Anheuser-Busch, Incorporated v. Wesley Niegro
Claim Number: FA0607000756894
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 Wesley Niegro (“Respondent”), 4603 Prestbury Dr, Greensboro, NC 27455.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <budbeerbucks.com>, <budcash.com>, <budlightbucks.com>, <budsuds.com>, <budweiserbrew.com>, <budweiserbucks.com>, <buschbucks.com> and <mybudbucks.com>, registered with Go Daddy Software, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2006.
On July 21, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <budbeerbucks.com>, <budcash.com>, <budlightbucks.com>, <budsuds.com>, <budweiserbrew.com>, <budweiserbucks.com>, <buschbucks.com> and <mybudbucks.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 July 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 15, 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@<budbeerbucks.com, postmaster@budcash.com, postmaster@budlightbucks.com, postmaster@budsuds.com, postmaster@budweiserbrew.com, postmaster@budweiserbucks.com, postmaster@buschbucks.com and postmaster@mybudbucks.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 19, 2006, 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <budbeerbucks.com>, <budcash.com>, <budlightbucks.com>, <budsuds.com>, <budweiserbrew.com>, <budweiserbucks.com>, <buschbucks.com> and <mybudbucks.com> domain names are confusingly similar to Complainant’s BUD, BUD LIGHT, BUDWEISER and BUSCH marks.
2. Respondent does not have any rights or legitimate interests in the <budbeerbucks.com>, <budcash.com>, <budlightbucks.com>, <budsuds.com>, <budweiserbrew.com>, <budweiserbucks.com>, <buschbucks.com> and <mybudbucks.com> domain names.
3. Respondent registered and used the <budbeerbucks.com>, <budcash.com>, <budlightbucks.com>, <budsuds.com>, <budweiserbrew.com>, <budweiserbucks.com>, <buschbucks.com> and <mybudbucks.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Anheuser-Busch, Inc., is a leading American beer brewer, with its beverages accounting for nearly fifty percent of the United States beer market. Complainant also has a strong international presence, and its BUDWEISER and BUD LIGHT beers are the world’s largest selling beers. Complainant holds registrations with the United States Patent and Trademark Office for the BUD (Reg. No. 666,367 issued August 26, 1958), BUD LIGHT (Reg. No. 1,694,621 issued June 16, 1992), BUDWEISER (Reg. No. 64,125 issued July 23 1907) and BUSCH (Reg. No. 621424 issued February 14, 1956) marks. Respondent uses these marks in connection with producing, distributing and selling beer and beer related goods and services. Complainant has registered numerous domain names including its marks, for example <budbeer.com>, <budlight.com>, <budweiser.com> and <busch.com>. Complainant uses its registered domain names to provide online customers with beer related information as well as beer related goods.
Respondent registered the disputed domain names on June 23, 2005. After registering the disputed domain names, Respondent contacted Complainant to pitch an unsolicited business idea connected to the disputed domain names. Complainant asked Respondent to sign a non-confidentiality agreement prior to any discussions, which Respondent signed. Respondent then presented Complainant with the disputed domain names and Respondent’s unsolicited idea. Complainant requested the transfer of the domain names containing its marks. Respondent refused to transfer the disputed domain names without financial compensation and without Complainant entertaining Respondent’s unsolicited idea. Respondent is currently using the disputed domain names to redirect Internet users to its websites which include no original content and are composed entirely of banner advertisements and links to third-party websites. It appears that many of the third-party websites offer beer related goods in competition with Complainant. Other third-party websites are unrelated to Complainant.
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.
Complainant has established rights in the BUD, BUD LIGHT,
BUDWEISER and BUSCH marks through registration with the USPTO. The Panel find that such registrations
create sufficient rights to satisfy Policy ¶ 4(a)(i). See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel
decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive."); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <budbeerbucks.com>,
<budcash.com>, <budlightbucks.com>, <budsuds.com>,
<budweiserbrew.com>, <budweiserbucks.com>, <buschbucks.com>
and <mybudbucks.com> domain names are confusingly similar to
Complainant’s BUD, BUD LIGHT, BUDWEISER and BUSCH marks. The disputed domain names all contain one of
Complainant’s marks and each disputed domain name adds one or more generic
terms that could be descriptive of Complainant’s business. For example, the terms “suds” and “brew” are
slang terms for beer, which is Complainant’s main product. The terms “beer bucks,” “cash” and “bucks”
all seemingly describe some sort of customer rewards or loyalty plan, and the
term “my” could also refer to some sort of customer based website. The Panel finds that the addition of terms
describing Complainant’s business to Complainant’s mark does not create
distinct domain names. Instead,
Respondent’s domain names are confusingly similar to Complainant’s marks
pursuant to Policy ¶ 4(a)(i). See
Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he
fact that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity [sic] or confusing similarity for purposes of
the Policy despite the addition of other words to such marks.”); see also
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant’s assertion creates a prima facie case under the Policy. Once a prima facie case is established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Respondent has the opportunity to provide the Panel with a Response in order to present evidence and arguments supporting its rights and legitimate interests in the disputed domain names. Respondent’s failure to supply a Response suggests that Respondent does not have rights or legitimate interests in the disputed domain names since the Panel has only Complainant’s un-contradicted assertions upon which to base its decision. 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain names as contemplated by Policy ¶ 4(c).
Respondent is using the disputed domain names to host banner advertisements and links to third-party websites, some of which offer goods and services in direct competition with Complainant. Respondent is utilizing the disputed domain names, which are confusingly similar to Complainant’s marks, to attract Internet users to its websites. When Internet users find themselves at Complainant’s websites they are not presented with a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Instead, Internet users arrive at websites populated with advertisements and links to third-party websites, which presumably generate pay-per-click referral fees for Respondent. The Panel finds that such use does not establish Respondent’s rights or legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) or (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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Further, there is no evidence that Respondent is commonly
known by the disputed domain names.
Respondent’s WHOIS information identifies Respondent as “Wesley Niegro,”
not by any variation of any of the disputed domain names. Complainant asserts, and there is no
available evidence to the contrary, that Respondent is not affiliated with
Complainant and Respondent does not have permission from Complainant to use
Complainant’s marks in domain names.
The Panel finds that Respondent is not commonly known by the disputed
domain names and thus lacks rights or legitimate interests pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent approached Complainant offering to provide
Complainant with the disputed domain names in exchange for Complainant’s
willingness to offer Respondent a meeting to hear Respondent’s unsolicited
business idea. When Complainant was not
willing to entertain Respondent’s business idea, Respondent demanded financial
compensation from Complainant in exchange for the transfer of the disputed
domain names. The Panel finds that
Respondent’s attempt to extract either a business meeting or financial
compensation from Complainant in exchange for the transfer of the disputed
domain names is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(i). See Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); see also Lyon v. Casserly, FA
193891 (Nat. Arb. Forum Oct. 29, 2003) (finding that the domain name was
acquired primarily for the purpose of transferring the domain name to the
complainant for valuable consideration in excess of the respondent's
out-of-pocket costs because the respondent made various requests for concert
tickets, backstage passes, press passes and a website development contract).
Respondent’s <budbeerbucks.com>,
<budcash.com>, <budlightbucks.com>, <budsuds.com>,
<budweiserbrew.com>, <budweiserbucks.com>, <buschbucks.com>
and <mybudbucks.com> domain names are confusingly similar to
Complainant’s BUD, BUD LIGHT, BUDWEISER and BUSCH marks. Respondent is using the disputed domain
names to redirect Internet users to Respondent’s websites. Internet users seeking Complainant’s genuine
websites may easily be redirected to Respondent’s websites because of the
confusing similarity between the disputed domain names and Complainant’s
marks. Once redirected to Respondent’s
websites, Internet users may mistakenly believe that Respondent’s websites are
sponsored by or affiliated with Complainant, especially since many of the links
to third-party websites are for beer related goods and services similar to
Complainant’s. Respondent is presumably
profiting from this confusion by collecting the pay-per-click fees generated by
the banner advertisements and links to third-party websites featured on
Respondent’s website. The Panel finds
that such use if evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be confused
as to the source, sponsorship, affiliation or endorsement of Respondent’s
website.”); see also AltaVista Co.
v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy
¶ 4(b)(iv) where the respondent’s domain name resolved to a website that
offered links to third-party websites that offered services similar to the
complainant’s services and merely took advantage of Internet user mistakes).
Additionally, it is within the Panel’s discretion to find
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii) outside
of the circumstances listed in Policy ¶¶ 4(b)(i)-(iv). Not only did Respondent have constructive
knowledge in Complainant’s marks because they were registered with the USPTO,
Respondent also had actual knowledge of Complainant’s rights in its marks and
registered and used the disputed domain names despite that knowledge. Respondent approached Complainant after
registering the disputed domain names and told Complainant that the domain
names had been intentionally registered to assist Respondent in pursuing his
unsolicited idea with Complainant.
Respondent must have known about Complainant’s rights in its marks prior
to registering the disputed domain names since Respondent’s unsolicited idea
was intended for Complainant and tailored to Complainant’s needs. Thus, the Panel finds that Respondent’s
registration and use of the disputed domain names despite actual or
constructive knowledge of Complainant’s rights in the marks is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”); see also
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here
is a legal presumption of bad faith, when Respondent reasonably should have
been aware of Complainant’s trademarks, actually or constructively.”); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name.”).
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 <budbeerbucks.com>, <budcash.com>, <budlightbucks.com>, <budsuds.com>, <budweiserbrew.com>, <budweiserbucks.com>, <buschbucks.com> and <mybudbucks.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 4, 2006
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