WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Anheuser-Busch Inc v. Dot Com Internet Solutions

Case No. D2001-0500

 

1. The Parties

The Complainant is Anheuser-Busch Incorporated of One Busch Place, St Louis, MO 63118-1852, United States of America.

The Respondent is Dot Com Internet Solutions of 794 Fort Street, RPO, Box 38042, Victoria, BC V8W-3N2, Canada.

 

2. The Domain Names and Registrar

The disputed domain names are: <budcommercials.com>, <budmovies.com>, <budscreensavers.com>, <budwallpaper.com>, and <budweiserlizards.com>.

The Registrar with which all the domain names are registered is Tucows, Inc of 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada.

 

3. Procedural History

On April 4, 2001 a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.

On April 30, 2001, the Registrar responded to a request for Registrar Verification and confirmed details of the Respondent, that the Policy applied to the domain names and that the current status of the names was "active".

On May 2, 2001, the WIPO Center transmitted a notification of complaint and commencement of administrative proceedings to the Respondent by email and courier.

No response was received from the Respondent and on May 23, 2001, the Center sent a Notification of Respondent default to the Respondent.

On May 31, 2001 the WIPO Center informed both parties by email that an administrative panel comprising Andrew Brown had been appointed.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, that the Complaint was properly notified to the Respondent in accordance with the Rules, and that the Administrative Panel was properly constituted.

 

4. Factual Background

A. The Complainant

The Complainant has asserted and provided evidence in support of the following facts. Unless stated otherwise, the Panel finds these facts established.

The Complainant is the manufacturer of the famous BUDWEISER beer brand.

The Complainant first adopted and used the BUDWEISER mark on January 18, 1876 and currently owns more than 54 United States Federal registrations for marks that incorporate the BUDWEISER trademark. The Complainant first registered the BUDWEISER trademark on July 23, 1907.

The Complainant first adopted and used the BUD mark in 1939 as a synonym/nickname of the BUDWEISER brand name. BUD has been a registered trademark of the Complainant since August 26, 1958. Since that time, the Complainant has registered over 173 trademarks in the United States containing or associated with the trademark BUD.

The Complainant has used these trademarks continuously for the promotion, advertisement, and sale of the Complainantís beer and related products.

The Respondent registered the domain name <budcommercials.com> on or about July 16, 2000. On or about October 19, 2000 the Complainant learned of the ownership and operation of the <budcommercials.com> domain name and website.

At that time, when internet users visited the website <budcommercials.com>, they were connected to a site that offered BUDWEISER commercials for downloading and use. (At the present time, the website is not operational.)

The Respondent also registered the domain names <budscreensavers.com>, <budwallpaper.com> and <budweiserlizards.com> on or about July 16, 2000. The domain name <budmovies.com> was registered on or about September 13, 2000.

On February 16, 2001, counsel for the Complainant discovered the domain name <budcommercials.com> was placed on the website www.afternic.com for auction. In the description, the Respondent or an agent of the Respondent stated the following:

"If you win the auction for Ďbudcommercials.comí you will also receive the Ďbudmovies.comí, Ďbudscreensavers.comí, Ďbudwallpaper.comí and Ďbudweiserlizards.comí."

The description concluded with the statement that the "website receives approximately 1,000 hits per day".

On March 2, 2001, counsel for the Complainant sent a letter to the Respondent, informing him that the disputed domain names were federally registered trademarks of the Complainant and demanding that the Respondent permanently cease all use of the domain names and transfer them to the Complainant. The Respondent never responded to this letter, so this Complaint was commenced.

B. The Respondent

As indicated, no response to the Complaint has been received from the Respondent.

 

5. Partiesí Contentions

A. The Complainant

The Complainant contends that when the Respondent registered the disputed domain names, it knew or should have known of the existence of the BUD and BUDWEISER trademarks. The Complainant contends that the Respondent has no rights or legitimate interest in respect of the disputed domain names. The Respondent has no priority rights in the names, is not affiliated with the Complainant or otherwise authorized to use the Complainantís marks.

The Complainant contends that the disputed domain names were registered in bad faith. It believes that the Respondent registered the domain name <budcommercials.com> for commercial gain, with the intention of diverting internet users to its site. It contends that the Respondent profited from traffic directed to the website through the goodwill and fame of the BUD mark.

The Complainant asserts that the Respondent registered the domain names <budwallpaper.com>, <budmovies.com> and <budscreensavers.com> with the intent of offering visitors the option of downloading BUDWEISER and BUD screensavers, website background graphics and television commercials, all of which are the intellectual property of the Complainant.

It also asserts that the Respondent registered the disputed domain name <budweiserlizards.com> with the intent of offering visitors the option of downloading the Complainantís commercials which feature certain "Budweiser lizard" characters and to divert visitors to the Respondentís site.

The Complainant also contends that the Respondent registered the disputed domain names for commercial gain, with the intention of wrongfully using or selling the domain names.

B. The Respondent

The Respondent did not make any submissions, either formal or informal. The Panel has, however, looked at the websites corresponding to the disputed domain names. None of the websites are operational.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain names have been registered and are being used by the Respondent in bad faith.

Identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant is the registered owner of the trademarks BUDWEISER and BUD in the United States and a series of registered trademarks incorporating the word BUD. The disputed domain names are all combinations of the Complainantís trademarks BUD or BUDWEISER and various suffixes.

The Panel considers that the domain names are all confusingly similar to the Complainantís registered trademarks BUD and BUDWEISER.

No legitimate rights or interest in the disputed domain names

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentís rights or legitimate interest in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not provided the WIPO Center with any submissions on which the Panel could base a finding in its favor pursuant to paragraph 4(c).

There is no suggestion that the Respondent has a legitimate interest in respect of the domain names. There is nothing to suggest that the Respondent has priority rights in any of the domain names which comprise or include the Complainantís trademarks BUD and BUDWEISER. Nor is there any evidence whatever that the Respondent is affiliated with the Complainant or otherwise authorized to use the Complainantís marks.

The Complainant has therefore demonstrated that the Respondent has no legitimate rights or interest in the disputed domain names under paragraph 4(a)(ii) of the Policy.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The circumstances of registration of the series of domain names Ė <budcommercials.com>, <budscreensavers.com>, <budwallpaper.com> and <budweiserlizards.com> - all on the same day (July 16, 2000) demonstrates a pattern of conduct in registering marks which incorporate both of the Complainantís well-known trademarks. The fact that these contemporaneous domain name registrations comprised both the full trademark BUDWEISER and the shortened version BUD, allows the Panel to conclude that the Respondent intended to refer to the Complainantís well-known trademarks. The subsequent registration of the domain name <budmovies.com> on or about September 13, 2000, was part of this pattern of behavior. The Panel notes that the Respondent is domiciled in Canada and would therefore have been well aware of these marks. In Document Technologies, Inc v International Electronic Communications, Inc Ė D2000-0270, it was held that the Respondentís knowledge of the Complainantís mark at the time of registration of the domain name suggests bad faith.

The evidence shows that the Respondent used one of the sites <budcommercials.com> to offer the Complainantís Budweiser commercials for downloading and use. This further demonstrates not only knowledge and awareness of the Complainantís trademarks but also an intention to attract for commercial gain internet users to the website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of it. This falls within paragraph 4(b)(iv) of the Policy. It is likely that a number of internet users seeing <budcommercials.com> would believe the site to be a genuine site affiliated with the Complainant. It is fair to infer the same intention in respect of each of the other sites even though these were not put into use.

Further evidence of bad faith arises through the actions of the Respondent in offering one domain name (and indirectly the others) for sale on February 16, 2001. The offering of a domain name for sale suggests bad faith. (The Southern Company v Chad Doms a/k/a Chad Folkening - D2000-0184).

The Policy requires the Complainant to show that the Respondent has registered/acquired and is using the domain name in bad faith. The fact that the domain names are available for sale has been taken as evidence of bad faith registration and absence of use in such circumstances has, since the decision in Telstra Corporation v Nuclear Marshmallows - D2000-0003 been consistently found not to frustrate the requirement of showing bad faith registration and use. The concept of a domain name being used in bad faith is not limited to positive action: CUX, Inc. v DomainNamesAvailable - D2000-0972.

The Panel finds that the Complainant has established that the domain names were registered or acquired by the Respondent in bad faith.

 

7. Decision

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <budcommercials.com>, <budmovies.com>, <budscreensavers.com>, <budwallpaper.com> and <budweiserlizards.com> be transferred to the Complainant.

The Panel therefore concludes that the Complainantís claim that the domain names have been registered are being used by the Respondent in bad faith has been made out.

 


 

Andrew Brown
Single Panelist

Dated: June 13, 2001