Anheuser - Busch,
Incorporated v. Holix Inc.
Claim Number: FA0705000979961
PARTIES
Complainant is Anheuser - Busch, Incorporated (“Complainant”), represented by Andrea
K. Cannon, of Anheuser - Busch Companies, Inc., One
Busch Place, St. Louis, MO 63118.
Respondent is Holix Inc. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <boobweiser.com> and <buttlight.com>,
registered with Wild West Domains, 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.
Debrett Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 8, 2007; the
National Arbitration Forum received a hard copy of the Complaint on May 10, 2007.
On May 8, 2007, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <boobweiser.com> and <buttlight.com>
domain names are registered with Wild
West Domains, Inc. and that Respondent is the current registrant of the
names. Wild
West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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”).
On May 10, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 30, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@boobweiser.com and postmaster@buttlight.com by
e-mail.
A Response was received on May 30, 2007. The Response was deemed deficient under ICANN
Rule 5 as the hard copy was received late.
This is considered in detail below.
On June 7, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Debrett Lyons as Panelist.
Procedural
Issue
The Panel notes
that although Respondent’s electronic submission was received in a timely
manner, Respondent failed to submit a timely hard copy as required by ICANN
Rule 5. For that reason the Forum deemed
the Response as deficient and it is now within the Panel’s discretion as to how
the Response should be treated.
As a general
proposition, there is much to commend the principle of having claims decided on the merits and
not by default (see Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum
July 2, 2002)). The Panel can not perceive
in this case any way in which Complainant has been prejudiced by the late
submission of the hard copy of the Response. The Panel notes that the Response has no
attachments or physical exhibits and so the electronic copy of the Response,
received in time, and the hard copy received out of time, are identical. Together, these would be good reasons to admit
the Response onto the record.
The Panel has read
the Response. There is a cover note to
the Response apologizing for the late filing, but not offering any explanation.
Generally, the Panel is of the opinion
that the Response does not offer substantial assistance on the issues to be
determined (see Bank of Am.
Corp. v. NW Free Cmty. Access,
FA 180704 (Nat. Arb. Forum Sept. 30, 2003)). Balanced against the interest that
cases be decided on the merits is the fact that the UDRP attempts to provide a
quick and efficient mechanism for dealing with abusive domain name
registrations. That purpose could be
easily frustrated by the allowance of routine exceptions to the time restraints
set by the Rules.
On balance, the
Panel decides that the Response should in this case not be allowed onto the
record and that the matter should be determined by reference to the Policy and
the Complaint, bearing in mind that it is Complainant that bears the onus of
proving the three elements under paragraph 4(a) of the Policy.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a leading American brewer with
a market in 80 countries and a turnover of more than $15 million in 2005. It claims that the world’s largest selling
beers are its BUDWEISER and BUD LIGHT branded beers.
Complainant alleges that the disputed domain
names are confusingly similar to marks in which it has rights (Policy ¶ 4(a)(i));
that Respondent has no rights or legitimate interests in the domain names (Policy
¶ 4(a)(ii)); and that the domain names were registered and are being used in
bad faith (Policy ¶ 4(a)(iii)).
In particular, Complainant asserts rights in the BUDWEISER and BUD
LIGHT marks through ownership of trademark registrations with the United States
Patent and Trademark Office for those marks (Reg. No. 64,125 issued July 23, 1907
and Reg. No. 1,261,873 issued December 20, 1983, respectively). It alleges that the disputed domain name <boobweiser.com> is confusingly similar to the trademark BUDWEISER and
that the disputed domain name <buttlight.com>
is confusingly similar to the trademark BUD LIGHT, “because they are similar in
sound and appearance.”
Complainant submits that Respondent has no legitimate interests in the
domain names because it is not known by those names, had actual or constructive
knowledge of Complainant’s trademarks, does not operate a bona fide business under the domain names and instead uses the
domain names to divert Internet users to “products or services related to or in
direct competition with Complainant … including beer and beer merchandise.”
Complainant submits that the domain names “mimic and/or incorporate
Complainant’s federally registered marks” and that Respondent “is a known
cybersquatter, linked to over 177 other domain names, most of which are
potentially infringing of various famous brands or contain sexually explicit
phrases.” For these principal reasons
Complainant alleges that the domain names were registered in bad faith and are
used in bad faith.
B. Respondent
The Response has not been admitted to the record.
FINDINGS
A number of preliminary observations can be
made:
a)
Complainant’s
business is immense and its trademarks BUDWEISER and BUD LIGHT enjoy household
recognition, certainly in the
b)
Respondent’s
business is located in the
c)
There is
nothing to suggest that US Trademark Reg. No. 64,125 issued July 23, 1907 and
Reg. No. 1,261,873 issued December 20, 1983, are other than valid and
subsisting.
d)
The
disputed domain names do not incorporate Complainant’s trademarks; whether they are confusingly similar is
considered later.
e)
Complainant’s
evidence does not support its claim that the domain names divert Internet users
to products or services in direct competition with Complainant including beer
and beer merchandise.
f)
Complainant’s
evidence does not support either of its claims that Respondent is a cybersquatter,
or that the other domain names owned by it potentially infringe various famous
brands.
g)
Complainant’s
evidence does suggest that Respondent is in the business of dealing in largely
generic domain names and that a substantial percentage of those names have a
sexual reference or innuendo.
DISCUSSION
Paragraph 15(a) of the ICANN 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.”
As noted previously, paragraph 4(a) of the Policy requires that
Complainant must prove each of the following three elements to obtain an order
that the domain names should be transferred:
(1) the domain names registered by Respondent are
identical or confusingly similar to a trademarks in which Complainant has
rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain names; and
(3) the domain names have been registered and are
being used in bad faith.
The Panel finds that the trademark
registrations sufficiently establish Complainant’s rights in the BUDWEISER and
BUD LIGHT marks for the purposes of the Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
The Panel accepts the consensus view of
former panels that for the purposes of testing confusing similarity, the generic
top-level domain (“gTLD”), “.com,” is to be ignored (see, for example, Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27,
2003) (“The addition of a top-level domain is irrelevant when establishing
whether or not a mark is identical or confusingly similar, because top-level
domains are a required element of every domain name”).
The two questions which remain are whether “boobweiser” is confusingly similar to the BUDWEISER mark and whether
“buttlight” is confusingly similar to the BUD LIGHT mark.
On that question, Complainant has two, unelaborated, submissions. It is claimed that “boobweiser” and “buttlight” are similar in sound and appearance
to their counterpart trademarks, and that they mimic the trademarks.
The Panel does not accept the proposition that the respective names
have a confusingly similar appearance - quite the contrary.
The Panel does not accept the proposition that “boobweiser” and
BUDWEISER are confusingly similar in sound.
On the other hand, the Panel does accept that “buttlight” and BUD LIGHT are confusingly similar in sound.
Those findings however are not
dispositive of the matter because the question of confusing similarity is a
larger enquiry. The submission that the
domain names mimic the trademarks is not without significance. The Oxford English Dictionary defines the
word “mimic” as “imitate in
order to entertain or ridicule.”
Complainant placed store in the decision of Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, D2001-1216 (WIPO Mar. 25, 2002), where it was said that “as an initial matter, the Panel concludes that Barnes & Noble has established rights in its BARNES & NOBLE marks through its registrations in the U.S. and in other countries. The Panel further finds that the domain name <bunsandnoble.com> is confusingly similar to the BARNES & NOBLE marks in so far as the domain name is similar in sound to Complainant's marks.”
That was the extent to which the panelist in that case examined the question of confusing similarity of a domain name which mimicked or parodied a well-known trademark. The Panel here finds the decision to be of limited assistance.
A more helpful
decision is A & F Trademark, Inc. & Abercrombie & Fitch Stores,
Inc. v. Jorgensen, D2001-0900 (WIPO Sept. 19, 2001), involving the domain name
<abercrombieandfilth> where:
Respondent advances an argument analogous to
that often heard in the so-called "sucks" cases: namely, that the
addition of the word "filth" dispels any confusing similarity. Some
prior Panels have found that a domain name combining another’s mark with the
word "sucks" was confusingly similar to a complainant’s mark, while
other Panels have found such a domain name not confusingly similar to the mark.
See, e.g., Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, WIPO Case
No. D2000-1104 (wallmartcanadasucks.com is not confusingly similar); Lockheed
Martin Corp. v. Parisi, WIPO Case No. D2000-1015 (lockheedmartinsucks.com
is not confusingly similar); Direct Line Group Ltd. v. Purge I.T., WIPO
Case No. D2000-0583 (directlinesucks.com is confusingly similar); ADT Servs.
AG v. ADTSucks.com, WIPO Case No. D2001-0213 (adtsucks.com is confusingly
similar).
Unlike a "sucks" domain name,
<abercrombieandfilth.com> differs from Complainant’s ABERCROMBIE &
FITCH mark by only two letters, the replacement of "tc" with
"lt". The use of "and" instead of "&" is
inconsequential. Not only does the domain name appear similar to Complainants’
mark, it differs in sound only in the last syllable. See 3 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 23:21 (a
determination of confusing similarity requires consideration not only of
meaning, but also of overall impression and pronunciation). For these reasons,
this Panel finds that the domain name is confusingly similar to Complainants’
marks.
That is not the case before this Panel. In both instances, the borrowed elements of
the trademarks, “-weiser” and “-light”, are suffixed to the words, “boob” and
“butt”, with their own overtly obvious meanings. The Panel recognizes that any assessment of
similarity involves questions of degree and is of the opinion that the visual
and aural differences between “buttlight” and BUD LIGHT are greater than those
between either of “bunsandnoble” / BARNES & NOBLE, or “abercrombieandfilth”
/ ABERCROMBIE & FITCH.
To answer the question of whether there is confusing similarity it is helpful to look at a
lengthy passage from Wal-Mart Stores, Inc. v. MacLeod, D2000-0662
(WIPO Sept. 19, 2000), which represents
a high-tide mark in the “sucks” or pejorative term debate:
The
Respondent focuses his response on the first factor of the ICANN policy,
arguing that wal-martsucks.com is neither identical to nor confusingly similar
to "Wal-Mart." He relies on Bally Total Fitness Holding Corp. v.
Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998), which concluded that the
addition of the word "sucks" prevents any reasonably prudent user
from confusing a "sucks" website with an authorized website.
…
The
difficult question in this case is whether Complainant has shown that
wal-martsucks.com "is identical or confusingly similar to"
Complainant’s mark under Paragraph 4(a)(1) of the Policy. In prior cases, this
Panel has held that a domain name that incorporates a mark but also adds
another word is not "identical" to the mark under the Policy. See,
e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises,
Inc., No. D2000-0047 (WIPO, Mar. 24, 2000). This Panel has also held that
incorporating a distinctive mark in its entirety creates sufficient similarity
between the mark and the domain name to render it confusingly similar.
Following
this reasoning, Complainant contends that consumers are likely to believe that
any domain name incorporating the sequence "Wal-Mart" or a close
approximation thereof is associated with Complainant. In the ordinary case,
when a generic term is appended to the trademark (such as the domain name
walmartstores.com), this would be so. But the fame of a mark does not always
mean that consumers will associate all use of the mark with the mark’s owner.
No reasonable speaker of modern English would find it likely that Wal-Mart
would identify itself using wal-martsucks.com. Complainant has no evidence of
any potential confusion. The Panel specifically rejects Complainant’s argument
that consumers are likely to be confused as to the sponsorship or association
of a domain name that combines a famous mark with a term casting opprobrium on
the mark.
Nevertheless,
the Panel understands the phrase "identical or confusingly similar"
to be greater than the sum of its parts. The Policy was adopted to prevent the
extortionate behavior commonly known as "cybersquatting," in which
parties registered domain names in which major trademark owners had a
particular interest in order to extort money from those trademark owners. This
describes Respondent’s behavior. Thus, the Panel concludes that a domain name
is "identical or confusingly similar" to a trademark for purposes of
the Policy when the domain name includes the trademark, or a confusingly
similar approximation, regardless of the other terms in the domain name. In
other words, the issue under the first factor is not whether the domain name
causes confusion as to source (a factor more appropriately considered in
connection with the legitimacy of interest and bad faith factors), but instead
whether the mark and domain name, when directly compared, have confusing
similarity.
This Panel considers that the Wal-Mart
Stores, Inc. v. MacLeod case is characterized by facts not present in this
case. There is no evidence here that
Respondent is a cybersquatter. There is
no evidence that it tried to use the domain names to obtain money from Complainant.
The
disputed domain names do not include (i.e. wholly incorporate) the trademarks, and
whether or not there is “a confusingly similar approximation” is the essence of
the matter now under consideration.
The Wal-Mart Stores “test” is not whether the domain name causes
confusion as to source (which argument could not conceivably be sustained in
this case), but whether the mark and domain name, when directly compared, have
confusing similarity. That inquiry must
take account not just of visual and aural similarities, but also the extent to
which the domain name has used the trademark, the nature of the added matter,
its relative prominence, and the overall impression of the two signs. Taking account of all those factors, the
Panel holds that neither domain name is confusingly similar to either
trademark. Accordingly, Complainant has
failed to show this first element of the Policy.
In view of the fact that the Policy requires Complainant to prove every
element of the Policy at 4(a)(i-iii), the Panel finds it unnecessary to
consider the arguments on "legitimate rights and interests" and
"bad faith" (the Policy 4(a)(ii) and (iii)) in order to reach its decision
(see Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat.
Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all
three elements under the Policy, Complainant’s failure to prove one of the
elements makes further inquiry into the remaining element unnecessary); see
also 01059 GmbH v. VARTEX
Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004), (holding
that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has
rights in a mark, the panel need not consider whether the respondent has rights
or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or
whether it registered and is using the disputed domain name in bad faith under
Policy ¶ 4(a)(iii)).
No decision to be taken
No decision to be taken
DECISION
Having failed to establish at least one of the elements required under
the ICANN Policy, the Panel concludes that relief shall be DENIED.
Debrett Lyons, Panelist
Dated: June 19, 2007
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