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Red Bull GmbH v. Unasi Management, Inc. [2005] GENDND 2112 (14 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. Unasi Management, Inc.

Case No. D2005-0930

1. The Parties

The Complainant is Red Bull GmbH, Fuschl am See, Austria represented by Schönherr Rechtsanwälte OEG, Austria.

The Respondent is Unasi Management, Inc., Panama.

2. The Domain Names and Registrar

The disputed domain names:
<redbulfighters.com>;
<redbullsfighters.com>;
<redbullxfighers.com>;
<redbullxfighter.com>;
<redbullxfightes.com>;
<redbullxfigter.com>;
<redbullxfigters.com>;
<redbullxfigthers.com>;
<redbullxfigthters.com>;
<redbullxfihgters.com>;
<redbullxfihters.com>;
<redbulxfighters.com>;
<wwwredbullxfighters.com>;

are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2005. On September 1, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On September 2, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact for the domain names at issue. 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”).

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 September 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2005.

The Center appointed Mr. Michel Bertschy as the sole panelist in this matter on October 7, 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, paragraph 7.

The Center extended the projected Decision Date to December 13, 2005, upon request of the Panel due to exceptional circumstances.

The language of these administrative proceedings is English, being the language of the registration agreement (Rules, Paragraph 11).

4. Factual Background

The Complainant is the largest worldwide producer of energy drinks. It is the producer of the RED BULL energy drink, first sold in Austria in 1987, and internationally since 1992 (Exhibits E and E1). In 2004, the Complainant sold over 1,9 million units of the energy drink (Exhibit E1).

The annual turnover of the Complainant is of approximately € 1,66 billion in 2004. Its marketing expenses totaled in excess of € 496 million the same year, of which Media expenses totaled alone € 129 million (Exhibits E and E4). Much of these expenses are related to the sponsoring of sports events widely covered by media, such as Motorcycle (“Red Bull Yamaha WCM” team) and Formula One racing (“Red Bull Sauber Petronas”, “Red Bull Racing” teams), (Exhibits E and E7). The Complainant’s involvement in sports events is widely covered by television all over the world (Exhibit E/7).

The relevant events for the sake of the present dispute are the “Red Bull X Fighters” motocross events sponsored by the Complainant in Valencia, Spain in 2001, Madrid’s La Ventas bullring in 2002, 2003, 2004 and 2005 and in the Plaza Mexico bullring, Mexico in 2005 (Exhibit F). The details of these events are found on the “www.redbullxfighters.com” website operated by the Complainant (Exhibit F).

Moreover, among the trademarks owned by the Complainant, the following International registrations are asserted for the purpose of these proceedings: RED BULL, no. 423593, registered on December 27, 1993, (Exhibit H1); RED BULL, no. 179642, registered on December 21, 1998, (Exhibit H2), RED BULL, no. 612320, registered on December 27, 1993, (Exhibit H5); RED BULL, no. 641378, registered on February 24, 1995 (Exhibit H6). In addition, the Complainant is the owner of the Community Trademarks Red Bull, no. 52787, registered on April 27, 2001, and RED BULL, no. 52803, registered on March 16, 2001, (Exhibits H3 and H4). Finally, the Complainant owns the trademark RED BULL, no. 117746.01, registered on October 22, 2001, in the Republic of Panama (Exhibit H7).

The domain names were registered on the following dates by the Respondent Unasi Management Inc., Panama (Exhibits A and B, whois.dotregistrar.com database):

<redbulfighters.com>, on May 10, 2005;

<redbullsfighters.com>, on May 10, 2005;

<redbullxfighers.com>, on April 17, 2005;

<redbullxfighter.com>, on March 30, 2005;

<redbullxfightes.com>, on April 30, 2005;

<redbullxfigter.com>, on May 17, 2005;

<redbullxfigters.com>, on April 17, 2005;

<redbullxfigthers.com>, on April 11, 2005;

<redbullxfigthters.com>, on May 10, 2005;

<redbullxfihgters.com>, on April 17, 2005;

<redbullxfihters.com>, on April 30, 2005;

<redbulxfighters.com>, on April 11, 2005;

<wwwredbullxfighters.com>, on May 3, 2005.

The domain names at issue redirect to the domain name <wwwmotorcross.com> which contains a search engine with lists of links related to motocross accessories and events (Exhibit G).

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the holder of multiple registrations and applications of trademarks consisting of or containing the words REDBULL and has traded under this name since 1987, in Austria, internationally since 1992 and in Panama since 2003. Stating the findings of the panel in Red Bull GmbH v. Tony Marinelli, WIPO Case No. D2001-0522, the Complainant asserts that the trademarks they own are “[…] inherently distinctive […]” and “[…] are in fact very strong marks.”

Referring to 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, the Complainant contends that the incorporation of a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.

All of the disputed domain names incorporate the designation RED BULL with the addition of the term “…xfighters”, both elements being either correctly or incorrectly spelled, thus creating confusion as to the source or sponsorship of the website. The domain names at issue are therefore confusingly similar to the trademark of the Complainant.

Moreover, the Respondent has no rights or legitimate interest in respect of the domain name. The Complaint has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to use any domain name incorporating any of those marks or any variations thereof. The Respondent seeks to create the false and misleading impression that his business is in some way associated with the Complainant. The fact that the Respondent has incorporated the word “…xfighters” in the disputed domain names illustrates that he is aware of the existence of the Complainant’s implication in the “Red Bull X Fighters” events. Furthermore, none of the prerequisites listed under paragraph 4(c) of the Policy demonstrating rights or legitimate interests are fulfilled.

According to the Complainant the Respondent registered and is using the domain name in bad faith. The Respondent could not have ignored the existence of the trademark at the date to the registration of the domain name. The Complainant contends that the Respondent deliberately registered the disputed domain names incorporating its trademark, with the additional reference to the widely publicised “Red Bull X Fighters” motocross events. The Complainant also contends that the present case is a typical case of “typosquatting”. Furthermore, the Respondent provides numerous links to the Complainant’s competitors on the disputed websites.

Last but not least, the Respondent has a history of “typosquatting” revealed in Deutsche Telecom AG v. Unasi Management Inc., WIPO Case No. D2005-0423, Members Equity PTY v. Unasi Management, Inc., WIPO Case No. D2005-0383, Red Bull GmbH v. Unasi Management Inc., WIPO Case No. D2005-0304.

The registration of the disputed domain name was therefore made in bad faith, and any use by the Respondent of the domain name necessarily creates the likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (paragraph 4(b)(iv) of the Policy.

The Complainant requires the cancellation of all disputed domain names except <redbullxfighter.com>, for which it requests a transfer.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

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

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

(iii) the Respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

The Complainant holds several trademark registrations for RED BULL. The Panel thus finds that the Complainant has rights in the RED BULL trademarks.

The Consensus view of WIPO UDRP panels is that if the Complainant owns a registered trademark then it satisfies the requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in the mark (Overview of WIPO Panel Views on Selected UDRP Questions, http://arbiter.wipo.int/domains/search, First UDRP Element, 1.1.).

All domain names at issue include the term “redbull” or a misspelling thereof. The Panel finds that the domain names <redbulfighters.com>, <redbullsfighters.com>, <redbullxfighers.com>, <redbullxfighter.com>, <redbullxfightes.com>, <redbullxfigter.com>, <redbullxfigters.com>, <redbullxfigthers.com>, <redbullxfigthters.com>, <redbullxfihgters.com>, <redbullxfihters.com>, <redbulxfighters.com>, <wwwredbullxfighters.com>, are confusingly similar to the Complainant’s RED BULL trademarks. The addition of the term “xfighter” (or a misspelling thereof), referring to a series of events sponsorized by the Complainant, does not contribute to lessen the confusing similarity of the disputed domain names with the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Complainant bears the “general burden of proof” under paragraph 4(a)(ii) of the Policy, which burden rests on the Respondent once the Complainant makes his case prima facie. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Overview of WIPO Panel Views on Selected UDRP Questions, http://arbiter.wipo.int/ domains/search, Second UDRP Element, 2.1.).

Paragraph 4(c)(iii) of the Policy sets forth examples of circumstances whereby a domain name registrant may demonstrate a right or legitimate interest in a domain name, including: “... making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

The Respondent did not reply to the Complainant’s contentions. The respondent’s default does not automatically result in a decision in favour of the complainant. Subject to the principles described above, the complainant must establish each of the three elements required by paragraph 4(a) of the Policy. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding (Overview of WIPO Panel Views on Selected UDRP Questions, http://arbiter.wipo.int/ domains/search, Procedural questions, 4.6.).

The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainants’ marks. The Complainant has demonstrated that Respondent’s domain names all resolve to websites unrelated to the RED BULL trademark and offering goods and services related to motocross sports, such as motorcycle accessories. The Complainant has therefore made his case prima facie.

The Respondent’s failure to use the domain names for any apparent purpose other than to divert users to websites offering goods and services unrelated to the Complainant negates the possibility that Respondent is making a legitimate non commercial or fair use of the domain name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers.

In these circumstances, the Respondent’s use of the domain names at issue does not suggest any right or legitimate interest. There is no reason to suppose that the Respondent could claim a right or legitimate interest in respect of the domain names on any other basis. The Panel finds that the second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive conditions that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including: (1) “[the Respondent] has registered or has 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 the Respondent’s documented out-of-pocket costs directly related to the domain name, or”; (2) “[has] 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 [the Respondent has] engaged in a pattern of such conduct; or” (3) “[the Respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor, or; (4)”by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”

Whether the Respondent has used the Complainant’s name in bad faith is clearly evident on the facts of this case. Indeed, the Complainant has proved that the Respondent has registered domain names which incorporate the trademarks “RED BULL” and the term “xfighter”, these elements, being either spelled correctly or incorrectly, suggesting a clear affiliation with the Complainant. The websites operated by the Respondent divert Internet users to “wwwmotorcross.com”, a site offering goods and services related to motocross sport. As the Respondent has failed to provide any bona fide explanation for this, the Panel concludes that the Respondent has attempted to attract, for commercial gain, Internet users to a commercial on line location by creating a clear likelihood of confusion with the Complainant’s notorious marks.

Furthermore, it is well-settled that the practice of typosquatting, in and of itself, can be seen as an indication of the bad faith registration of a domain name (Longs Drug Stores Cal., Inc. v. Shep Dog, WIPO Case No. D2004-1069; Lexar Media, Inc. v. Huang, WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816). The fact that the Respondent has an extensive history of typosquatting only strengthens the inference of bad faith (Deutsche Telecom AG v. Unasi Management Inc., WIPO Case No. D2005-0423, Members Equity PTY v. Unasi Management, Inc., WIPO Case No. D2005-0383, Red Bull GmbH v. Unasi Management Inc. WIPO Case No. D2005-0304).

The Panel holds therefore that the domain names were registered and used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <redbullxfighter.com> be transferred to the Complainant and that the domain names:

<redbulfighters.com>;
<redbullsfighters.com>;
<redbullxfighers.com>;
<redbullxfighter.com>;
<redbullxfightes.com>;
<redbullxfigter.com>;
<redbullxfigters.com>;
<redbullxfigthers.com>;
<redbullxfigthters.com>;
<redbullxfihgters.com>;
<redbullxfihters.com>;
<redbulxfighters.com>;
<wwwredbullxfighters.com>;

be cancelled.

Michel N. Bertschy
Sole Panelist

Dated: December 14, 2005