Anheuser-Busch, LLC v. Troy Eppinger
Claim Number: FA1202001429492
Complainant is Anheuser-Busch, LLC (“Complainant”), represented by Alexander Garcia of Holland & Hart LLP, Colorado, USA. Respondent is Troy Eppinger (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <budweiserplatinum.com>, registered with GoDaddy.com, LLC.
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 February 14, 2012; the National Arbitration Forum received payment on February 14, 2012.
On February 16, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <budweiserplatinum.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2012 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@budweiserplatinum.com. Also on February 24, 2012, 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 response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 27, 2012, 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
1. Complainant is an American brewer that sells its products in more than 80 countries.
2. Complainant has used the BUDWEISER mark in connection with its products and services, particularly beer, since 1876.
3. Complainant has numerous trademark registrations for the BUDWEISER mark, including the following with the United States Patent and Trademark Office (“USPTO”), the Canadian Intellectual Property Office (“CIPO”), and the European Union Office for Harmonization in the Internal Market (“OHIM”):
USPTO Reg. No. 64,125 registered July 23, 1907;
USPTO Reg. No. 922,481 registered Oct. 19, 1971;
USPTO Reg. No. 952,277 registered Jan. 30, 1973;
CIPO Reg. No. 429,786 registered July 1, 1994;
CIPO Reg. No. 37/9010 registered Aug. 7, 1903; &
OHIM Reg. No. 2,853,562 registered Oct. 22, 2003.
4. Complainant has filed a trademark application with the USPTO for the BUD LIGHT PLATINUM mark (App. No. 85/456,770 filed Oct. 26, 2011).
5. Respondent registered the <budweiserplatinum.com> domain name on November 8, 2011.
6. The WHOIS information lists the registrant of the disputed domain name as “Troy Eppinger.”
7. The disputed domain name is confusingly similar to Complainant’s BUDWEISER mark.
8. The resolving website advertises the disputed domain name as for sale with a prominent “for sale” sign.
9. The resolving website displays no content other than the “for sale” sign and the statement “GOOD DAMB [sic] BEER Domain for sale.”
10. Respondent opportunistically registered the disputed domain name less than two weeks after Complainant filed its trademark application to register the BUD LIGHT PLATINUM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is an American brewer that sells its products in more than 80 countries. Complainant has used the BUDWEISER mark in connection with its products and services, particularly beer, since 1876. Complainant has numerous trademark registrations for the BUDWEISER mark. Complainant has filed a trademark application with the USPTO for the BUD LIGHT PLATINUM mark (App. No. 85/456,770 filed Oct. 26, 2011).
Respondent registered the <budweiserplatinum.com> domain name on November 8, 2011. The resolving website advertises the disputed domain name as for sale with a prominent “for sale” sign.
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."
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.
(4) 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.”).
Complainant owns various trademark registrations for the BUDWEISER mark with the USPTO, CIPO and OHIM, among other trademark authorities (e.g. USPTO Reg. No. 64,125, registered July 23, 1907). Based on these longstanding and extensive trademark registrations around the world, the Panel finds that Complainant has rights in the BUDWEISER mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also LFP IP, LLC v. Gallery Traffic Serv., FA 1128245 (Nat. Arb. Forum Feb. 25, 2008) (“Complainant’s registrations of its mark with [the USPTO, CIPO and OHIM] are sufficient to establish Complainant’s rights in the HUSTLER mark pursuant to Policy ¶ 4(a)(i).”)
Complainant asserts that Respondent’s <budweiserplatinum.com> domain name incorporates Complainant’s famous BUDWEISER mark with the addition of the generic top-level domain (“gTLD”) “.com.” Although Complainant makes confusingly similar arguments in regard to the BUD LIGHT PLATINUM mark, the appropriate comparison is to the BUDWEISER mark as the BUD LIGHT PLATINUM mark is not yet registered. Accordingly, the Panel notes that the <budweiserplatinum.com> domain name adds the term “platinum” to Complainant’s BUDWEISER mark. In light of previous UDRP decisions holding that neither an added gTLD nor an added descriptive term distinguishes a disputed domain name, the Panel finds that Respondent’s <budweiserplatinum.com> domain name is confusingly similar to Complainant’s BUDWEISER mark under Policy ¶ 4(a)(i). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); 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).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not, and never has been, associated or affiliated with Complainant and Complainant has not authorized Respondent to use Complainant’s BUDWEISER mark in any way. Complainant alleges that Respondent, as identified in the WHOIS information, is “Troy Eppinger,” and argues that Respondent is therefore not commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant alleges that Respondent makes no use of the disputed domain name other than to advertise the disputed domain name for sale and display a message stating, “GOOD DAMB [sic] BEER Domain for sale.” Complainant argues that Respondent clearly registered the disputed domain name with the intent to sell the disputed domain name and asserts that such an action does not create rights and legitimate interests in the disputed domain name. The Panel finds that Respondent thus is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Complainant also argues that, because the resolving website only advertises the disputed domain name for sale and displays a short message, Respondent is only “passively holding” the disputed domain name, which is strong evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. In Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000), and Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005), prior panels held that failure to actively use a disputed domain name did not establish rights or legitimate interests or satisfy Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). The Panel finds that Respondent’s inactive use indicates a lack of rights and legitimate interests pursuant to Policy ¶ 4(c)(i) and ¶ 4(c)(iii).
Complainant contends that Respondent registered the disputed domain name with the intent to profit from a sale of the disputed domain name, as evidenced by the “for sale” sign displayed on the resolving website, as well as the statement “Domain for Sale.” The Panel concludes that Respondent’s willingness and intention to sell the disputed domain name indicates bad faith registration and use pursuant to Policy ¶ 4(b)(i). See 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).”); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
Complainant also alleges that Respondent opportunistically registered the <budweiserplatinum.com> domain name in bad faith because it registered the disputed domain name less than two weeks after Complainant filed its application to register the BUD LIGHT PLATINUM mark with the USPTO. The Panel finds that the short time between the trademark application and the registration of the disputed domain name indicates opportunistic bad faith registration according to Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”).
Complainant asserts that, at the time the disputed domain name was registered on or about November 8, 2011, Respondent had actual knowledge of Complainant’s rights in the BUDWEISER mark as evidenced by Complainant’s USPTO trademark registrations and Respondent’s reference to “GOOD DAMB [sic] BEER” on the resolving website. The Panel concludes that any arguments of bad faith based on constructive notice are irrelevant as UDRP precedent has declined to find bad faith as a result of constructive knowledge. See The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”). However, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm’cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <budweiserplatinum.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 10, 2012
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