Anheuser-Busch, Incorporated v. Web Advertising, Corp.
Claim Number: FA0704000964258
Complainant is Anheuser-Busch, Incorporated (“Complainant”), represented by Andrea
K. Cannon, of Anheuser-Busch
Companies, Inc., One Busch Place, St. Louis, MO 63118. Respondent is Web Advertising, Corp. (“Respondent”),
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <bushgarden.org> and <anhesuer-busch.com>, registered with Capitoldomains, Llc, and <anheuserbuschbrewery.com>, registered with Domaindoorman, Llc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 18, 2007.
On April 18, 2007 Capitoldomains, Llc confirmed by e-mail to the National Arbitration Forum that the <bushgarden.org> and <anhesuer-busch.com> domain names are registered with Capitoldomains, Llc, and that Respondent is the current registrant of the names. Capitoldomains, Llc has verified that Respondent is bound by the Capitoldomains, Llc registration agreement and 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 April 19, 2007 Domaindoorman, Llc confirmed by e-mail to the National Arbitration
Forum that the <anheuserbuschbrewery.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, Llc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On April 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 14, 2007 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@bushgarden.org, postmaster@anhesuer-busch.com, and postmaster@anheuserbuschbrewery.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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." 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bushgarden.org>, <anhesuer-busch.com>, and <anheuserbuschbrewery.com> domain names are confusingly similar to Complainant’s mark.
2. Respondent does not have any rights or legitimate interests in the <bushgarden.org>, <anhesuer-busch.com>, and <anheuserbuschbrewery.com> domain names.
3. Respondent registered and used the <bushgarden.org>, <anhesuer-busch.com>, and <anheuserbuschbrewery.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Anheuser-Busch, Incorporated, is a leading brewer,
holding nearly 50 percent of the
Respondent registered the <bushgarden.org> domain name on September 29, 2006, the <anhesuer-busch.com> domain name on May 10, 2005, and the <anheuserbuschbrewery.com> domain name on June 10, 2006. The disputed domain names resolve to search engines that contain sponsored links to third-party commercial websites offering goods and services that directly compete with Complainant’s goods and services.
Respondent has registered approximately 6,831 domain names, a substantial number of which potentially infringe upon the mark of various name brands. A sampling of some of the names furnished in the Complaint include <alaskaair.com>, <bettycrpcker.com>, <sony-europe.com>, and <bananarepubulic.com>. Additionally, Complainant sets forth two recent decisions that found Respondent acted in bad faith when registering and using confusingly similar domain names, namely, Edmunds.com, Inc. v. Web Advertising Corp./ Keyword Marketing, Inc., D2006-1380 (WIPO Dec. 25, 2006) and Credit Industriel et Commercial S.A. v. Web Advertising Corp., D2006-1418 (WIPO Jan 23, 2007).
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.
Complainant asserts rights in the marks through registration
with the USPTO. The Panel finds that
Complainant’s timely registration and subsequent use of the ANHEUSER-BUSCH and
Respondent’s <bushgarden.org> domain name eliminates the letters “c” and “s” and
the space between the words in Complainant’s BUSCH GARDENS mark, and adds the
generic top-level domain (“gTLD”) “.org.”
The Panel finds that the elimination of two letters and a space between the
words of a mark, as well as the addition of a gTLD, fails to sufficiently
distinguish the domain name from the protected mark pursuant to Policy ¶
4(a)(i). See 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.”); see also
Respondent’s <anhesuer-busch.com> domain name combines a common misspelling of Complainant’s ANHEUSER-BUSCH mark along with the addition of a gTLD. The Panel finds that a common misspelling of a protected mark combined with a gTLD evinces confusing similarity of the disputed domain name with the protected mark pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to the complainant’s HEWLETT-PACKARD mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Respondent’s <anheuserbuschbrewery.com> domain name contains a de-hyphenated version of Complainant’s ANHEUSER-BUSCH mark along with the generic or descriptive term “brewery,” which describes Complainant’s business, and the gTLD “.com.” The Panel finds that the elimination of a hyphen along with a generic term, combined with a gTLD evinces confusing similarity of the disputed domain name with the protected mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights or legitimate interests in the disputed domain names. In instances where Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to set forth concrete evidence showing that it possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
The disputed domain names resolve to websites containing sponsored links to third-party, commercial websites, some of which offer goods and services in direct competition with those offered by Complainant’s business. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
A review of Respondent’s WHOIS information reveals that the
registrant of the disputed domain names is “Web Advertising, Corp.” Lacking sufficient evidence to show
otherwise, the Panel finds that Respondent is not commonly known by the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Some of the sponsored links on Respondent’s search engine websites link to competitors of Complainant. The Panel finds that such registration and use evinces a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites), see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant contends that Respondent has registered
approximately 6,831 domain names, a substantial number of which potentially
infringe upon the mark of various name brands.
A sampling of some of the names furnished in the Complaint include
<alaskaair.com>, <bettycrpcker.com>, <sony-europe.com>, and
<bananarepubulic.com>. Additionally,
Complainant sets forth two recent decisions that found Respondent acted in bad
faith when registering and using confusingly similar domain names, namely, Edmunds.com, Inc. v. Web Advertising Corp./
Keyword Marketing, Inc., D2006-1380 (WIPO Dec. 25, 2006) and Credit Industriel et Commercial S.A. v. Web
Advertising Corp., D2006-1418 (WIPO Jan 23, 2007). The Panel finds that Respondent’s pattern of
registering confusingly similar domain names establishes registration and use
in bad faith pursuant to Policy ¶ 4(b)(ii). See Nat’l Wildlife Fed’n v. Kang, FA 170519 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent
has a history of registering domain names that infringe on other trademark
holders' rights; therefore, Respondent's registration and use of the
<yourbigbackyard.com> domain name constitutes bad faith pursuant to
Policy ¶ 4(b)(ii) because the domain name is identical to Complainant's YOUR BIG
BACKYARD mark and prevents Complainant from reflecting its mark on-line.”); see also Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum
May 17, 2004) (“Registration and use of a domain name
to prevent Complainant from reflecting its mark in a corresponding domain name
through a pattern of such conduct evidences bad faith registration and use of a
domain name pursuant to Policy 4(b)(ii).”).
Presumably, Respondent receives click-through fees for the
misdirection of unsuspecting Internet users.
The Panel finds that Respondent’s registration and use constitutes an
attraction for commercial gain, which demonstrates registration and use in bad
faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also Am. Univ. v. Cook, FA 208629
(Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bushgarden.org>, <anhesuer-busch.com>, and <anheuserbuschbrewery.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 31, 2007
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