Anheuser - Busch,
Incorporated v. Pen Media LLC a/k/a Name Commerce
Claim Number: FA0807001214253
PARTIES
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
Commerce (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <budracing.com> and <budweiserracing.com>,
registered with Enom, 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.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
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 postmaster@budracing.com and postmaster@budweiserracing.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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A.
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.
-
Since
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.
B. Respondent
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.
FINDINGS
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.
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.
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.
Complainant asserts
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.
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 <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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