Anheuser - Busch, Incorporated v. James Sanson
Claim Number: FA1004001319447
Complainant is Anheuser - Busch, Incorporated (“Complainant”), represented by Paul
D. McGrady of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <budweiser.ws>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 15, 2010. On April 15, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <budweiser.ws> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has 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, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2010, by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts and to firstname.lastname@example.org. Also on April 19, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of a Written Notice, as defined in Rule 1. 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:
1. The domain name that Respondent registered, <budweiser.ws>, is identical to Complainant’s BUDWEISER mark.
2. Respondent has no rights to or legitimate interests in the <budweiser.ws> domain name.
3. Respondent registered and used the <budweiser.ws> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Anheuser -
Busch, Incorporated, is an American beer brewer. Complainant owns multiple trademarks for the
BUDWEISER marks with the United States Patent and Trademark Office (“USPTO”) (e.g., U.S. Reg. No. 922,481 issued Oct.
19, 1971) and with trademark authorities worldwide, such as
Respondent, James Sanson, registered the <budweiser.ws> disputed domain name December 4, 2007. Respondent’s disputed domain name resolves to the <www.kingofhud.com> domain name, where Respondent offers public real estate auction services.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 owns multiple trademark registrations for the
BUDWEISER marks with the USPTO (e.g.,
Complainant argues that Respondent’s disputed <budweiser.ws> domain name is
identical to Complainant’s BUDWEISER mark because the disputed domain name
makes no change to Complainant’s mark aside from adding the country-code
top-level domain (ccTLD”) “.ws.” The
Panel finds that the mere addition of a ccTLD to Complainant’s registered mark
does not prevent the disputed domain name from being identical to Complainant’s
mark as the ccTLD is generally considered irrelevant. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb.
Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”); see also Europcar
Int’l SA v. New Media Research in
Therefore, the Panel finds that Respondent’s <budweiser.ws> disputed domain name is identical to Complainant’s BUDWEISER mark according to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. According to the requirements of Policy ¶ 4(a)(ii), Complainant must make a prima facie case to supports its allegations as to Respondent. Once Complainant makes a prima facie case, the burden of proof shifts to Respondent to show rights to and legitimate interests in the disputed domain name. Here, the Panel finds that Complainant made a prima facie case and that Respondent failed to respond to it. Accordingly, the Panel finds that it is warranted in making any adverse inferences resulting from Complainant’s Complaint and in assuming that Respondent’s silence signals a lack of rights and legitimate interests. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations in the complaint.”).
Notwithstanding Respondent’s failure to respond, however, this Panel elects to consider all available evidence in the record that is presented pursuant to the Policy ¶ 4(c) factors to determine if the evidence suggests that Respondent has such rights and legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s mark in a domain name. The WHOIS information for the disputed domain name lists the registrant as “James Sanson,” and therefore, Respondent is not nominally associated with the disputed domain name. The Panel accordingly finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s disputed domain name redirects Internet users to the <www.kingofhud.com> domain name. Respondent uses this <www.kingofhud.com> domain name to maintain a website offering public real estate auction services. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet traffic to a website completely unrelated to Complainant does not give Respondent rights and legitimate interests because such use is not the bona fide offering of goods or services required by Policy ¶ 4(c)(i) and it is not the legitimate noncommercial or fair use required by Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name that is identical to Complainant’s protected mark. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and uses the <budweiser.ws> disputed domain name in bad faith because Respondent opportunistically registered a domain name using the protected mark of another and Respondent uses the disputed domain name to attract Internet users seeking Complainant and Complainant’s products and services and then redirects them to Respondent’s own unaffiliated website for Respondent’s commercial gain. Complainant contends that Respondent’s resolving website offers public real estate auction services that are completely unrelated to Complainant or Complainant’s products. The Panel finds that Respondent’s efforts to increase traffic to its own business-related website by appropriating Complainant’s mark are evidence of and support findings of bad faith registration and use according to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <budweiser.ws> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 25, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum