Bush Brothers & Company v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2004001894149
Complainant is Bush Brothers & Company (“Complainant”), represented by Bryce J. Maynard of Bassam N. Ibrahim, Virginia, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bushsbeans.com>, registered with Media Elite Holdings Limited.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2020; the Forum received payment on April 29, 2020.
On April 30, 2020, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <bushsbeans.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 May 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2020 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@bushsbeans.com.
Also on May 4, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 28, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant relies on its rights in the BUSH’S mark acquired through its ownership of the portfolio of registered trademarks and the goodwill that it has acquired in the mark through its extensive use.
Complainant submits that the disputed domain name <bushsbeans.com> is confusingly similar to its BUSH’S mark; that it contains Complainant’s mark in its entirety; and that the lack of an apostrophe between the letters “h” and “s” has no consequence as domain names cannot contain apostrophes.
Furthermore, Complainant argues that the additional term “beans” in the registered domain name is generic or highly descriptive in connection with beans, and therefore does not distinguish Respondent’s domain name from Complainant’s marks. If anything, the inclusion of the descriptive or generic term referring to Complainant’s goods increases the likelihood of confusion. See, e.g., Magnum Piering, Inc. v. Mudjackers & Wilson, D20001525 (WIPO January 29, 2001) (“In fact, the additions increase the likelihood of confusion, as Complainant’s mark is in the field of piering services and Complainant has also used "Magnum Piering" as a common-law mark.”).
Complainant adds that the generic TLD <.com> extension is irrelevant under the Policy because it does not distinguish Respondent’s domain name from Complainant’s mark and is without legal significance. See Busy Body, Inc. v. Fitness Outlet Inc., D20000127 (WIPO April 22, 2000) (finding that the addition of a top-level domain is without legal significance).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name <bushsbeans.com>, arguing there is nothing in the WHOIS information for that Respondent (as an individual, business, or other organization) is known by or has ever been known by this name.
Moreover, Complainant has not authorized or licensed Respondent in any way to use or exploit Complainant’s BUSH’S trademark, or to otherwise associate itself with Complainant. Therefore, Respondent does not have any legitimate trademark or service mark rights in the domain name. See Navistar International Corporation v. N Rahahmany, No. FA 1505001620789 (Forum June 8, 2015) (finding that respondent did not have any rights in the NAVISTAR mark where the complainant had never authorized respondent to use the mark in a domain name).
Complainant further alleges that Respondent is not using the <bushsbeans.com> domain name in connection with a bona fide offering of goods or services. A screenshot of the website to which the disputed domain name resolves which is attached as an exhibit to the Complaint shows that Respondent, does not even purport to offer any goods or services; instead, it merely hosts a collection of pay-per-click advertising links with titles related to Complainant’s canned bean products, such as “Soup Recipes”, “Bean Recipes”, and “Healthy Cooking”.
Arguing that these links, when accessed by a consumer through Respondent’s web site, presumably generate financial gain for Respondent, Complainant submits that such use is obviously not a bona fide offering of goods or services, nor does it constitute a legitimate non-commercial or fair use of the domain name. See Dolby Laboratories Licensing Corp. v. Jungyuhkook, No. FA2002001884239 (Forum Mar. 25, 2020) (“The Respondent has used the site attached to the domain name for links some of which offer competing services not connected to the Complainant. It does not make clear that there is no commercial connection to the Complainant. The panel finds that this use is confusing. As such, it cannot amount to the bona fide offering of goods or services.”).
Complainant further alleges that Respondent has registered the disputed domain name in bad faith and for unfair commercial gain, since Respondent is using the web site to divert consumers to the web sites associated with the pay-per-click advertisements on its site, and charging the owners of these sites a fee every time a user clicks on one of the advertisements. See Google, Inc. v James Lucas et al., No. FA 1605757 (Forum April 7, 2015 (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith”).
Complainant asserts that it maintains its own official web site to promote the products sold under Complainant’s BUSH’S mark at <bushbeans.com> and argues that its <bushbeans.com> domain name is virtually identical to the disputed <bushsbeans.com> domain name. Complainant argues that Respondent merely added an “s” after “bush” with the intention of confusing and deceiving consumers who were looking for Complainant’s official site.
Complainant argues that Internet users searching for Complainant’s official web site may inadvertently land at Respondent’s web site, which contains links to various other companies offering products and services related to canned beans. A user who is unaware of his or her mistake may mistakenly believe that these links are associated with Complainant, and even a user who realizes his or her mistake may click on one of these links rather than going to Complainant’s official web site.
Complainant concludes by arguing that such intentional diversion of users seeking Complainant’s official web site is sufficient by itself to demonstrate Respondent's bad faith registration and use. See Chevron Intellectual Property LLC v. Castor Consultancy/Ben Castor, No. FA1009001346590 (NAF Oct. 26, 1010) ("It may be inferred that such usage of a confusingly similar domain name [to direct consumers to Complainant's competitors] results in a loss of and disruption to Complainant’s business and online presence. Therefore, the Panel finds that Respondent’s previous use of the disputed domain name is evidence of bad faith registration and use.").
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a leading producer of canned baked beans. Complainant also produces and sells many other varieties of canned beans as well as other canned vegetables and related food products under the BUSH’S trademark.
Complainant is the owner of numerous registrations for the trademark BUSH’S and the element BUSH’S in combination with other terms such as other terms in these marks, such as BEST, COUNTRY RECIPE, and BEANS including:
· United States registered trademark BUSH’S registration number 1,113,725, registered on February 20, 1970 on the Principal Register for goods in international classes 29 and 30;
· United States registered trademark BUSH’S BEST (design) registration number 520,028, registered on January 17, 1950 on the Principal Register for goods in international class 29;
· United States registered trademark BUSH’S BEST COUNTRY RECIPE (design), registration number 1,616,897, registered on October 9, 1990 on the Principal Register for goods in international class 29;
· United States registered trademark BUSH’S BEST registration number 3,560,408, registered on January 13, 2009 for goods in international class 29.
The disputed domain name was registered on 2005 December 8, 2005 and resolves to a website that offers pay-per-click advertisements.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WHOIS and the information provided by the Registrar in response to the FORUM’s request for verification of the registration details of the disputed domain name.
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced clear and convincing evidence that it has rights in the trademark BUSH’S acquired through its abovementioned trademark registrations and the goodwill in the mark that it has accrued by its extensive use of the mark on its food products.
The disputed domain name <bushsbeans.com> is composed of the Complainant’s mark in its entirety except for the omission of the apostrophe between the letters “h” and “s” and the descriptive term “beans” in combination with the generic Top-Level Domain extension (gTLD) <.com>.
Complainant’s mark is the initial and dominant element of the disputed domain name. The word “beans” is descriptive and generic and the <.com> domain extension would be regarded as a technical necessity for a domain name in the context of this case.
This Panel agrees with Complainant and finds that the disputed domain name is confusingly similar to its BUSH’S mark. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing:
· that Respondent is not commonly known by the disputed domain name;
· that Complainant has never licensed or authorized Respondent or use its BUSH’S mark as a domain name or otherwise;
· that Respondent is using the disputed domain name that is confusingly similar to its trademark and the address of its official website to lure Internet traffic to Respondent’s website that only offers pay-per-click links to Internet users.
· that such use is not a bond fide, commercial or legitimate use of the disputed domain name.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Because the disputed domain name is composed of a combination of Complainant’s trademark and the product for which Complainant is known viz. “beans”, in the absence of any contrary explanation this Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in bad faith because of its reference to Complainant and its products and to take predatory advantage of Complainant’s mark and the reputation of its products.
The record shows that Respondent is using the disputed domain name as the address of a website that only contains links to other websites. On the balance of probabilities Respondent is profiting from pay-per-click revenue from these links.
In these circumstances this Panel finds that the disputed domain name is being used in bad faith by Respondent who is intentionally attempting to attract, for commercial gain, Internet users to its web site by creating an initial interest confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of Respondent’s web site and is therefore intending to intentionally divert Internet traffic intended for Complainant’s website.
As this Panel finds that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of 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 <bushsbeans.com> domain name be TRANSFERRED from Respondent to Complainant.
________________________________
James Bridgeman SC
Panelist
Dated: May 28, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page