national arbitration forum

 

DECISION

 

Anheuser-Busch, LLC v. David Hill / Texas Best Flooring Company

Claim Number: FA1111001414789

 

PARTIES

Complainant is Anheuser-Busch, LLC (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA.  Respondent is David Hill / Texas Best Flooring Company (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <budweiserbeer.mobi>, <budlightbeer.mobi>, <budlighthotel.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2011; the National Arbitration Forum received payment on November 9, 2011.

 

On November 9, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <budweiserbeer.mobi>, <budlightbeer.mobi>, <budlighthotel.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  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 November 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@budweiserbeer.mobi, postmaster@budlightbeer.mobi, postmaster@budlighthotel.mobi, postmaster@budweiserhotel.com, and postmaster@budweiserhotel.mobi.  Also on November 14, 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 December 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <budweiserbeer.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi> domain names are confusingly similar to Complainant’s BUDWEISER mark.

 

Respondent’s <budlightbeer.mobi> and <budlighthotel.mobi> domain names are confusingly similar to Complainant’s BUD LIGHT mark.

 

2.    Respondent does not have any rights or legitimate interests in the <budweiserbeer.mobi>, <budlightbeer.mobi>, <budlighthotel.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi> domain names.

 

3.    Respondent registered and used the <budweiserbeer.mobi>, <budlightbeer.mobi>, <budlighthotel.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Anheuser-Busch, LLC, owns trademark registrations with the United States Patent and Trademark (“USPTO”) for its BUDWEISER (e.g., Reg. No. 922,481 registered October 19, 1971) and BUD LIGHT marks (e.g., Reg. No. 1,261,873 registered December 20, 1983) in connection with the sale of alcoholic beverages and related products and services.

 

Respondent, David Hill / Texas Best Flooring Company, registered the  <budweiserbeer.mobi>, <budlightbeer.mobi>, <budlighthotel.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi> domain names on February 12, 2011.  The <budweiserbeer.mobi> domain name resolves to a website allowing Internet users to purchase domain names.  The <budlightbeer.mobi>, <budlighthotel.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi> domain names resolve to parked websites that contain hyperlinks resolving to unrelated third-party travel companies.  The <budlightbeer.mobi>, <budlighthotel.mobi>, and <budweiserhotel.mobi> domain names also contain offers to sell the disputed domain names.

 

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

 

The Panel finds that Complainant has established rights in the BUDWEISER and BUD LIGHT marks by virtue of its USPTO trademark registrations under Policy ¶ 4(a)(i).  Prior panels have held that USPTO trademark registrations are sufficient to establish rights in a mark for the purposes of the Policy.  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 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). 

 

Respondent’s <budweiserbeer.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi> domain names are confusingly similar to Complainant’s BUDWEISER mark.  The only differences between the disputed domain names and Complainant’s mark are the additions of the descriptive term “beer” or the generic term “hotel” and the generic top-level domain (“gTLD”) “.mobi” or “.com,” insufficient to distinguish the disputed domain names.  See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); 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 finds that Respondent’s <budweiserbeer.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi> domain names are confusingly similar to Complainant’s BUDWEISER mark under Policy ¶ 4(a)(i).

 

Respondent’s <budlightbeer.mobi> and <budlighthotel.mobi> domain names are confusingly similar to Complainant’s BUD LIGHT mark.  These disputed domain names also contain Complainant’s entire mark without the space, the gTLD “.mobi” and either the descriptive term “beer” or the generic term “hotel.”   As noted above, prior panels have determined that the addition of a generic or descriptive term and a gTLD are not sufficient to adequately distinguish a disputed domain name from a mark.  Further, prior panels have also found that the removal of a space from a mark is insufficient to adequately distinguish a disputed domain name.  See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).  Therefore, the Panel determines that Respondent’s <budlightbeer.mobi> and <budlighthotel.mobi> domain names are confusingly similar to Complainant’s BUD LIGHT mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <budweiserbeer.mobi>, <budlightbeer.mobi>, <budlighthotel.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi> domain names.  The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  The Panel finds Complainant made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <budweiserbeer.mobi>, <budlightbeer.mobi>, <budlighthotel.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi> domain names.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also 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).

 

Complainant argues that Respondent is not commonly known by the <budweiserbeer.mobi>, <budlightbeer.mobi>, <budlighthotel.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi> domain names.  Complainant asserts that Respondent does not own any trademark or other intellectual property rights for the disputed domain names.  The WHOIS information identifies “David Hill / Texas Best Flooring Company” as the registrant of the disputed domain names.  Past panels have focused on the WHOIS information to determine whether or not a respondent is commonly known by a disputed domain name.  See 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); see also 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).  Thus, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent lacks rights and legitimate rights in the <budweiserbeer.mobi> domain name.  Complainant presents evidence that the disputed domain name resolves to a website that sells domain names, which is unrelated to Complainant’s business.  Previous panels have concluded that such a use 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 Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).  The Panel finds accordingly.

 

Complainant alleges that Respondent also lacks rights and legitimate interests in the <budlightbeer.mobi>, <budlighthotel.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi> domain names.  Complainant provides screen shots of the resolving websites that show that the disputed domain names resolve to websites hosting unrelated hyperlinks to third-party travel websites.  Prior panels found in similar situations that the respondent lacked rights and legitimate interests in the domain name.  See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).  Therefore, the Panel finds that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names.

 

Complainant claims that the <budlightbeer.mobi>, <budlighthotel.mobi>, and <budweiserhotel.mobi> domain names resolve to websites that also contain an offer to sell the disputed domain names.  Past panels have determined that a general offer to sell the disputed domain name is evidence that the respondent lacks rights and legitimate interests in the disputed domain name.  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).  Consequently, the Panel determines that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s offer to sell the <budlightbeer.mobi>, <budlighthotel.mobi>, and <budweiserhotel.mobi> domain names is evidence that Respondent registered and uses the domain names in bad faith.  Previous panels concluded that the respondent’s general offer to sell a domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(i).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)  (finding that the attempted sale of a domain name is evidence of bad faith); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).  The Panel finds accordingly. 

 

Respondent’s registration of the five disputed domain names is evidence of Respondent’s pattern of bad faith registration and use.  Previous panels have found that the registration and use of multiple domain names containing a complainant’s mark evidence a respondent’s attempt to prevent the complainant from representing its mark in a domain name.  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).  Thus, the Panel concludes that Respondent registered and uses the <budweiserbeer.mobi>, <budlightbeer.mobi>, <budlighthotel.mobi>, <budweiserhotel.com>, <budweiserhotel.mobi> domain names in bad faith pursuant to Policy ¶ 4(b)(iii).

 

Respondent is intentionally attempting to attract Complainant’s customers to Respondent’s website for commercial gain by creating a likelihood of confusion as to Complainant’s affiliation with the <budweiserbeer.mobi>, <budlightbeer.mobi>, <budlighthotel.mobi>, <budweiserhotel.com>, <budweiserhotel.mobi> domain names.  Prior panels held that a commercial, unrelated use, such as the sale of domain names, or the providing of unrelated hyperlinks are both evidence of bad faith registration and use under 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).  The Panel finds accordingly.

 

Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the BUDWEISER and BUD LIGHT marks.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, previous panels nonetheless found that a respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if the respondent is found to have had actual notice of the complainant’s trademark rights.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); 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 in this case finds that Respondent had actual notice of Complainant’s rights in the mark and, therefore, holds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).

 

The Panel finds 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 <budweiserbeer.mobi>, <budlightbeer.mobi>, <budlighthotel.mobi>, <budweiserhotel.com>, and <budweiserhotel.mobi> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  December 21, 2011

 

 

 

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