Domain Name Shame

Red Bull Gets Back Its Wings

The Complainant, Red Bull GmbH, is a producer of energy drinks.  The Complainant holds an internationally registered trademark for a drink sold under the trademark RED BULL.  The Complainant first used its trademark in 1987 and since 1994 has made extensive international promotion and sale of its goods bearing the trademark.  The Respondent registered its domain name, www.redbullsucks.com, on April 19, 2007.

The Complainant alleged that the disputed domain name is confusingly similar to its registered trademark.  However, the Respondent claimed the disputed domain name was in protest of the harmful effects of energy drinks.  Ultimately, the Panel ordered the transfer of the disputed domain to the Complainant after finding that the Respondent violated the Complainant’s trademark rights in registering and using the domain in bad faith for commercial purposes.

Interestingly, the Panel rejected the Complainant’s argument that the term ‘sucks’ was a generic term and that the addition of the word ‘sucks’ to its trademark rendered it inherently confusing.  The Panel held that the term ‘sucks’ was widely known as an insult and “those people who have no appreciation of the pejorative nuance of the word ‘sucks’ form such an inappreciable part of the modern Internet audience that concern for their sensibilities should not be a factor in the assessment of confusing similarity under [the] Policy.”   Nonetheless, the Panel concluded that a domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.  In other words, the issue [is] not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity.” 

In this instance, the Panel found that the domain name was ‘confusingly similar’.  The Complainant alleged, the evidence showed, and the Respondent did not deny, that the Respondent’s website corresponding with the disputed domain name was being used to promote an energy drink in competition with the Complainant - this was found not to be a commercial use and the evidence showed it was clearly used for commercial gain.  The Panel also found that the name was registered and used in bad faith and ordered the immediate transfer of the disputed domain name to Red Bull.  Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253

It's Tax Time...Rapid Refund for Domain Name

The Complainant is HRB Royalty, Inc., a wholly owned indirect subsidiary of H&R Block, Inc. and part of a family company (collectively, H&R Block) making up the largest provider of individual income tax preparation services in the United States.  H&R Block has used and owns the trademark "RAPIDREFUND" and related marks since at least 1986 in connection with its tax services business.

Complainant was not pleased to learn through a reverse Whois search that the Respondent owned and operated a website using the domain name "ezrapidrefund.com" to market indirectly a competing service.  The site appeared to promote rapid (tax) refund specialists and obtaining maximum refunds for its clients, stating that it will get "the best refund no matter how simple or complicated the return may be".

Respondent failed to respond to 2 separate cease and desist letters sent by Complainant, prompting the Complainant's commencement of its WIPO proceeding. Respondent failed to submit a response to that as well.

Ordering transfer of the disputed domain name, the Panel noted that the addition of the prefix "ez" to Complainaint's trademark was immaterial and accepted the Complainant's submission that the registration of the domain was intentionally used as an attempt to attract for commercial gain internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark. The Panel further took into account the Respondent's failure on not one, but on 3 separate occasions to counter the Complainant's assertions against, warranting an "ez" decision to transfer the domain.  HRB Royalty, Inc. v. Charlenia Owens, WIPO Case No. D2007-16

Domain Name Pimped For A Ride

Complainant has a registered trademark for the word mark "Pimp My Ride".  Its wholly-owned subsidiary MTV Networks produces a reality television series entitled "Pimp My Ride", which features a car, chosen from among viewer submissions, which is then restored and customized by the program's experts.

The disputed domain name, "pimpmyride.com", was registered by the Respondent 3 months after the Complainant had filed its trademark application for "Pimp My Ride" and only 4 weeks before the television series was first aired while the show was receiving considerable advance publicity.  The disputed domain name resolves to an extensive website which includes information on car modification, related and unrelated advertising and many links to subpages or related commercial sites offering commercial goods or services related to car modification.  Ordering transfer of the disputed domain name, the Panel deemed this usage of the domain to be in bad faith.  The uncontroverted evidence suggested that the Respondent registered the domain name to attract viewers of the Complainant's subsidiary's show to its website, using the Complainant's trademark to do so. Coupled with this, there was evidence that the Respondent had previously used the disputed domain name to commit illegal acts in relation to a lottery for which the Missouri Attorney General obtained an injunction in 2004. With respect thereto, the website contained an offer than once $20,000 had been raised by members of the public paying $1 each for a chance to have their car "pimped", one entry would be randomly selected.  Respondent appeared to have subsequently run a similar dishonest scam in relation to a $20 required payment for an alleged processing fee to be paid by the selected "winners" of its illegal lottery.  This uncontroverted evidence suggested to the Panel that the Respondent was using the disputed domain name to defraud members of the public or make them purchase goods and services from the Respondent's sponsors, presumably for Respondent's financial benefit in click-through revenue, constituting bad faith registration and use.  Viacom International Inc. v. All in Marketing LLC, WIPO Case No. D2008-0155

Pick and Pay for Domain Name

Complainant is a South African public company, operating several chains of retail groceries, supermarkets, hypermarkets, liquor stores, clothing stores and pharmacies in southern Africa and in Australia though majority-owned subsidiaries and franchisees.  The group processes 5 million sales transactions monthly in more that 400 stores labeled with the "Pick 'N Pay" brand and also serves thousands of customers through its online shopping facility at "www.picknpay.com".  The "Pick 'N Pay" mark has been used since 1967 and Complainant's company has spent more than $62 million annually through advertising and marketing the brand.

The disputed domain name, "www.pickandpay.com", was registered on October 9, 2001 and redirects to "www.001porn.com", a landing page with explicit sexual images and categorized links to a multitude of commercial pornography websites.  The Respondent, who appeared to be an individual residing in England, did not respond to the complaint.

Although acknowledging that Complainant's marks represent one of the best-known retail brands in southern Africa and the confusing similarity with the disputed domain name, the Panel nonetheless denied the Complaint.  The Panel's decision turned on the question as to whether it can be reasonably inferred that the Respondent in England was aware of the "Pick 'N Pay" brand and used a variation on the mark intentionally to mislead Internet users.  Denying the Complaint, the Panel determined that the disputed domain name is a "sensible English phrase comprised of dictionary words" and might have been chosen for reasons other than emulation of the Complainant's similar marks.  There was no indication in the record that the Respondent registered multiple domain names exploiting South African retail brands, nor was there evidence that the Complainant advertises in the United Kingdom of Great Britain and Northern Ireland or that its website attracts English Internet users.  In short, the Panel found that the record did not warrant a finding that the Respondent in England was, more likely than not, aware of the Complainant's South African retail brand when he registered the domain.  Pick 'n Pay Holdings Limited v. Darren Stevens, WIPO Case No. D2007-1583