Anheuser - Busch, Incorporated v. Pen Media LLC a/k/a Name Commerce
Claim Number: FA0807001214253
Complainant is Anheuser - Busch, Incorporated (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Pen Media LLC a/k/a Name
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <budracing.com> and <budweiserracing.com>, registered with Enom, Inc.
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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 9, 2008.
On July 8, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <budracing.com> and <budweiserracing.com> domain names are registered with Enom, Inc. and that the Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 July 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 30, 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received on July 30, 2008. The Response was deficient under ICANN Rule 5, as it was not received in hard copy.
On August 7, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant contends the following:
- The disputed domain names are confusingly similar to Complainant’s marks. The <budracing.com> domain name incorporates the BUD mark in its entirety, while the <budweiserracing.com> domain name includes the entire BUDWEISER mark. In both domain names the related term “racing” is added.
- Respondent has no rights or legitimate interests in the domain names. Respondent has no trademark or other intellectual property rights in the domain names. It was never granted any authorization, consent or permission to use Complainant’s marks in the domain names. Respondent is not commonly known by “budracing” or “budweiserracing.” Respondent has never operated any bona fide or legitimate business under the disputed domain names, and is not making a protected noncommercial or fair use of the domain names.
Respondent, located in the
- The domain names at issue were used in bad faith. Through the commercial use of the offending domain names in the U.S.A. and other jurisdictions in which Complainant has trademark rights in the BUD and BUDWEISER marks, Respondent intentionally attempts to attract Complainant’s customers to Respondent’s web sites for financial gain by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website or location.
In its email of July 10, 2008, Respondent attaches an email that it sent to Complainant’s attorneys on July 9, 2008, with the following text:
An effort to transfer the domain name <budweiserracing.com> was made today, but it seems it has been placed on registrar lock. This can be confirmed with enom. I see no problem releasing that particular domain, but I don't see any trademarks for "bud racing". The two were acquired in a package deal and no future development was intended for <budweiserracing.com>. An attempt to sell the domain name <budracing.com> was never made. We were approached with the attached email inquiring about the possibility of purchasing and a price was set. Are you also pursuing <bud-racing.com>? Thanks for your time.
Complainant’s marks BUDWEISER and BUD for beer are famous. The domain names at issue are confusingly similar to such marks. Respondent has no rights or legitimate interests in respect of the domain names. Respondent registered both domain names with Complainant’s marks in mind, i.e. in bad faith. The domain names in dispute are being used in bad faith.
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.
Respondent’s only submission in this proceeding does not comply with Rules ¶ 5 (b): it was not submitted in hard copy. Moreover, Respondent’s submission neither responds “specifically to the statements and allegations contained in the complaint” nor includes “any and all bases for the Respondent to retain registration and use of the disputed domain name”. However, the Panel does not wish to deprive this un-represented Respondent of at least an opportunity to defend its case. Therefore, the Panel will admit and consider Respondent’s email of July 10, 2008 and its attached email of July 9, 2008 to Complainant’s attorneys. See Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).
By submitting registration certificates 922,481 (Reg. date October 19, 1971) and 666,367 (Reg. date August 26, 1958) issued by the USTPO, and by providing an extensive list of registrations for the BUDWEISER mark in numerous other countries, Complainant has satisfactorily evidenced that it has rights in the BUDWEISER and BUD trademarks covering beer of International Class 32. Since the disputed domain names contain the BUD and BUDWEISER marks, respectively, with the only addition of the descriptive term “racing,” the Panel finds that the domain names in dispute are, respectively, confusingly similar to Complainant’s marks. See DeLong Sportswear, Inc. v. LaPorte Holdings, D2006-0126 (WIPO Mar. 30, 2006) (finding that the addition of descriptive or non-distinctive terms in a domain name does not affect a finding that the domain name is confusingly similar to a complainant’s registered trademark).
Thus, the first element of the Policy is proven.
Complainant contends that Respondent is not commonly known by either of the domain names, that it has not made any bona fide or fair use of the domain names, and it was never given any authorization, consent or permission to use Complainant’s marks in the domain names in dispute. Taken together, in absence of any element in Respondent’s favor, these contentions of Complainant amount to a prima facie case that Respondent’s lacks rights and legitimate interests in the domain names at issue. It is up to Respondent to provide at least some evidence that it does have rights or legitimate interests in the domain names. See Lopez v. Irish Realty Corp., FA 94906 (Nat. Arb. Forum Aug. 8, 2000) (“Once Complainant makes out a prima facie showing in that regard, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the domain name.”).
Respondent says that it purchased both domain names in a package deal, that it intended no future development for the <budweiserracing.com> domain name, and that it “sees no problem in releasing” it. Respondent also states that he made an effort to transfer this domain name to Complainant, and that he failed because it was placed on registrar lock. The Panel notes that Respondent neither denies that he had knowledge of the BUDWEISER mark and products at the time of registration, nor contends that he has any rights or legitimate interests in respect of any of the domain names.
Regarding the <budracing.com> domain name, Respondent merely says that it “does not see any trademarks for ‘bud racing.’” However, as seen above, Complainant does own the BUD mark. Since adding a descriptive term such as “racing” does not distinguish the domain name from the BUD mark, Respondent’s allegation that the BUD RACING mark does not exist is futile.
As shown by Complainant with printouts obtained on July 8, 2008, Respondent’s use of the website at the <budracing.com> domain name consists of a simple web page titled “Budracing.com.” This web page contains a search-box, as usually provided by search engines, and a list of related searches such as “Bud racing,” “Motocross Gear,” “Motorcycle Helmet,” “Motorcycle Racing Part,” etc. The website at the <budweiserracing.com> domain name has a similar content. In absence of any explanation from Respondent, the Panel concludes that this use of the domain names is not a bona fide or a noncommercial and fair use of Complainant’s mark, or any other legitimate use evidencing rights or legitimate interests in respect of the domain names.
Accordingly, the Panel finds that the second element of the Policy is proven.
and Respondent does not deny that BUD and BUDWEISER are famous or well-known
registered marks for beer. The Panel believes that it would be extremely
unlikely that Respondent, residing or with domicile in
As seen above,
Respondent posted contents on the websites at the domain names in dispute
seeking to attract Internet users who are looking for Complainant’s famed or
well known marks by themselves or in connection with sports events such as
motorcycle and/or car racing. Respondent’s presumable purpose for posting or
causing a third party to post such links was extracting a profit from the
traffic thus generated, since at least a portion of such profit, however big or
small, would go to Respondent via “click-through” or “pay-per-click” systems.
This is a use in bad faith pursuant to
Policy ¶ 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your web site or other on-line location,
by creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your web site or location.”). See
In sum, the Panel finds that the disputed domain names were registered and are being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <budracing.com> and <budweiserracing.com> domain names be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: August 21, 2008
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