Anheuser-Busch, Incorporated v. Ryan
Forrester a/k/a TheForrester.com a/k/a R H Busch Botanicals
Claim Number: FA0606000726106
PARTIES
Complainant is Anheuser-Busch, Incorporated (“Complainant”), represented by Andrea K. Cannon, of Anheuser-Busch Companies, Inc., One Busch Place, St. Louis, MO 63118 U.S.A.. Respondent is Ryan Forrester a/k/a TheForrester.com a/k/a R H Busch Botanicals (“Respondent”), 8 Churchill Place, Coral Gardens, PO Box 730, Montego Bay 2 Jamaica, W.I.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buschgardenafrica.com>
and <buschgardensafrica.com>, registered with Go Daddy Software, Inc.
PANEL
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 2, 2006; the National Arbitration Forum received a hard
copy of the Complaint on June 7, 2006.
On June 5, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <buschgardenafrica.com>
and <buschgardensafrica.com> domain names are registered with Go
Daddy Software, Inc., that the current registrant of the name <buschgardenafrica.com> is TheForrester.com and the current registrant of the name <buschgardensafrica.com>
is R H Busch Botanicals. As will be
seen, those names are fictitious names belonging to Mr. Ryan Forrester, the
Respondent. Go Daddy Software, Inc. has
verified that the registrants are bound by the Go Daddy Software, Inc.
registration agreement and it is therefore clear that Respondent has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 14, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 5, 2006 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@buschgardenafrica.com and postmaster@buschgardensafrica.com
by e-mail.
A timely Response was received and determined to be complete on July 5,
2006.
On July 7, 2006 Complainant filed a timely Additional Submission in
accordance with the National Arbitration Forum’s Supplemental Rule #7.
On July 10, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Alan L. Limbury as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is an American brewer.
It owns a U.S. registered trademark BUSCH GARDENS (Reg. No. 925,302) for
the provision of entertainment and amusement park facilities, first used by
Complainant in 1959. A subsidiary of
Complainant, Busch Entertainment Corporation, operates adventure parks under
the BUSCH GARDENS mark, including one in Tampa Bay, Florida. Prior to February 15, 2006, that park was
known as Busch Gardens Tampa. Since
then it has been known as Busch Gardens Africa. Complainant claims common law
rights in the mark BUSCH GARDENS AFRICA, which it has used in its marketing
materials for the Tampa Bay park since that date.
The name change was widely publicized by Complainant and was commented
upon by others online at <themeparkinsider.com> on March 17, 2006. A posting next day mentioned that a
cybersquatter has <buschgardenseurope.com> “but buschgardensafrica.com is
still available.”
The disputed domain name <buschgardensafrica.com> was
registered on March 24, 2006 in the name R H Busch Botanicals. The disputed domain name <buschgardenafrica.com>
was registered on April 8, 2006 in the name TheForrester.com.
The disputed domain names are identical and confusingly similar to
Complainant’s BUSCH GARDENS mark, which
they incorporate in its entirety, as well as the name of its Tampa Bay park.
Respondent has no rights or legitimate interests in the disputed domain names. It is not commonly known by those domain
names and is not operating any bona fide or legitimate business under
them. The domain names resolve to a
search site provided by the Registrar.
Respondent was undoubtedly aware of Complainant’s BUSCH GARDENS mark
prior to registering the disputed domain names. Complainant has not licensed Respondent to use the mark.
Respondent registered and is using the disputed domain names in bad
faith. He registered them with the
purpose of disrupting Complainant’s business for his own personal gain. The domain names resolve to search sites
featuring links to vacation spots that are direct competitors of
Complainant. Respondent is likely collecting
click-through fees by visitors of his sites.
Respondent had either actual or constructive knowledge of Complainant’s
BUSCH GARDENS mark at the time of registration, from which it is proper to
infer bad faith.
B. Respondent
Complainant has no trademark rights in the BUSCH GARDENS or BUSCH
GARDENS AFRICA names outside the United States. It has no registration in Jamaica and no legal claim to either
name within that country. It has no
international mark registered under the Madrid Protocol other than for
Budweiser for beers. It may be
concluded that it has no intention to do business outside the United States
under the BUSCH GARDENS mark.
The names TheForrester and TheForrester.com are fictitious names under
which Ryan Forrester and associates has operated a graphic design and internet
marketing business since 2001. The name
R.H.Busch Botanicals is a fictitious name created for the purposes of
promotional activity designated to take place on <buschgardensafrica.com>
and <buschgardenafrica.com>.
Respondent has the right to use the disputed domain names under fair
use and parody laws (citing two cases).
Since May, 2006 Respondent has been developing a website for use in
viral internet marketing and search engine marketing under which only the name
resembles the Complainant’s name. The
content or intent thereof has nothing to do with Complainant or its
business. Respondent relies on samples
of creative works intended for use on websites to which the disputed domain
names will be directed. One of these
displays the words “R.H.Busch Gardens Africa and other adventures”.
Respondent denies bad faith.
The fact that sponsored ads pointing to Complainant’s competition
appeared on the websites was a function of the Registrar and they were placed
there without the knowledge of Respondent.
It serves as a temporary default page until Respondent was to finish
building the website. This is common
practice. Respondent did not gain
monetarily from clicks on this page.
C. Complainant’s Additional Submission
Complainant’s BUSCH GARDENS mark is known throughout the world. Complainant has owned the domain name
<buschgardens.com> since 1994 and has sold online nearly 30,000 tickets
to non-U.S. residents in the 18 months to June 2006, including to people from
Jamaica.
Respondent admits the [domain] name resembles Complainant’s name.
The parody cases cited by Respondent are copyright cases, not relevant
in domain name disputes. In claiming
that the content or intent [of the site] has nothing to do with Complainant or
Complainant’s business, Respondent is not making fair use of the domain names.
The fact that R.H.Busch is a fictitious name does not establish any
rights or legitimate interests in the disputed domain names.
The use to which Respondent says he will put the domain names may be
taken as being for commercial gain.
Respondent has accordingly attempted to attract Internet users, for
commercial gain, by creating a likelihood of confusion with Complainant and its
mark. The timing of the registrations
is suspicious, occurring right after Complainant’s press releases. Moreover, Respondent registered the domain
names using a privacy service to shield his identity.
FINDINGS
Complainant has established all the elements
entitling it to relief.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
It
is sufficient for a Complainant to establish that, at the time of filing the
Complaint, it has some rights in a trademark anywhere in the world. See Al Ghurair Group LLC v. Ghurair
Group, D2004-0532 (WIPO Nov.
4, 2004); see also Deutsche Telekom AG v. Zucker, D2004-0749 (WIPO Nov. 18, 2004). Complainant’s U.S. Registered
trademark BUSCH GARDENS entitles it to bring a proceeding under the
Policy. The record does not enable a
finding to be made that, through use since February this year, Complainant has acquired
common law rights in the mark BUSCH GARDENS AFRICA. Indeed, Complainant does not rely on its claimed common law mark.
The
disputed domain names wholly incorporate Complainant’s BUSCH GARDENS mark, save
that one of them omits the letter “s.”
Neither the omission of that letter nor the addition in both domain
names of the geographic identifier AFRICA nor the inconsequential gTLD “.com”
serve to distinguish the domain names from Complainant’s mark. The Panel finds that the disputed domain
names are identical and confusingly similar to Complainant’s registered mark.
Complainant
has established this element of its case.
Once a complainant establishes a prima facie case against a respondent, the burden is on the respondent to provide evidence of its right or legitimate interests under paragraph ¶ 4(c) of the Policy. See Cassava Enterprises Ltd., Cassava Enterprises (Gibraltar) Ltd. v. Victor Chandler Int’l Ltd., D2004-0753 (WIPO Nov. 11, 2004).
Here Complainant has established that its mark BUSCH GARDENS has been used in connection with adventure parks since 1959, that it has not given Respondent permission to incorporate that mark in a domain name, that the domain names were registered very shortly after publicity was given to the change of name of the Tampa Bay park, and that Respondent has “parked” the domain names on a search site with links to competitors of Complainant. Coupled with Complainant’s assertion, first made in the Complaint and not denied in the Response, that Respondent knew of Complainant’s mark when he registered the domain names, these facts establish a prima facie case of absence of rights and legitimate interests in the disputed domain names on the part of Respondent.
Respondent admits the name R.H.Busch is a fictitious name, chosen for
the purposes of promotional activity designated to take place on
BuschGardensAfrica.com and BuschGardenAfrica.com. That name cannot therefore
avail the Respondent under paragraph 4(c)(ii) of the Policy. The samples of
creative works intended for use at those sites, put forward by Respondent, bear
no date to indicate whether they were created before or after the commencement
of this proceeding and cannot therefore establish legitimacy under paragraph ¶
4(c)(i).
As to Policy ¶ 4(c)(iii), even if Respondent is presently deriving no
commercial benefit from click-through traffic on the search sites at which the
domain names are parked and even if the links to competitors of Complainant
were placed without Respondent’s knowledge, his admitted intent, recognizing
that the domain names “resemble” Complainant’s mark, is to develop the sites to
which the disputed domain names will lead as marketing sites having nothing to
do with Complainant or its business. This alone is fatal to any contention that
the sites are to be operated as parody sites. The Panel concludes from
Respondent’s own explanation that these sites are intended to be for commercial
gain and that they are intended misleadingly to divert consumers seeking a site
belonging to Complainant.
Complainant has established this element of its case.
The circumstances set out in paragraph 4(b)
of the Policy, which are deemed to be evidence of both bad faith registration
and bad faith use, are not exhaustive. Bad faith registration and use may be
established separately and by other evidence.
There is no evidence in the record to justify the conclusion that Respondent registered the domain names using a privacy service to shield his identity.
It is unnecessary to decide here whether there is any place for the concept of constructive knowledge in determining bad faith under the Policy because Respondent has not denied Complainant’s assertion that he knew of Complainant’s mark when registering the disputed domain names. See Asset Marketing Systems, LLC v. Silver Lining, D2005-0560 (WIPO July 22, 2005).
Respondent says his intent is to operate sites using the domain names under which ‘only the name resembles the Complainant’s name.’ It follows that Internet users seeking Complainant will find themselves misleadingly diverted to Respondent’s sites and that Respondent must have contemplated this when he registered those domain names. This constitutes bad faith registration.
Although Respondent has not put his plan into
operation yet, the Panel finds that parking the domain names with intent to
develop sites that will misleadingly divert Internet users by creating a
likelihood of confusion with Complainant’s its mark amounts to bad faith use.
Complainant has established this element of
its case.
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 <buschgardenafrica.com>
and <buschgardensafrica.com> domain names be TRANSFERRED
from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: July 21, 2006
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