that Respondent cease and desist from using the disputed domain name.

5.7 Complainant contends that Respondent has registered and is using the disputed domain in bad faith in that Respondent was undoubtedly aware of the Red Bull energy drink and its extensive marketing prior to Respondent’s registration of the disputed domain name – and that Complainant’s RED BULL mark is a famous mark.

5.8 Complainant further contends that the disputed domain name was registered by Respondent to cause confusion among Internet users for Respondent’s commercial gain.

5.9 Complainant further contends that bad faith registration and use exists when one exploits a mark after knowledge that another has rights in that mark.

5.10 Complainant requests that this Panel transfer the disputed domain name to Complainant.

B. Respondent

5.11 Respondent has failed to respond to the Complaint and has not otherwise actively participated in these proceedings.

6. Discussion and Findings

6.1 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element noted above in paragraph 6.1.

6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with paragraphs 14(b) of the Rules, “the panel shall draw such inferences…as it considers appropriate”.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.4 Complainant has shown usage and recognition of the RED BULL mark by the consuming public prior to its registration of the mark. The extensive marketing program and registration of its marks in many countries of the world together with the distinctiveness of the mark show that Complainant has obtained common law rights in the mark as well as rights that come with registration of the mark. The evidence suggests that the RED BULL mark may be considered a famous mark.

6.5 The disputed domain name incorporates the entirety of the Complainant’s registered mark and differs from that mark in that there is no space between the words “red” and “bull”, “bull” is pluralized by the addition of an “s”, Respondent adds the word “casino”, and of course the suffix “biz”. Numerous decisions have held that the differences in the disputed domain name are insufficient to render the disputed domain name as not being identical to or confusingly similar to the RED BULL mark in which Complainant has rights.

6.6 Thus, the omission of a space between words is of no significance in determining the identity or confusing similarity, see Tarjeta Naranja S.A. v. Mr Dominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295. Similarly, the pluralizing of “bull” is of no significance, see Halcyon Yarn, Inc. v. Henry Chan, WIPO Case No. D2004-0336. In so far as the addition of the generic and descriptive word “casino” is concerned, neither is this change one that renders the disputed domain name sufficiently different from Complainant’s mark, see Credit Suisse Group v. Kingdomdatanet Network, Inc., WIPO Case No. D2004-0846 (“creditsuissefinance” confusingly similar to “Credit Suisse”; note also the omission of a space); see also Six Continents Hotels, Inc. v. credoNIC.com/DOMAIN FOR SALE, WIPO Case No. D2004-0987 (<happyholidayinn.com> confusingly similar to Holiday Inn). That the suffix “.biz” is of no significance can be seen from Pomellato S.p.A. v. Richard Tonetti, WIPO case No. D2000-0493, regarding the “.com” suffix. In general, see 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, to the effect that the addition of generic terms or common terms to a mark “does not change the overall impression of the designations as being” domain names connected to Complainant. This Panel is also cognizant of the seminal decision regarding confusing similarity of marks and disputed domain names in EAuto, L.L.C. v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

6.7 This Panel finds that the disputed domain is confusingly similar to Complainant’s mark RED BULL in which Complainant has rights.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.8 Paragraph 4(c) of the Policy lists three non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain name.

6.9 In respect of demonstrating a respondent’s lack of rights or legitimate interests in a disputed domain name, the burden of proof rests with Complainant. However, the Complainant having made the necessary assertions, it is incumbent upon the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name, the Respondent being uniquely possessed of this evidence, if such evidence exists. Respondent has failed to present any evidence regarding its rights or legitimate interests in the disputed domain name, and such failure is tantamount to admitting the truth of Complainant’s assertions. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

6.10 Regarding paragraphs 4(c)(i) of the Policy, it is true that Respondent was offering services in connection with the disputed domain name prior to any notice to Respondent of these proceedings. The question, of course, is whether the services offered by Respondent were bona fide services under this sub-paragraph. Respondent has not come forward with any evidence to support its rights or legitimate interests in the disputed name. Consequently, it appears to this Panel that Respondent is using the disputed domain to divert internet users to its website for the purpose of commercial gain, and that Respondent is trading on Complainant’s reputation and goodwill for its own purposes. Thus, Respondent’s services are not a bona fide use of the disputed domain name. (Also, note that Respondent is using the well known single bull and double bull depictions of Complainant’s mark, thereby leading the internet user into believing that Respondent’s website is associated with Complainant when, in fact, it is not associated with Complainant.) See also Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 and The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701.

6.11 Regarding paragraphs 4(c)(ii) of the Policy, there is no evidence that Respondent was commonly known by the disputed domain name. Rather, the evidence suggests that Respondent was well aware of Complainant, Complainant’s mark, and Complainant’s activities and Respondent sought to pass itself off as somehow being associated with Complainant.

6.12 Regarding paragraphs 4(c)(iii) of the Policy there is no evidence that Respondent is making a non-commercial or fair use of the disputed domain name. To the contrary, Respondent seeks commercial gain by its use of the disputed domain name by requiring internet users to set up an account and deposit money before it can play at an on-line casino. And Respondent’s use of the disputed domain name seems for the sole purpose of misleadingly diverting consumers to its website.

6.13 There is abundant case law to the effect that it is highly unlikely that in circumstances such as these, where a well known mark is being misappropriated, that Respondent could show any rights or legitimate interests in the disputed domain name. And Respondent has shown no such rights or interests. See Credit Suisse Group v. Kingdomdatanet Network, Inc. supra; Delta Corporate Identity, Inc. v. Ameriasa, FA0206000114657 (Nat. Arb. Forum July 30, 2002). Thus, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.14 Paragraph 4(b) of the Policy sets out four, non-exclusive indicia of bad faith registration and use. This Panel notes that a showing of bad faith does not require finding intentional malice, only that Respondent’s actions, by a preponderance of the evidence, satisfies any of the recited elements of paragraphs 4(b) of the Policy. It is abundantly clear to this Panel that paragraph 4(b)(iv), at the least, is satisfied by Respondent’s actions.

6.15 Respondent had constructive notice of Complainant’s marks prior to registering the disputed domain name, and undoubtedly had actual notice of Complainant’s marks and activities. By itself, this knowledge is evidence of bad faith registration and use. See Kohler Co. v. Chris Friedland d/b/a Faucet Direct Inc. FA0207000115043 (Nat. Arb. Forum August 8, 2002). This Panel also believes that Respondent has attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, endorsement of its website. One need only look to the confusing similarity of the disputed domain name with Complainant’s mark and Respondent’s activities, the requirement of opening an account with money to play at the on-line casino, and the obvious trading on Complainant’s goodwill and reputation to attract Internet users to Respondent’s website.

6.16 This Panel is of the opinion that the RED BULL mark is inherently distinctive and very strong as found in Red Bull GmbH v. Tony Marinelli, WIPO Case No. D2001-0522, and cited in Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035. Consequently, and considering the variety of well known activities engaged in by Complainant, this Panel finds that Respondent’s registration and use of the disputed domain name was for the specific purpose of trading on the goodwill and reputation developed by Complainant’s well known and federally registered mark.

6.17 This Panel finds that Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

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

Jay Simon
Sole Panelist

Dated: June 3, 2005