Anheuser-Busch, Incorporated v. Private Registrations Aktien Gesellschaft
Claim Number: FA1004001319609
Complainant is Anheuser-Busch,
Incorporated (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Private Registrations Aktien Gesellschaft (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shopbud.com>, registered with Network Solutions, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2010.
On April 16, 2010, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <shopbud.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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"). Also on April 16, 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 Honorable Karl V. Fink (Ret.) as Panelist.
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 "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. Respondent’s <shopbud.com> domain name is identical/confusingly similar to Complainant’s BUD mark.
2. Respondent does not have any rights or legitimate interests in the <shopbud.com> domain name.
3. Respondent registered and used the <shopbud.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Anheuser-Busch, Incorporated, designs, markets,
and sells beer and beer related merchandise under its BUD mark. Complainant holds a trademark registration
with the
Respondent registered the <shopbud.com> domain name on June 14, 2003. The disputed domain name resolves to a website containing a list of third-party advertisements and hyperlinks, many of which compete with Complainant in the beer industry.
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 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 that 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 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.
Past panels have held that a federal trademark registration
is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Trip Network Inc. v.
Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the
complainant’s federal trademark registrations for the CHEAPTICKETS and
CHEAPTICKETS.COM marks were adequate to establish its rights in the mark
pursuant to Policy ¶ 4(a)(i)); see also Miller Brewing Co. v. Miller Family,
FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the
complainant had established rights to the MILLER TIME mark through its federal
trademark registrations). Complainant
holds a trademark registration for its BUD mark with the
Complainant contends that Respondent’s <shopbud.com> domain name is confusingly similar to Complainant’s BUD mark. The disputed domain name contains Complainant’s entire mark and simply combines the mark with the generic term “shop” and the generic top-level domain (“gTLD”) “.com.” Prior panels have found the addition of a generic term and a gTLD do not distinguish a disputed domain name from a complainant’s mark to a sufficient degree. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel concludes that Respondent’s <shopbud.com> domain name is confusingly similar to Complainant’s BUD mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <shopbud.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <shopbud.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant presents substantial evidence that Respondent is not commonly known by the <shopbud.com> domain name. Complainant contends that Respondent lacks a trademark registration and any other intellectual property rights in the disputed domain name. Complainant claims that Respondent is not licensed or authorized to use Complainant’s BUD mark and that Respondent is not legitimately affiliated with Complainant. The WHOIS information, provided by Complainant, lists the domain name registrant as “Private Registrations Aktien Gesellschaft,” which Complainant argues is not similar to the <shopbud.com> domain name. Respondent has failed to provide any evidence that would contradict Complainant’s arguments and the Panel can find no evidence on the record that would support a finding that Respondent is commonly known by the disputed domain name. Consequently, the Panel determines that Respondent is not commonly known by the <shopbud.com> 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent’s <shopbud.com> domain name resolves to a website that features hyperlinks and advertisements to Complainant’s competitors in the beer industry. Complainant argues that Respondent receives click-through fees from these hyperlinks. The Panel holds that Respondent’s use of the disputed domain name to operate a website that contains hyperlinks which compete with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this 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).”).
The Panel determines that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent utilizes the <shopbud.com> domain
name to operate a website containing hyperlinks and advertisements to
third-parties. Many of these
third-parties directly compete with Complainant in the beer industry. Internet users interested in Complainant’s
beer and beer related merchandise may instead purchase similar products,
harming and disrupting Complainant’s business.
This disruption of Complainant’s business for the profit of
Complainant’s competitors occurs solely because of Respondent’s use of the
confusingly similar disputed domain name.
The Panel concludes that Respondent’s use of the <shopbud.com>
domain name disrupts Complainant’s beer business, which constitutes bad faith
registration and use under Policy ¶ 4(b)(iv). See David
Hall Rare Coins v.
Complainant claims, and the Panel presumes, that Respondent profits from the <shopbud.com> domain name and resolving website through the receipt of click-through fees. Respondent profits from each Internet user that clicks on one of the hyperlinks and advertisements featured on the resolving website. Respondent’s use of the confusingly similar <shopbud.com> domain name causes Internet users that are interested in Complainant to access Respondent’s website. These Internet users likely will be confused as to Complainant’s sponsorship of or affiliation with the disputed domain name and resolving website. Respondent attempts to profit from this confusion. The Panel determines that Respondent’s use of the <shopbud.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shopbud.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 24, 2010
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