Anheuser-Busch, Inc. v. Michele Dinoia
Claim Number: FA0206000114465
Complainant is Anheuser-Busch, Inc., St. Louis, MO, USA (“Complainant”) represented by Steven M. Weinberg, of Greenberg Traurig, LLP. Respondent is Michele Dinoia, Pineto, ITALY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <anheuserbusch.com>, registered with Namescout Corp.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 31, 2002; the Forum received a hard copy of the Complaint on June 3, 2002.
On June 7, 2002, Namescout Corp. confirmed by e-mail to the Forum that the domain name <anheuserbusch.com> is registered with Namescout Corp. and that Respondent is the current registrant of the name. Namescout Corp. has verified that Respondent is bound by the Namescout Corp. 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 June 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 27, 2002 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On July 8 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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 name be transferred from Respondent to Complainant.
The <anheuserbusch.com> domain name is identical and confusingly similar to Complainant’s ANHEUSER-BUSCH mark.
Respondent has no rights or legitimate interests in the <anheuserbusch.com> domain name.
Respondent registered and used the <anheuserbusch.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant owns over fifteen federally registered trademarks incorporating the ANHEUSER-BUSCH mark. Specifically, Complainant has the ANHEUSER-BUSCH mark registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”) as Reg. No. 909,723. Also, Complainant owns a registered trademark in Italy for the ANHEUSER-BUSCH mark (Reg. No. 408,044 dated December 12, 1980).
Complainant has used the ANHEUSER-BUSCH mark in connection with its alcoholic beverages and related products since 1876. Complainant is well-known as one of the world’s largest brewers collecting over $12 billion in revenue in 2001. Complainant conducts extensive advertising campaigns in the United States and abroad for its products. Consequently, Complainant and the ANHEUSER-BUSCH mark have achieved a substantial level of notoriety around the globe.
Respondent registered the <anheuserbusch.com> domain name on January 19, 2002. Complainant never licensed or authorized Respondent to use the mark. However, Respondent uses the <anheuserbusch.com> domain name to re-direct Internet users to <targetsearches.com>, which is a website that operates as a search engine. This is a commercial website because it encourages users to visit businesses that paid to be listed on the search website.
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 the 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.
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; and
(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.
Identical and/or Confusingly Similar
Complainant has established its rights in the ANHEUSER-BUSCH mark because it used the mark since 1876 and registered it with the USPTO and in Italy.
Respondent’s <anheuserbusch.com> domain name is confusingly similar to Complainant’s ANHEUSER-BUSCH mark because the omission of the hyphen from the mark does not create a separate and distinct domain name. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the C-SPAN mark, is confusingly similar to Complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name <tippex.com> is confusingly similar to Complainant’s mark TIPP-EX and that omission of a hyphen does not negate likelihood of confusion).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests in the <anheuserbusch.com> domain name and Respondent did not respond to refute Complainant’s assertions. Therefore, the Panel may presume Respondent has no such rights or legitimate interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Furthermore, in the absence of a Response, all reasonable inferences may be drawn in favor of the Complainant. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent uses the <anheuserbusch.com> domain name to link Internet users to its <targetsearches.com> website. This website is a commercial search engine, so Respondent is profiting from its misappropriation of Complainant’s famous ANHEUSER-BUSCH mark. Respondent’s use of Complainant’s famous mark does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it constitute a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
Complainant’s ANHEUSER-BUSCH mark has grown into an important source identifier for Complainant, as the mark is synonymous with Complainant’s alcohol related beverages. The substantial fame and notoriety of the ANHEUSER-BUSCH mark creates a presumption that no other entity could be commonly known by the mark or something nearly identical to the mark. Furthermore, the Respondent is only known as Michele Dinoia and there is no evidence that Respondent is commonly referred to by the <anheuserbusch.com> domain name. Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, thus, Policy ¶ 4(a)(ii) has been satisfied.
As previously stated, Complainant’s ANHEUSER-BUSCH mark enjoys a significant amount of worldwide recognition because of Complainant’s longstanding use and widespread marketing efforts. Due to the fame of the ANHEUSER-BUSCH mark, Respondent should have been aware of Complainant’s rights in the mark. Hence, Respondent’s registration of the <anheuserbusch.com> domain name, despite constructive notice of Complainant’s rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001) ("Given the uniqueness and the extreme international popularity of the [ODIE] mark, the Respondent knew or should have known that registering the domain name in question would infringe upon the Complainant's goodwill").
Respondent’s use of the <anheuserbusch.com> domain name to re-direct Internet traffic to its commercial search engine website, located at <targetsearches.com>, has the likelihood of creating confusion as to affiliation and sponsorship of the domain name. Internet users who use Complainant’s mark when searching for Complainant may type the confusingly similar <anheuserbusch.com> domain name and reasonably believe that Complainant sponsors the <targetsearches.com> website. Therefore, Respondent’s actions constitute bad faith use of the domain name under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website).
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 the requested relief should be hereby GRANTED.
Accordingly, it is Ordered that the <anheuserbusch.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: July 15, 2002
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