national arbitration forum

 

DECISION

 

Anheuser-Busch, LLC v. Above.com Domain Privacy

Claim Number: FA1202001428309

 

PARTIES

Complainant is Anheuser-Busch, LLC (“Complainant”), represented by Alexander Garcia of Holland & Hart LLP, Colorado, USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <budweisr.com>, registered with Above.com Pty Ltd.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrud R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 6, 2012; the National Arbitration Forum received payment on February 6, 2012.

 

On February 7, 2012, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <budweisr.com> domain name  is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name.  Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 2012 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@budweisr.com.  Also on February 9, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr.,  as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <budweisr.com> domain name is confusingly similar to Complainant’s BUDWEISER mark.

 

2.    Respondent does not have any rights or legitimate interests in the <budweisr.com> domain name.

 

3.    Respondent registered and used the <budweisr.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Anheuser-Busch, LLC, is an American beer brewer that uses its BUDWEISER mark in connection with products and services relating in particular to beer. Complainant owns several trademark registrations for its BUDWEISER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 922,481 registered October 19, 1971).

 

Respondent, Above.com Domain Privacy,  registered the <budweisr.com> domain name on August 26, 2011. The domain name resolves to a website displaying hyperlinks advertising products and services in competition with Complainant’s business.

 

DISCUSSION

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."

 

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(e), 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 (Nat. Arb. 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.”).

 

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 and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant brews, distributes, and markets beer, as well as services related to its products. Complainant holds trademark registrations for its BUDWEISER mark with the USPTO (e.g., Reg. No. 922,481 registered October 19, 1971). The Panel finds that, by registering its mark with the USPTO, Complainant has effectively secured rights in that mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). The Panel additionally finds that Complainant need not register its mark in the country where Respondent resides and operates under Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also  KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant argues that the <budweisr.com> domain name is confusingly similar to its BUDWEISER mark. Complainant alleges that misspelling the mark, by removing the letter “e,” and adding the generic top-level domain (“gTLD”) “.com” do not suffice to distinguish the domain name from the BUDWEISER mark. The Panel finds that removing one letter from the mark and adding “.com” does not render the domain name satisfactorily different from Complainant’s mark under Policy ¶ 4(a)(i). See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel thus concludes that the <budweisr.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant argues that Respondent holds no rights or legitimate interests in the disputed domain name. Pursuant to Policy ¶ 4(a)(ii), Complainant must satisfy the burden of showing a prima facie case supporting these allegations. When Complainant has satisfied this requirement, the burden is placed upon Respondent to demonstrate why it does have rights or legitimate interests in the domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (concluding that under Policy ¶ 4(a)(ii) and the factors listed in Policy ¶ 4(c), a complainant must first make a prima facie case that the respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that the respondent is not commonly known by the disputed domain name, and that the respondent is not making a legitimate noncommercial or fair use of the disputed domain name before the burden shifts to the respondent to show otherwise). The Panel finds that Complainant has successfully shown a prima facie case. Due to Respondent’s lack of response, the Panel may interpret the failure to reply as an acknowledgement that Respondent has no rights or interests in the disputed domain name under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  However, the Panel will assess the record to determine whether Respondent’s possesses rights or legitimate interests in the domain name under Policy ¶ 4(c).

 

Complainant argues that Respondent is not commonly known by the <budweisr.com> domain name. The WHOIS information identifies the domain name registrant as “Above.com Domain Privacy,” which does not provide any support to the conclusion that Respondent is commonly known by the <budweisr.com> domain name. In light of the deficiency of further evidence from Respondent, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant argues that Respondent does not use the disputed domain name in a manner associated with a bona fide offering of goods or services and that Respondent is not making a legitimate noncommercial or fair use of the domain name. The <budweisr.com> domain name resolves to a website offering a variety of hyperlinks connected to websites whose products and services compete with those offered by Complainant’s business. Respondent generates revenue for itself by the “pay-per-click” links accessed by Internet users. The Panel finds that offering hyperlinks to businesses competing with Complainant’s business does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that such use is not a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent registered the <budweisr.com> domain name in bad faith under Policy ¶ 4(b)(iii) because the corresponding website displays hyperlinks to competing businesses, which constitutes a disruption to Complainant’s business. The resolving website contains commercial links to businesses advertising beer and related products and services for website visitors to click on. The Panel concludes that, by diverting Internet users seeking Complainant’s business and sending them to competitors’ websites, Respondent’s actions amount to disruption of Complainant’s business and indicate bad faith registration and use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant argues that domain name attempts to redirect Internet traffic to the corresponding website to provide advertising to competing businesses in exchange for “click-through” revenue to Respondent, which demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). Complainant contends that Respondent uses the fame of Complainant’s BUDWEISER mark to attract consumers to its website under the impression that the website is somehow affiliated with Complainant’s business and, as a result of the confusion, Respondent makes a profit. The Panel finds that Respondent’s use of the domain name to provide links to competitors, from which Respondent likely commercially benefits, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

Complainant argues that Respondent had actual and constructive knowledge of Complainant's rights in the BUDWEISER mark. Complainant contends that Respondent's offering of competing businesses’ hyperlinks at the corresponding website demonstrates that Respondent had actual knowledge of Complainant's mark and rights. Constructive notice has not been found to be adequate for a finding of bad faith; however, the Panel holds that Respondent had actual knowledge of Complainant's BUDWEISER mark and thus finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).

 

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <budweisr.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 16, 2012