Red Bull wins from energy drink rival

A man who owned the domain name has been ordered to hand it over to Red Bull, the energy drink company.

The man had claimed his was a protest site warning of the dangers of energy drinks but was found to be publishing a site at the address promoting a rival drink.

Carl Gamel of Kentucky in the US was found to have violated Red Bull's trade mark rights in registering the domain name and using it for commercial purposes.

The World Intellectual Property Organisation (WIPO)'s arbitration and mediation centre ruled on the domain under its uniform domain name dispute resolution policy (UDRP) which protects trade mark rights holders against bad faith users of domain names which are identical or confusingly similar to a trade mark.

The administrative panel in the case took Red Bull to task over its argument that the addition of 'sucks' to its trade mark was inherently confusing as to the origin of the domain name because 'sucks' was a generic term.

The panel rejected the argument that a user might think the domain name belonged to Red Bull because the term 'sucks' was so widely known as an insult, and therefore was a generic term which added nothing to the domain name, leaving the trade marked 'Red Bull' phrase as the main part of the name."This Panel’s view is that it is not helpful to characterize 'sucks' as a generic term in the same way earlier cases have held 'buy-', 'cheap-', '-online' and numerous similar terms to be non-distinctive," said the ruling. "The virtually universal finding of confusing similarity in those cases is based on the primacy accorded to a complainant’s (usually well known) trademark over added matter of no source distinguishing value."

Instead of treating the 'sucks' part of the name as generic and therefore declaring the domain
name 'confusingly similar' to Red Bull's trade mark, the panel followed the guidance of a
previous case in which that rule was defined more broadly.

"The Panel understands the phrase 'identical or confusingly similar' to be greater than the sum of its parts," said the panellist in that previous case, which involved shop chain Wal-Mart and Richard MacLeod. "The Policy was adopted to prevent the extortionate behavior commonly known as 'cybersquatting', in which parties registered domain names in which major trademark owners had a particular interest in order to extort money from those trademark owners. This describes Respondent’s behavior," it said.

"Thus, the Panel concludes 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 under the first factor 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," said that ruling.The panel found that the name was "confusingly similar" under this definition, though that definition could jeapordise the existence of legitimate protest sites. The panel addressed this problem in the ruling.

"The Panel is cognizant of the importance of protecting protest sites that use a trademark to identify the object of their criticism," said the ruling. "The 'legitimate interest' and 'bad faith' factors should adequately insulate true protest sites from vulnerability under the Policy, especially as [Red Bull] retains the burden of proof on each factor."

The panel found that Gamel did not have a legitimate interest in the domain because his site was not a site of legitimate criticism but one trying to sell a rival product.

"[Gamel's] sole argument is that he is using the disputed domain name to criticize the Complainant as a manufacturer of energy drinks which allegedly can have deleterious effects," said the ruling. "In this case, however, Complainant alleges, the evidence shows and Respondent does not deny, that the Respondent is using a website corresponding with the disputed domain name to promote an energy drink in competition with the Complainant. That is not noncommercial use and the evidence shows it is for commercial gain."

The panel also found that the name was registered and used in bad faith. "Had [Gamel's] use of the domain name related to a genuine protest site, it might have shown a legitimate interest in the domain name, whether or not an objective consequence of that protest site was disruption of [Red Bull's] business. Those Internet users perhaps disenchanted with the [Red Bull's] products, or merely curious about [Gamel's] website, were presented … with an energy drink offered in competition with [Red Bull's] goods."

The panel ordered that the domain name be transferred to Red Bull.