India: A Case Study on Domain Name Disputes- Red Bull Acquires

Last Updated: 20 December 2005
Article by Manisha Singh


Under the Domain name dispute resolution policy, the dispute regarding a domain name is compulsorily submitted to the administrative authority or panel where the complainant alleges that (a) the impugned domain name is identical or confusingly similar to the trademark or service mark in which the complainant has the rights; or (b) the proprietor has no right or legitimate interest in respect of the domain name; or (c) the domain name was registered and being used in bad faith.

Thus three main components that the complainant is required to establish are ‘deceptive similarity’, ‘lack of rights or legitimate interests’ and ‘bad faith’. For ascertaining ‘deceptive similarity’ an objective analysis of the disputed domain name is needed. The rules for judging deceptive similarity would apply to the domain names to a great extent.

For determining whether the proprietor of the domain name has any ‘right or legitimate interest’ in the domain name, the pertinent consideration are (a) whether before any notice of the dispute the proprietor of the domain name has used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bonafide offering of goods or services; or (b) Whether the proprietor as an individual business or organization has been commonly known by the domain name, even if he/she has acquired no trademark or service mark rights; or (c) The proprietor is making a legitimate non-commercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service at issue.

The policy also specifies the manner in which ‘bad faith’ can be proved by the complainant. Four circumstances reflecting bad faith are enumerated in the policy itself. First, where acquisition of the domain name is done for the purposes of remitting or transferring the domain name to the complainant or to the competitor of the complainant for valuable consideration. In this case the consideration must be in excess of documentation out- of- pocket costs relating to the domain name. Second, the domain name was registered in order to prevent the proprietor of the trademark or the service mark from reflecting the mark in the corresponding domain name. However the conduct of the proprietor must indicate the same.

Third circumstance indicating malafide would be where the domain name was registered primarily for the purposes of disrupting the business of a competitor. Fourth, the proprietor must have intentionally attempted to attract for commercial gain, the internet users to his/her 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 his/ her website or location or a product or service on his/her location.

The relief that the complainant is entitled to receive in such proceedings is limited to cancellation of the domain name or the transfer of registration of the domain name to the complainant.

Generally, whenever a complaint is filed before the WIPO Arbitration and Mediation Centre it transmits the request for verification of registration of the domain name, to the Registrar. The Registrar then sends a report containing the identity of the proprietor of the domain name and the contact details for administrative, billing, and technical contact. Thereafter the Centre examines the complaint to see as to whether is fulfills the formal requirements of the Domain Name Dispute Resolution policy and the rules made there under. Once satisfied that the complaint is in order, the Centre notifies the respondent of the complaint. Thereafter a panel is appointed for deciding the matter. The panel may consist of a single person as well.

Case study

The case of Red Bull GmbH V. Unasi Management Inc. 2005 (31) PTC 90 (WIPO) shall be discussed here to provide a better understanding of the intricacies involved in dispute resolution under the policy. The concepts like ‘deceptive similarity’, ‘legitimate interests’ and bad faith’ involved in domain name disputed are also examined in this case.

Redbull is the proprietor of several generic as well as country Top Level Domains. The principle website of Redbull is which hosts information about Redbull products and other activities of the company and also provides links to its various websites. The Trademark RED BULL is registered in 199 countries in name of Red Bull Company or its subsidiaries. Unasi is the proprietor of the domain name where the links to websites relating to the rival energy drinks are posted. When a person visits this website a pop up window appears on the screen. Aggrieved by this Redbull filed a complaint before the Wipo Arbitration and Mediation Centre against Unasi, praying for the transfer of the impugned domain name to Red bull.

Red bull averred that its energy drinks under the trademark RED BULL are sold in many countries and million of euros have been spent in advertising the drink. As a result of massive publicity campaigns, the energy drink under the trademark REDBULL has acquired global reputation. Red Bull Company has been involved in organizing Formula One Racing that has given it worldwide media coverage. Redbull contended that the impugned domain name integrated the trademark RED BULL in its entirety The disputed domain name is identical or confusingly similar to its trademark REDBULL and was designed to mislead the Internet users who often make the typographical mistake by omitting the period after "www" when intending to actually visit Redbull website. Unasi did not refute the allegations made by Red Bull company against it.

In order to arrive at the decision, the panel considered the three ingredients namely ‘deceptive similarity’, ‘legitimate interests’ and ‘bad faith’. The panel ruled that disputed domain name was deceptively similar to the trademark RED BULL. The only difference between the domain name and the trademark was the prefix ‘www’. As www (world wide web) is a generic term and a common prefix to domain names in Urls, it is not capable of distinguishing the domain name from the trademark REDBULL. The panel reiterating the earlier rulings stated that ‘the domain names that consist of trademark with prefix www are confusingly or deceptively similar to the trademark’.

The panel then considered whether Unasi had any ‘rights or legitimate interest’ in the domain name Unasi had been using the domain name by posting links to the competing energy drinks, which shows that it was aware of Red bull’s product and was free riding on the good will and reputation of the trademark REDBULL. As Unasi has made no rebuttal, it proves the disputed domain name was adopted solely for the purpose of diverting the customer of red bull. There are no circumstances that demonstrate any right or legitimate interest of Unasi in the domain name.

For deciding upon whether there was bad faith on part of Unasi in adopting the domain name, the panel considered the factors that indicate bad faith. The panel was of the opinion that since the RED BULL is a world famous trademark it is unlikely that Unasi was not aware of its existence. When an Internet user accesses the website under the disputed domain name a pop up window appears which indicates that Unasi is benefiting through the advertisement. Even if the viewers can eventually know that this is not the site they are looking for, the initial diversion of the customers is caused. As the website contains numerous links to competing drinks, it establishes an intention to disrupt the business of Redbull company. The foregoing facts prove that the Unasi has bad intention in adopting the domain name

The panel ruled that since redbull has established all the three elements –‘deceptive similarity’, ‘lack of rights or legitimate interests’ and ‘ bad faith’, the disputed domain name is transferred to red bull.

Comments and Conclusion

The domain name dispute resolution policy does not provide for the grant of damages to the proprietor of the trademark who has suffered injury due to usurpation of his/her trademark in the cyber world. The jurisdiction of the Courts is not ousted and the aggrieved party can move the Court before or after the institution of the administrative proceedings. It is more likely that the Court would take into account the principles of the policy when a domain name dispute is presented before. Would the Courts be granting relief other than those mentioned in the policy? The inherent jurisdiction of the Courts empowers it to pass any order that is necessary to do justice between the parties. Even though the policy does not provide for damages, the Court may grant damages in certain cases.

© Lex Orbis 2005

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions