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La Caixa d’Etalvis i Pensions de Barcelona v. Unaci Inc. [2005] GENDND 650 (5 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Red Bull GmbH v. Unasi Management Inc.

Case No. D2005-0304

1. The Parties

The Complainant is Red Bull GmbH, of Austria, represented by Schönherr Rechtsanwälte OEG, Austria.

The Respondent is Unasi Management Inc., of Panama.

2. The Domain Name and Registrar

The disputed domain name <wwwredbull.com> is 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 March 23, 2005.

On March 24, 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 name at issue. On March 30, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response informing that the Respondent Unasi Management Inc., Panama is listed as the registrant and contact details for the administrative, billing, and technical contact were provided.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 12, 2005.

The Center verified that the Complaint together with the amendment to 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”).

The Panel independently determined and agreed with the assessment of the Center that the Complaint is in formal compliance with the requirements of the Policy, Rules and 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 April 18, 2005.

In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2005.

Paragraph 2(a) of the Rules provides that it is the provider’s responsibility to employ reasonably available means to achieve actual service of notice of the complaint to the respondent. In the light of the information available to it, The Panel accepts that the Center has fulfilled this obligation.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2005.

The Center appointed the sole panelist in this matter on June 1, 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.

The Panel considers that according to paragraph 11 of the Rules, the language of the proceedings be English.

3.1 The Complainant in this administrative proceedings is Red Bull GmbH Inc., a company incorporated in Austria. The Complainant is the registrant of large number of domain names containing the trademark RED BULL, both under generic and country–code Top Level Domains.

3.2 The Complainant operates its principle website at “www.redbull.com”. The site contains information on the Red Bull energy drink, sport events sponsored by Complainant and links to other Red Bull websites, all of which are evidence of the marketing activities of Complainant in relation to its trademark RED BULL. Registrations of and applications for the mark RED BULL exist in 199 trademarks jurisdictions by Red Bull GmbH or its subsidiaries.

3.3 The Respondent is the registrant of the domain name <wwwredbull.com>. Under this domain name, Respondent has placed numerous links to websites relating to other energy drinks. There is no link to the official website of the Complainant. Furthermore, there is a “pop-up-window” appearing on the computer screen when accessing the website under this domain. The complainant has thus requested that the contested domain name <wwwredbull.com> be transferred from the Respondent in accordance with paragraph 4(b)(i) of the Policy to the complainant.

4. Parties’ Contentions

A. Complainant

4A.1 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 internationally since 1994. Currently, the Red Bull energy drink is sold in 124 countries all over the world and Complainant has sold approximately 1,9 billion units in 2004.

4A.2 Since its launch in 1987 until 2003, Complainant has spent more than 635 million euros in penetrating the marketplace in TV, cinema and radio. Media expenses of Complaint in 2003 amounted to 133 million euros. Since 1987 until 2003, Complainant has spent 1,7 billion euros on overall marketing activities, including media expenses. In 2003, Complainant’s total marketing expenses are more than 418 million euros.

4A.3 The Complainant continues its extensive involvement with Formula One Racing. From 1995 until 2004 and to have sponsored the Red Bull Sauber Petronas team, which it co-owned until 2001. From 1997 to 2002 Complainant sponsored the motorcycle race team Red Bull Yamaha WCM. Now as of January 2005, Complainant owns its own Formula One raceteam called Red Bull Racing. This involvement of Complainant in motor sports lead to television coverage on a world-wide basis, which has made the mark RED BULL well-known all over the world.

4A.4 Through sales activities, television broadcasts, Internet activities and events sponsored by Complainant, the Red Bull energy drink has become well-known in many countries and famous in Austria.

4A.5 Based on the above factual background the Complainant states that the brand RED BULL has become the unchallenged market leader in all markets. Currently, Complainant has an annual turnover of approximately 1,66 billion euros.

4A.6 Complaint is the proprietor of multiple registrations and applications of trademarks consisting of or containing the sign Red Bull. The various trademark registrations and applications cover an extensive range of goods and services and span all of the 45 trademark classes. Complainant and it subsidiaries hold national and international trademark registrations or applications consisting of or containing the sign Red Bull in Austria and further 199 jurisdictions worldwide such as Germany, United Kingdom, the Russian Federation, USA, Australia, Canada, Brazil, South Africa, Hong Kong SAR of China, China, Taiwan Province of China, Japan and Saudi Arabia. In addition, Complainant holds various registered community trademark registrations or applications. In particular, Complainant also owns trademark registrations in Panama, where Respondent is located.

4A.7 The Complainant states that the disputed domain name integrates the trademark RED BULL in its entirety.

4A.8 The disputed domain name <wwwredbull.com> is identical or confusingly similar to various trademarks and trademark applications containing the sign Red Bull owned by the Complainant. The disputed domain name is designated and intended to mislead internet users who make a typographical mistake by omitting the period after “www” when intending to access Complainant’s own website.

4A.9 The letters “www” have no distinguishing capacity in the context of a domain name.

4A.10 Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of those marks or any variations thereof. A combination of the words “red” and “bull” is purely fanciful, as there does not exist a red colored bull. Therefore, nobody would legitimately choose this combination or any variation thereof, unless seeking to create an association of Complainant.

4A.11 Respondent obviously intends to re-route people making a typing mistake – omitting the dot after “www” – to Respondent’s website when trying to access Complainant’s website.

The above facts are affirmed by Mr. Dietrich Mateschitz Managing Director of the Complainant by his affidavit dated March 2, 2005, and are evidenced by the attachments to the Complaint and, in the absence of any submission of the Respondent to the contrary, the Panel is satisfied that the documents submitted by the Complainant truthfully reflect the factual circumstances of the case and stand proved by solemn affirmation. Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D202-0487, Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The claims made by the Complainant, therefore, remain un-rebutted and un-challenged.

5. Discussion and Findings

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. Identical or Confusingly Similar

5A.1 Complainant’s trademark RED BULL is composed of two common words of the English language, which in their combination are used to distinguish the energy drink sold by the Complainant. The Complainant has registrations and/or applications consisting of or containing of the mark RED BULL in Austria and further 199 jurisdictions worldwide such as Germany, United Kingdom, the Russian Federation, USA, Australia, Canada, Brazil, South Africa, Hong Kong SAR of China, China, Taiwan Province of China, Japan and Saudi Arabia. In addition, Complainant has various registered community trademark registrations or applications. In particular, Complainant owns trademark registrations in Panama, where Respondent is located.

5A.2 The disputed domain <wwwredbull.com> is confusingly similar to various trademarks and trademark applications containing the sign RED BULL owned by the Complainant.

5A.3 The letters “www” are clearly intended to emulate the prefix “www.” (with a period punctuation mark) of an authentic Internet address and do not diminish the confusing similarity (see, Adidas Salomon AG v. Domain Location, Annex H4, WIPO Case No. D2003-0490 BellSouth Intellectual Property Corporation v. Michele Dinoia, Annex p; WIPO Case No. D2004-0486, Anheuser-Busch, Inc. v. Anti-Globalization Domains a/k/a Azra Ari Khan a/k/a John Barry, Annex H1WIPO Case No. D2004-0105). In this respect, the Complainant refers also to the administrative Panel decision Societe Air France v. Vladimir Fedorov (WIPO Case No. D2003-0639, Annex H3), in which the Panel states that “the prefix “www” is the well-known acronym for “World Wide Web”, and is an extremely common, although not universal, prefix (when succeeded by a period) to the domain name in an URL for a webpage on the Internet.

5A.4 Consequently, in many prior Panel decisions domain names that consist of the prefix “www” affixed to a trademark have been considered as substantially similar to the relevant trademark (see Easygroup IP Licensing limited v. Amjad Kausar, WIPO Case No. D2003-0012; CITGO Petrolium Corporation v. Horas A. “Woofer” Smith, WIPO Case No. D2003-0054; General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000-0377; Reuters Limited v. Globalnet 2000, Inc, WIPO Case No. D2000-0441; World Wrestling Federation Entertainment, Inc v. Mathew Bessette, WIPO Case No. D2000-0256; Info Space.com, Inc. v. Registra Administrator Lew Blanck, WIPO Case No. D2000-0069).

5A.5 In conclusion, the Panel is satisfied that the Domain Name <wwwredbull.com> is confusingly similar to the trademark RED BULL

B. Rights or Legitimate Interests

5B.1 Paragraph 4(c) of the Policy lists the following three non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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.”

5B.2 As to the circumstances under paragraph 4(c)(i) of the Policy, Complainant has not consented to the Respondent’s use of the domain name, which incorporates the Complainant’s trademark RED BULL.

5B.3 Respondent seems to be using the domain name by providing links from its website to multiple other websites concerning competitive energy drinks, which fact in the Panel’s view, shows that Respondent is well aware of Complainant as well as of its products and activities, and, instead of making a bona fide use of the domain name, rather intends to have a free ride on the fame and good will of Complainant and its trademarks.

5B.4 Furthermore, none of the other circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are present. The sole purpose of registering the domain names at issue by the Respondent was to cause confusion and divert the legitimate business of Complainant to itself or to the products produced by Complainant’s competitors.

5B.5 In the absence of any submission or rebuttal of the Respondent, the Panel concludes that the Respondent has no rights or legitimate interest vis-à-vis the domain name <wwwredbull.com>.

C. Registered and Used in Bad Faith

5C.1 For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.

5C.2 Paragraph 4(b) of the Policy states circumstances which, if found, 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 our 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 website 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 website or location or of a product or service on your website or location.

5C.3 The trademark RED BULL is well-known all over the world and Respondent obviously knew this famous trademark and Complainant’s business. Therefore it is inconceivable that Respondent would not have been aware of the Complainant’s trademark when registering the disputed domain name.

5C.4 When accessing the website under the disputed domain name an unsolicited pop-up advertisement appears and it can be assumed that the Respondent benefits financially from such advertisements. In this sense, even if the user who access at Respondent’s website may promptly conclude that it is not what he or she was originally looking for, Respondent has already succeeded in its purpose of using the [trade and] service mark to attract the user with a view to commercial gain (Yahoo! Inc. and GeoCities v. Data Art Corp. et al., WIPO Case No. D2000-0587, citing in turn National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118). This represents evidence of bad faith in the sense of para 4(b)(iv) of the Policy.

5C.5 Furthermore, Respondent displays information about Complainant’s competitors by the numerous links placed on the website under the disputed domain name. Through this use Respondent’s intention is also to disrupt Complainant’s business. This constitutes another element of bad faith in the sense of para 4(b)(iii) of the Policy.

5C.6 The Panel therefore concludes that the unrebutted allegation of the Complainant that the Respondent has registered and is using the domain name in bad faith is proved. The Respondent is deliberately manipulating the domain name system and is engaged in bad faith to derive in proper commercial benefit.

6. Decision

The Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Administrative Panel, therefore orders that the disputed domain name <wwwredbull.com> be transferred to the Complainant.

Amarjit Singh
Sole Panelist

Dated: June 9, 2005