Red Bull GmbH v. Duan Yuan / DuanYuan
Claim Number: FA1804001781996
Complainant is Red Bull GmbH (“Complainant”), represented by Caroline Barbee of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Duan Yuan / DuanYuan (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <redbullsmlsshop.us>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2018; the Forum received payment on April 16, 2018.
On April 16, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <redbullsmlsshop.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@redbullsmlsshop.us. Also on April 17, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the FORUM has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the FORUM's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name registration be cancelled.
A. Complainant
Complainant, Red Bull GmbH, is the producer of the famous Red Bull Energy Drink and is also the owner and operator of New York’s first Major League Soccer (“MLS”) team known as the “New York Red Bulls”. Complainant uses its RED BULL mark to promote its products and services and has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,494,093, registered Oct. 2, 2001). Respondent’s domain name, <redbullsmlsshop.us>, is confusingly similar to Complainant’s REDBULL mark as the disputed domain name incorporates Complainant’s mark in its entirety and adds the letter “S”, descriptive acronym “MLS”, generic word “SHOP,” and the county code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the <redbullsmlsshop.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the RED BULL mark. Respondent also does not use the disputed domain in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass off as Complainant and sell counterfeit versions of Complainant’s products.
Respondent registered and uses the <redbullsmlsshop.us> domain name in bad faith. Respondent uses the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain. Respondent likely profits by selling counterfeit versions of Complainant’s products at the resolving website. Further, Respondent registered the domain name with actual or constructive knowledge of Complainant’s rights in the RED BULL mark due to the fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of cancellation of the <redbullsmlsshop.us> domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts rights in the REDBULL mark based upon registration with the USPTO (e.g., Reg. No. 2,494,093, registered Oct. 2, 2001). Registration of a mark with a trademark authority, such as the USPTO, is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds Complainant has rights in the REDBULL mark per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <redbullsmlsshop.us> domain name is confusingly similar to Complainant’s RED BULL mark because it merely incorporates Complainant’s mark in its entirety and adds the letter “S”, descriptive acronym “MLS”, and the generic word “SHOP,” and the ccTLD “.us.” The addition of a letter “s,” descriptive or generic terms, and a ccTLD to a mark does not sufficiently distinguish a disputed domain name from a mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.);see also PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”). The Panel finds Respondent’s <redbullsmlsshop.us> domain name is confusingly similar to Complainant’s RED BULL mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <redbullsmlsshop.us> domain name as it is not commonly known by the name, and has not been authorized to use the RED BULL mark for any purpose. Where a response is lacking, the Panel may consider relevant information such as WHOIS information and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies “Duan Yuan” as the registrant of the domain name. Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. The Panel finds Respondent is not commonly known by the <redbullsmlsshop.us> domain name under Policy ¶ 4(c)(iii).
Complainant contends that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent uses the disputed domain name to pass itself off as Complainant and redirect Internet users to a competing website. Use of a disputed domain name to pass off as a complainant for fraudulent purposes is not considered a bona fide offering or fair use per Policy ¶¶ 4(c)(ii) & (iv). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant claims that Respondent’s <redbullsmlsshop.us> domain name offers counterfeit versions of Complainant’s soccer jerseys, which bear Complainant’s RED BULL marks, for sale and features a website header reading, “OFFICIAL ONLINE STORE OF THE NEW YORK RED BULLS”. The Panel finds that Respondent uses the domain name to resolve to a competing website and holds that Respondent failed to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) & (iv).
There is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel finds that Respondent lacks rights and legitimate interests with respect to the domain name per Policy ¶¶ 4(c)(i).
Complainant has proved this element.
Complainant asserts Respondent registered and uses the <redbullsmlsshop.us> domain name in bad faith by creating confusion with Complainant’s RED BULL mark for Respondent’s commercial gain. Use of a domain name to create confusion as to the source, sponsorship, affiliation or endorsement therein for commercial gain may evidence bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). Complainant alleges that screenshots of the <redbullsmlsshop.us> website indicate that the site prominently features Complainant’s RED BULL mark and offers counterfeit versions of Complainant’s products for sale. The Panel finds that Respondent used the domain name to create confusion with Complainant’s RED BULL mark for commercial gain, and holds that Respondent used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the <redbullsmlsshop.us> with actual or constructive knowledge of Complainant’s rights in the RED BULL mark. Actual knowledge of a complainant’s rights in a mark prior to registering the disputed domain name is adequate evidence of bad faith under may evidence bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent’s actual knowledge of a complainant’s rights in a mark may be presumed when the mark is famous. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that its RED BULL mark is famous due to extensive worldwide marketing efforts. From the uncontested allegations and evidence, the Panel finds that Respondent registered the disputed domain name with Complainant’s famous Mark in mind and holds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <redbullsmlsshop.us> domain name be CANCELLED.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 17, 2018
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