national arbitration forum

 

DECISION

 

Anheuser - Busch, Incorporated v. salvisongs.com

Claim Number: FA1108001401118

 

PARTIES

Complainant is Anheuser - Busch, Incorporated (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA.  Respondent is salvisongs.com (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <buddriver.com>, registered with GoDaddy.com, 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.

 

 Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2011; the National Arbitration Forum received payment on August 1, 2011.

 

On August 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <buddriver.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 2011 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 postmaster@buddriver.com.  Also on August 5, 2011, 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 August 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <buddriver.com> domain name is confusingly similar to Complainant’s BUD mark.

 

2.    Respondent does not have any rights or legitimate interests in the <buddriver.com> domain name.

 

3.    Respondent registered and used the <buddriver.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Anheuser - Busch, Incorporated, is a large producer of alcohol and alcohol related products headquartered in the United States.  Complainant submits a trademark registration with the United States Patent and Trademark Office ("USPTO") for its BUD mark (Reg. No. 666,367 registered August 26, 1958). 

 

Respondent, salvisongs.com, registered the <buddriver.com> domain name on January 30, 2005.  Respondent’s disputed domain name resolves to a website that features a jingle that Respondent is attempting to sell to Complainant for $35,000.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has presented the Panel with evidence that it owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for the BUD mark (Reg. No. 666,367 registered August 26, 1958).  The Panel finds that Complainant has satisfied the required showing under Policy ¶ 4(a)(i), and has therefore established rights in the BUD mark.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”). 

 

Further, Complainant argues that Respondent’s <buddriver.com> domain name is confusingly similar to Complainant’s BUD mark.  The Panel notes that the domain name contains Complainant’s mark entirely, while adding the generic term “driver” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that such additions to Complainant’s mark are not sufficient to find that the domain name is distinct from the mark.  Therefore, the Panel finds that the <buddriver.com> domain name is confusingly similar to Complainant’s BUD mark under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel concludes that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have rights or legitimate interests in the <buddriver.com> domain name under Policy ¶ 4(a)(ii).  Under the Policy, Complainant must provide the Panel with a prima facie case proving its allegations.  Once Complainant has done this, as is the case here, the burden of proof shifts to Respondent to show that it does in fact have rights or legitimate interests in the domain name.  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).  In instances where Respondent does not submit a Response, the Panel may accept as true all of the allegations in the Complaint.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  However, the Panel will analyze the evidence on record in making its determination of whether Respondent has rights or legitimate interests in the domain name under Policy ¶ 4(c). 

 

Complainant argues that Respondent’s use of the BUD mark is not authorized.  The Panel notes that the WHOIS information for the domain name identifies “salvisongs.com” as the domain name registrant, which the Panel finds is not similar to the domain name at issue.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant contends that Respondent’s domain name resolves to a website which features a jingle that Respondent is attempting to sell to Complainant for $35,000.  Complainant notes that the domain name features its mark displayed throughout the audio playback of Respondent’s jingle.  Complainant argues that such use of the domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.  The Panel agrees and finds that Respondent’s use of the domain name for such use as identified is not 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).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“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 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 concludes that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent is using the domain name to pitch a jingle to Complainant, which Respondent has attempted to sell to Complainant for $35,000.  Complainant alleges that such use of the domain name is evidence of bad faith.  Complainant further argues that Respondent’s use of the domain name to promote its music business is further evidence of bad faith.  The Panel agrees and finds that Respondent’s use of Complainant’s BUD mark in a domain name that features a jingle regarding Complainant’s products, in which Respondent is attempting sell the jingle to Complainant for $35,000, is evidence of bad faith under Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).

 

Further, Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the mark prior to registration of the domain name.  Complainant contends Respondent knowingly registered a domain name with Complainant’s mark contained therein, with a jingle regarding Complainant’s mark and products.  Although constructive knowledge has generally not been held sufficient to support a finding of bad faith, if the Panel finds Respondent has actual knowledge of Complainant's mark, the Panel may find  Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).  The Panel here finds that Respondent registered the domain name with actual knowledge of Complainant’s rights in the mark, and therefore registered the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

The Panel concludes that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <buddriver.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  August 29, 2011

 

 

 

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