Anheuser - Busch, LLC v. wayne tait
Claim Number: FA1110001412064
Complainant is Anheuser - Busch, LLC (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is wayne tait (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <budweiserneons.com>, registered with GoDaddy.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2011; the National Arbitration Forum received payment on October 19, 2011.
On October 19, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <budweiserneons.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 October 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@budweiserneons.com. Also on October 19, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 (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, 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 <budweiserneons.com> domain name is confusingly similar to Complainant’s BUDWEISER mark.
2. Respondent does not have any rights or legitimate interests in the <budweiserneons.com> domain name.
3. Respondent registered and used the <budweiserneons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Anheuser-Busch, LLC, is a global brewer and distributor of a wide array of fermented beverages. Complainant owns multiple trademark registrations for its BUDWEISER mark with trademark authorities throughout the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 517,427 registered November 8, 1949) and the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 1,125,449 registered December 11, 1979). Complainant labels not only its flagship brand of beer “BUDWEISER,” with the mark but many of its other products including t-shirts, apparel, bar signs, and other merchandise also bear the BUDWEISER mark.
Respondent, wayne tait, registered the disputed domain name on June 26, 2010. The disputed domain name resolves to a website offering merchandise branded with Complainant’s mark, including neon and tin signs.
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.
Complainant argues that it has established its rights in the BUDWEISER mark by registering that mark with the USPTO (e.g., Reg. No. 517,427 registered November 8, 1949) and the UKIPO (e.g., Reg. No. 1,125,449 registered December 11, 1979). Complainant has submitted sufficient evidence to show that the mark is duly registered and that it is the rightful owner of the registrations. Therefore, the Panel finds that Complainant has established its rights in the BUDWEISER mark under Policy ¶ 4(a)(i) by registering the mark with governmental trademark authorities. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant also argues that Respondent’s <budweiserneons.com> domain name is confusingly similar to its BUDWEISER mark. The disputed domain name incorporates the entire mark while adding the generic top-level domain (“gTLD”) “.com” and the generic term “neons.” The Panel finds that Respondent’s <budweiserneons.com> domain name is confusingly similar to Complainant’s BUDWEISER mark under Policy ¶ 4(a)(i) because the changes made to Complainant’s mark by Respondent to constitute the disputed domain name failed to sufficiently differentiate the two. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Complainant bears the initial burden of proof to demonstrate that Respondent lacks rights or legitimate interests in the disputed domain name. In this case, the Panel finds that Complainant has met its initial prima facie burden shifting the burden to Respondent, who must now prove that it has rights or legitimate interests in the disputed 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)). Respondent has failed to offer any Response in this matter, which, without more, would allow the Panel to accept Complaint’s allegations as true and find that Respondent lacks rights or legitimate interests in the disputed domain name. See Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”). However, the Panel will still examine the entire record before making a determination regarding Respondent’s rights or legitimate interests in accordance with the factors listed in Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain name. Respondent has offered no evidence to support a finding that it is commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “wayne tait.” Based upon the evidence available, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also 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).
Complainant also alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name resolves to a website where it sells Complainant’s merchandise in the form of neons signs and other bar signs. Complainant has never licensed or provided authorization for Respondent to sell its products. The Panel finds that Respondent’s sale of Complainant’s products from its website does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it does not constitute a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s disputed domain name disrupts its business, supporting a finding of bad faith registration and use. Respondent’s disputed domain name resolves to a website offering Complainant’s merchandise for sale. Internet users may arrive at Respondent’s website and purchase that merchandise from Respondent rather than Complainant. The Panel finds that this use clearly disrupts Complainant’s business by taking away potential customers and, as such, is affirmative evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
Complainant also asserts that Respondent’s disputed domain name was registered and is being used for Respondent’s commercial gain constituting bad faith registration and use. Respondent’s disputed domain name resolves to a website where Respondent sells Complainant’s merchandise, like neon and tin signs. Respondent presumably charges for the purchase of these items and, in turn, generates revenue through the sale of the items. Therefore, the Panel finds that Respondent registered and is using the disputed domain name for its own commercial gain constituting bad faith registration and use under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant has established 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 <budweiserneons.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 29, 2011
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