Anheuser-Busch, Incorporated v. FIG
Claim Number: FA0805001190330
Complainant is Anheuser-Busch, Incorporated (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP, Illinois, USA. Respondent is FIG Vietnam c/o Domain
Admin (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <budwieser.com>, registered with Fabulous.com Pty Ltd.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 14, 2008.
On May 14, 2008, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <budwieser.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 May
16, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 5, 2008
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@budwieser.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is in the
business of brewing and selling beer, and sponsoring sporting and entertainment
events.
Complainant uses the
BUDWEISER trademark in association with its business, and registered that mark
with the United States Patent and Trademark Office (“USPTO”) on October 19,
1971 (Reg. No. 922,481).
Respondent is not licensed or otherwise authorized to use its BUDWEISER mark.
Respondent registered the <budwieser.com> domain name on May 12, 1999, to display third-party links, some of which are in competition with the business of Complainant.
Respondent is not commonly known by the <budwieser.com> domain name.
Respondent’s domain name is an example of typo-squatting,
the intentional misspelling of a famous mark in a domain name in order to
misdirect Internet traffic from its intended destination by taking advantage of
Internet users’ common spelling errors.
Respondent has been the respondent in other UDRP proceedings
in which the disputed domain names were transferred from Respondent to the
complainants in those cases.
Respondent’s <budwieser.com> domain name is confusingly similar to Complainant’s BUDWEISER mark.
Respondent does not have any rights to or legitimate interests in the <budwieser.com> domain name.
Respondent registered and uses the <budwieser.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of its BUDWEISER trademark with the USPTO sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” See also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Respondent’s <budwieser.com> domain name incorporates Complainant’s entire BUDWEISER mark with only the common misspelling or transposing of the “i” and “e” and the addition of a generic top-level domain “.com.” A panel in Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) found <googel.com> to be confusingly similar to a complainant’s GOOGLE mark and noted that:
[t]he
transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity, as the result reflects a very
probable typographical error.
See also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar).
Likewise, the addition of a generic top-level domain such as “.com” is irrelevant when determining if the disputed domain name is confusingly similar to Complainant’s BUDWEISER mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain for purposes of determining whether it is identical or confusingly similar to a competing mark).
Therefore, we find that Respondent’s <budwieser.com> domain name is confusingly similar to Complainant’s BUDWEISER mark pursuant to Policy ¶ 4(a)(i).
Initially, Complainant may shift the burden of proof to Respondent by establishing a prima facie case that Respondent has no rights to or legitimate interests in the <budwieser.com> domain name. The resulting presumption that Respondent lacks rights to or legitimate interests in the disputed domain name is furthered by Respondent’s failure to respond to the Complaint. In G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), a panel found that:
[b]ecause
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not presented
any circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Therefore, because Complainant has established a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain name, while Respondent has failed to answer the Complaint, we are free to conclude that Complainant has prevailed on this head of the Policy. We will nonetheless evaluate the available evidence against the criteria of Policy ¶ 4(c) to determine if there is any basis for concluding that Respondent has any such rights or interests.
We first note in this connection that, from the facts
alleged and not denied, we may presume that Respondent receives click-through
fees from Internet users’ use of the hyperlinks displayed on the website
resolving from the disputed domain name.
In Bank of America Corp. v. Northwest Free
Community Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003), a panel found that:
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of a disputed domain name to redirect Internet users to commercial websites, unrelated to a complainant and presumably with the purpose of earning commissions or pay-per-click referral fees did not evidence rights or legitimate interests in the domain name). For the same reasons, we conclude that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
We next observe that Complainant alleges, and Respondent
does not deny, that Respondent is not licensed or otherwise authorized to use
its BUDWEISER mark, and that Respondent
is not commonly known by the <budwieser.com>
domain name. A panel in RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) interpreted Policy ¶ 4(c)(ii) "to require a showing
that one has been commonly known by the domain name prior to registration of
the domain name to prevail." See
also G.D. Searle & Co. v. Cimock,
FA 126829 (Nat. Arb. Forum Nov. 13, 2003):
Due to the fame of Complainant’s mark there must be strong evidence
that Respondent is commonly known by the disputed domain name in order to find
that Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii).
There being no such evidence in the record before us, we are constrained to conclude that Respondent is not commonly known by the <budwieser.com> domain name within the meaning of Policy ¶ 4(c)(ii).
Finally, Complainant alleges that Respondent has engaged in typosquatting when registering the <budwieser.com> domain name by choosing to register a common misspelling of Complainant’s BUDWEISER mark. Respondent does not deny this allegation. In National Association of Professional Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), a panel stated that:
[t]yposquatting
… as a means of redirecting consumers against their will to another site, does
not qualify as a bona fide offering of goods or services, whatever may be the
goods or services offered at that site.
See also Diners Club Int’l Ltd. v. Domain
Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum
June 23, 2003) (holding that a respondent’s domain name <wwwdinersclub.com>, a typosquatted version of a
complainant’s DINERS CLUB mark, was evidence in and of itself that that
respondent lacked rights to or legitimate interests in the disputed domain); see also
IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights to and
legitimate interests in disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’”). We agree with these
assessments. Accordingly, Respondent’s
domain name does not qualify as a bona
fide offering of goods or services under Policy ¶ 4(a)(ii).
The Panel thus finds that Complainant has satisfied Policy ¶
4(a)(ii).
The evidence that Respondent engaged in typosquatting by
intentionally misspelling Complainant’s BUDWEISER mark when registering its <budwieser.com> domain name demonstrates
that Respondent was guilty of bad faith registration and use of the disputed
domain under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003):
Typosquatting
itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
See also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003): “Typosquatting is inherently parasitic and of itself evidence of bad faith.”
The Panel also finds that Respondent has a pattern of
“cybersquatting.” Respondent has been a
party to at least 2 other proceedings under the UDRP resulting in the transfer
of the disputed domain names. See Am. Univ. v. FIG
Additionally, it appears that Respondent’s <budwieser.com> domain name is likely
to create confusion as to Complainant’s possible affiliation with or sponsorship
of the disputed domain name’s resolving website. We may presume that Respondent receives
commercial benefit from the third-party hyperlinks displayed on the resolving
website, some of which are in direct competition with the business of Complainant. Such
use of the offending domain constitutes bad faith registration and use pursuant
to Policy ¶ 4(b)(iv). See H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that a disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) by virtue of a respondent’s registration and use
of an infringing domain name to attract Internet users to a website by using a
complainant’s famous marks and likeness); see also G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
a respondent registered and used a domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because that respondent used the domain to attract Internet users to
its commercial website); further see 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 therefore finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <budwieser.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 25, 2008
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