Red Bull GmbH, Red Bull AG v. ec aka 3.taiwan
Case No. D2013-1250
1. The Parties
The Complainant is Red Bull GmbH of Fuschl am See, Austria and Red Bull AG of Baar, Switzerland represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa of Poland.
The Respondent is ec aka 3.taiwan of Taipei, Taiwan, Province of China; Ding Oil International Trading Company of Kaohsiung City, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2013. On July 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 11, 2013, the Registrar transmitted its verification response to the Center by email confirming the Respondent as the registrant and provided the registrant’s contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2013.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on August 16, 2013. 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 paragraph 7 of the Rules.
The Complainant is the producer of a well-known energy drink marketed under the RED BULL trade mark. The RED BULL energy drink is sold in 159 countries. In 2012, the Complainant sold 5.2 billion units globally, of which 3.3 million units were sold in Taiwan (where the Respondent is based). The Complainant has protected its Red Bull trade marks in 207 jurisdictions.
The Complainant has intensively marketed its RED BULL trade mark and brand by means of substantial international advertising over many years. Since its launch in 1987, the Complainant’s marketplace penetration has been focused on TV, cinema and radio. In 1987 Red Bull invested over EUR 577,000 on marketing and in 2012, over EUR 1.7 billion, of which over EUR 1.5 million was spent in Taiwan.
The Complainant has engaged in substantial international advertising, including sponsoring public sporting events such as in 2012, the RED BULL Stratos project and from 1995 to the current date, extensive involvement in Formula One racing.
The Disputed Domain Name was registered by the Respondent on June 9, 2010.
The Panel accessed the website displayed at the Disputed Domain Name on August 30, 2013. The website is for Ding Oil International Trading Company, a company based in Taiwan, which designs and supplies engine lubricants. The Respondent offers two products, “Industrial Oil” and “Fly Bull Oil”. The Panel notes that the “Fly Bull Oil” logo is of a red bull with wings with a yellow sun in the background, a sign that is very reminiscent of the Complainant’s logo.
5. Parties’ Contentions
The Complainant contends that it is the largest worldwide producer of energy drinks, that it first sold the RED BULL energy drink in Austria in 1987 and that today, the RED BULL energy drink is marketed in 159 countries, including the Respondent’s country, Taiwan.
The Complainant further contends that it holds international trade mark registrations or applications consisting of or containing the sign RED BULL, that it operates its business at its principal website under the name and that, as previous WIPO UDRP decisions have held, the Complainant’s trade mark is famous, as it has a very strong reputation and is widely known all over the world (e.g. RedBull GmbH v. Pregio Co, Ltd, WIPO Case No. D2006-0909 and Red Bull GmbH v. Web Wax Designer, WIPO Case No. D2006-0746).
According to the Complainant, all the distinctive elements of the Disputed Domain Name are identical to the Complainant’s various trademarks and trade mark applications for RED BULL in which the Complainant has extensive rights, reputation and goodwill.
The additional word “oil” suggests that through this website the Complainant provides a new line of products or that the Complainant is the co-producer. The Disputed Domain Name, therefore, confuses Internet users as to the origin of the website.
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof or to register or use any domain name incorporating any of the Complainant’s marks or any variations thereof.
The Disputed Domain Name must, therefore, have been registered in bad faith because the Respondent must have been aware of the fame of the Complainant’s trade mark. The registration of the Disputed Domain Name is, therefore, an attempt to exploit the fame and reputation of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to the cancellation of a domain name, a complainant shall prove the following three elements:
the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
the respondent has no rights or legitimate interests in respect of the domain name; and
the domain name has been registered and is being used in bad faith.
Paragraph 5(e) of the Rules provides that if a respondent fails to submit a response (as in this case), in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.
A. Identical or Confusingly Similar
The Panel has no doubt that RED BULL is a trade mark directly connected with the Complainant’s activities. The Complainant is the proprietor of multiple registrations and applications of trade marks consisting of or containing the name RED BULL. These registrations cover an extensive range of goods and services spanning dozens of trade mark classes.
The trade mark RED BULL is wholly encompassed within the Disputed Domain Name, which also includes “-oil” and the generic top-level domain (“gTLD”), “.com”.
It is well established that the “.com” gTLD may be considered irrelevant for the purposes of determining whether a domain name is identical or confusingly similar to a trade mark or service mark in which a complainant has rights under paragraph 4(a)(i) of the Policy (see Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321 WIPO Case No. D2002-0499).
In a previous UDRP case, Lilly ICOS LLC v. John Hopking/Neo net Ltd, WIPO Case No. D2005-0694, the panel (quoting the decision in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493) stated that, “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”.
The term “oil” is descriptive and does not distinguish the Disputed Domain Name from the Complainant’s trade mark. The Panel agrees with the Complainant’s assertions that the additional wording “oil” does not change the overall impression of the Disputed Domain Name being a domain name connected to the Complainant. The Panel also notes the decision in the cases of the domain name (Red Bull GmbH v. Domains by Proxy Inc./New Gold Mine, WIPO Case No. D2007-0684 and Red Bull GmbH v. Emory Virgil, WIPO Case No. D2005-0381 concerning the domain name ).
Therefore, the Panel concludes that the addition of “-oil” is not sufficient to refute the confusing similarity between the Disputed Domain Name and the Complainant’s trade mark under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples (without limitation) where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 trade mark at issue.
The Complainant has not licensed or authorized the use of its trade marks to the Respondent, and it does not appear that the Respondent is known by the Disputed Domain Name but is in fact known as “Ding Oil Company”.
The Respondent is not making a non-commercial or fair use of the Disputed Domain Name which is currently being used.
The following statement appears on the Respondent’s website:
“From established, our company is always insisted on innovation and development of better products, which is our primary target. Due to operating team’s efforts, the quality of all lubricating oil product is significantly upgraded through R&D and technical breakthroughs at the end of December in 2012, For market segmentation and promotion to all consumers, we decided to rename our RED BULL brand to new FLY BULL from January in 2013. Through brand evolution and formula upgraded, we will extend our products to worldwide and raise our competition power in multinational market. And it will be the whole new milestone of our self-brand.”
From a review of the Respondent’s website, the Panel assumes that the “brand” referred to in the above statement is the oil product, now called “Fly Bull Oil”.
The Complainant has explained that Red Bull AG (a subsidiary of the Complainant) sued the Respondent to cancel the Respondent’s trade mark registrations consisting of bulls and the term “red bull”. The Complainant was successful in the first and second instance before the Taiwan Intellectual Property Office and the Respondent’s two trade marks were cancelled. The Complainant directed the Panel to Annex F1 for the “main decision on cancellation”. The decision in Annex F1 is in Chinese but a translation is provided, together with a letter from Tsai, Lee & Chen Taiwanese patent attorneys which summarises the outcome.
The Complainant asserts that, in these circumstances, “the Respondent has knowledge that it is not authorized to use the Complainant’s trademarks, especially in the domain name registrations”.
The Respondent has failed to provide any evidence that it is commonly known by the domain name, and in failing to provide a response, the Respondent has not shown its legitimate connection with the Disputed Domain Name. The Panel therefore agrees with the Complainant’s assertion.
Based on the Respondent’s default and on the prima facie evidence provided in the Complaint, the Panel finds that the above safe harbor circumstances are not present and the Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of renting or selling or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trade mark 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
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location of a product or service on its website or location.
When the Disputed Domain Name was registered, the Complainant’s trade mark, RED BULL, was already internationally recognised not only in the drinks industry but also due to its marketing, advertising and sponsorship of Formula One in the motor industry. Therefore, it is unlikely that the Respondent (who operates in the motor industry producing engine oils) could have been unaware of the Complainant’s reputation and business.
In light of RED BULL’s pronounced reputation, the Panel thinks it is likely that the Respondent, by using the domain name, has intentionally attempted to attract for commercial gain Internet users to its website. The mark “RED BULL” is so well known that the Panel agrees with the Complainant that nobody would legitimately chose the combination or any variation thereof, unless seeking to create an association to the Complainant. This premise is emphasized by the logo used by the Respondent for its “Fly Bull Oil” (formerly known as “Red Bull Oil”) (which is very similar to the Complainant’s well-known logo) and the Respondent’s failure to submit a response in these proceedings.
Accordingly, the Panel finds that the Complainant has proved that the Disputed Domain Name was registered and is being used in bad faith, satisfying the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, , be cancelled.
Date: September 2, 2013