Anheuser-Busch, Incorporated v. Online Billing Dept c/o Online Hosts
Claim Number: FA0604000677918
Complainant is Anheuser-Busch, Incorporated (“Complainant”), represented by Steven M. Weinberg, of Greenberg Traurig, LLP, 2450 Colorado Avenue, Santa Monica, CA 90404. Respondent is Online Billing Dept c/o Online Hosts (“Respondent”), 327 E. 12th St., New York, NY 10003.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hereistobeer.com>, registered with Moniker Online Services, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 17, 2006.
On April 21, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <hereistobeer.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 April 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 16, 2006 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@hereistobeer.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May19, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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." 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 <hereistobeer.com> domain name is confusingly similar to Complainant’s HERE’S TO BEER mark.
2. Respondent does not have any rights or legitimate interests in the <hereistobeer.com> domain name.
3. Respondent registered and used the <hereistobeer.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Anheuser-Busch, Incorporated, is a well-known producer of beer in the United States. In early 2006, Complainant initiated a new educational campaign titled “Here’s To Beer,” celebrating the global popularity of beer. As part of the educational campaign, Complainant registered the <herestobeer.com> domain name, which resolves to a website providing information about social and educational topics regarding beer. Complainant filed trademark applications with the United States Patent and Trademark Office (“USPTO”) for the HERE’S TO BEER mark on October 20, 2005. (App. Ser. Nos. 78736949 and 78736943).
Respondent registered the <hereistobeer.com> domain name on February 3, 2006. Respondent’s disputed domain name resolves to a website that offers information on beer and resembles Complainant’s website located at the <herestobeer.com> domain name, but also features commercial advertisements.
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.
Ownership of a
trademark registration by Complainant is not required for Complainant to
demonstrate that it has rights in the HERE’S TO BEER mark pursuant to Policy ¶ 4(a)(i). See
Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18,
2001) (“The Policy does not require that a trademark be registered by a
governmental authority for such rights to exist.”); see also SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist).
In the absence of any Response or evidence from Respondent to the contrary, the Panel finds that Complainant has established common law rights in the HERE’S TO BEER mark through continuous use of the mark in connection with its educational advertisement campaign and website since January 2006. Complainant’s campaign featuring the HERE’S TO BEER mark was well-publicized in the popular and trade media prior to Respondent’s registration of the <hereistobeer.com> domain name. Thus, the Panel finds that Complainant’s HERE’S TO BEER mark has acquired secondary meaning sufficient to establish common law rights in the mark, despite Complainant’s inability to demonstrate long use of the mark prior to Respondent’s registration of the disputed domain name. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
The Panel finds that Respondent’s <hereistobeer.com> domain name is confusingly similar to Complainant’s HERE’S TO BEER mark. Respondent’s disputed domain name consists of Complainant’s mark in its entirety, with the omission of spaces and the apostrophe in Complainant’s mark, and the addition of the letter “i” and the generic top-level domain “.com.” In essence, Respondent’s <hereistobeer.com> domain name modifies Complainant’s HERE’S TO BEER mark by expanding the contraction “Here’s” in Complainant’s mark to the words “Here is.” Prior panels have found that similar alterations to a complainant’s mark do not negate the confusing similarity between a disputed domain name and a complainant’s mark. In Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003), the panel stated, “Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.” Moreover, in Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), the panel found that the respondent did not create a distinct mark by misspelling words and adding letters to words in the complainant’s mark, and therefore the respondent’s disputed domain name was confusingly similar to the complainant’s marks. See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must initially demonstrate that Respondent does not have rights or legitimate interests with respect to the disputed domain name. Nevertheless, once Complainant demonstrates a prima facie case, the burden of proof shifts to Respondent to prove that it has rights or legitimate interests in connection with the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The evidence on record suggests that Respondent’s <hereistobeer.com> domain name resolves to a website that imitates Complainant’s educational website located at the <herestobeer.com> domain name, while also featuring commercial advertisements. Consequently, the Panel finds that Respondent is using the disputed domain name with the intent to divert Internet users to Respondent’s website, which does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
Furthermore, the Panel finds that Respondent is not commonly known by the <hereistobeer.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant asserts that neither Complainant nor any of Complainant’s affiliates involved in the “Here’s To Beer” campaign authorized Respondent to use Complainant’s HERE’S TO BEER mark. Moreover, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <hereistobeer.com> domain name in accord with Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <hereistobeer.com> domain name resolves to a website that resembles Complainant’s website located at the <herestobeer.com> domain name, offering information on beer and beer-related topics. In light of the confusing similarity between Respondent’s disputed domain name and Complainant’s mark, as well as the content of Respondent’s website, the Panel finds that Respondent registered and used the <hereistobeer.com> domain name to mislead Internet users as to the affiliation between the disputed domain name and Complainant’s HERE’S TO BEER mark. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
Moreover, the evidence suggests that Respondent opportunistically registered the <hereistobeer.com> domain name in bad faith. Complainant’s educational campaign bearing its HERE’S TO BEER mark was publicized in the press and trade media in the weeks prior to Complainant’s television commercial during the 2006 Super Bowl. Significantly, Respondent registered the disputed domain name only two days prior to the airing of Complainant’s commercial, which introduced Complainant’s HERE’S TO BEER mark to millions of consumers. According to the panel in Microsoft Corp. v. WG and Shahbaz Khan, FA 635281 (Nat. Arb. Forum Mar. 15, 2006), the timing of the respondent’s registration of the disputed domain name can demonstrate bad faith registration and use by the respondent. In that case, the panel concluded that the respondent’s registration of the <xbox360wirelesscontroller.com> domain name within days of the complainant’s public announcement of its XBOX 360 system on television suggested that the respondent opportunistically registered the disputed domain name in bad faith. Similarly, in the present case, the Panel finds that Respondent’s opportunistic registration of the disputed domain name evidences bad faith pursuant 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”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hereistobeer.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 5, 2006
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