WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clydesdale Bank PLC v. Anheuser-Busch Companies
Case No. DBIZ2002-00127
1. The Parties
The Complainant is Clydesdale Bank PLC, of 30 St. Vincent Place, Glasgow, GI 2HL, Scotland, United Kingdom.
Represented by Jonathan Kerr, Internet Channel, Clydesdale Bank, 30 St. Vincent Place, Glasgow GI 2HL, Scotland, United Kingdom.
The Respondent is Anheuser-Busch Companies, of One Busch Place, St. Louis, MO 63118-1852, United States of America.
Respondent is represented by Steven M. Weinberg, Esq., Greenberg Traurig, LLP, of 2375 East Camelback Road, Suite 700, Phoenix, AZ 85016, United States of America.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: <clydesdale.biz>.
The Registrar with which the domain name is currently registered is I.D.R. Internet Domain Registry, Ltd., of POB 1057, 12 Hasharon Way, Kfar Saba 44110, Israel.
3. Procedural History
3.1 This is a proceeding under the Start-up Trademark Opposition Policy and Rules ("STOP") for the .Biz domain. Complainant having duly filed notice of an IP claim and intent to file a STOP Complaint, the Complaint was filed with the WIPO Center (the "Center") on April 26, 2002, by e-mail and on May 3, 2002, in hard copy.
3.2 Despite repeated requests by the Center to the Registrar for advice as to the language of the Registration Agreement (Rules para. 11(a)) that information was not provided. The Panel proceeds on the basis that the language of the Agreement is English.
3.3 On June 11, 2002, the Center, having determined that all formal requirements had been met, sent the Notification of Complaint and Commencement of Administrative Proceeding by courier, by facsimile and by e-mail to Respondent and to the Administrative, Technical and Billing Contact for the domain name, and by email to the Registrar, to ICANN and to the postmaster at the domain name.
3.4 The communication of the Complaint satisfies the provisions of Rule 2(a) of the STOP Rules and the Panel is satisfied that Respondent received due notice of the Complaint.
3.5 The Administrative Proceeding commenced on June 11, 2002, and the Response was due on July 1, 2002.
3.6 A Response was filed by email on June 29, 2002, and in hardcopy on July 1, 2002. That Response was filed, not by Respondent, but by Anheuser-Busch Inc. of the same address as Respondent.
3.7 Sole Panelist, Desmond J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, the Panel was appointed on July 24, 2002.
4. Factual Background
4.1 The domain name was registered with the registrar in question, on March 27, 2002.
4.2 Complainant is a Scottish company established in 1862 and operating as a clearing bank throughout the United Kingdom. It has over 250 branches and claims around one million customers.
4.3 Complainant is the registered proprietor of U.K. trademark registration No. 1378934 "Clydesdale" registered in International Class 36 in respect of: "insurance, financial and banking services". The registration dates from April 7, 1989.
4.4 No information was given either in the Complaint or in the Response with respect to Respondent or its business. The Panel however takes notice of the fact that Anheuser-Busch Inc. is a well-known brewer operating in the United States of America and elsewhere.
4.5 Anheuser-Busch Inc. is the registered proprietor of the following U.S. trademark registrations:
No. 2012021 - "Clydesdale" registered October 29, 1996, in respect of "drinking vessels".
No. 2333914 – "Clydesdale" registered March 21, 2000, in respect of "animal feed, namely whole oats, excluding the Swedish select varieties".
No. 1146473 – "Clydesdale" registered January 27, 1981, in respect of "beer".
Anheuser-Busch Inc. is also the registered proprietor of trademarks comprising the words "the Clydesdale collection" and "Cydesdale football".
5. Preliminary Issue
5.1 The domain name owner, and the person named as Respondent in the Complaint, is "Anheuser-Busch Companies". The Response was filed by "Anheuser-Busch Inc." and names Anheuser-Busch Inc. as Respondent. The Response makes no mention of Anheuser-Busch Companies.
5.2 In light of this discrepancy the Panel issued the Procedural Order annexed hereto.
5.3 Respondent's reply to the Procedural Order was due on August 3, 2002. Attorney Steven M. Weinberg sent the following reply to the WIPO Center:
"Response. We have been asked if Anheuser-Busch Companies and Anheuser-Busch, Inc. are different names for the same entity. They are. Please review the following page from the <anheuser-busch.com> web site which discusses the Anheuser-Busch Companies, Inc. products, and please note that the copyright notice is in the name of Anheuser-Busch, Inc.:
For further confirmation, please review the online annual report:
5.4 The reply was duly communicated to Complainant. No response has been received from Complainant.
5.5 The Panel has been unable to access the page "/overview/abi." to which the reply refers. Access to the page "/annual/default" leads to the 2001 Annual Report of Anheuser-Busch Companies, Inc. That Report shows that Anheuser-Busch Inc. is an operating subsidiary of Anheuser-Busch Companies, Inc. and conducts its brewing operations.
5.6 Manifestly therefore the names are not, as the attorney states, "different names for the same entity". They designate separate, but related, legal persons.
6. Applicable Dispute
6.1 This dispute is one to which the STOP applies. Complainant duly registered an IP claim and duly filed the Complaint on receipt of notice of the registration of the domain name. As applicant for the domain name Respondent would have received notice of Complainant’s IP claim and details of its trademarks.
6.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of STOP are satisfied, namely that:
(i) the domain name is identical to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
7. Parties’ Contentions
7.1 Complainant's contentions may be summarised as follows:
(i) The domain name is identical with Complainant's "Clydesdale" trademark.
(ii) Respondent cannot claim trademark rights in the United Kingdom in relation to services in Class 36 in view of Complainant's registration.
(iii) There is no evidence of Respondent's use or preparations for use of the domain name in connection with the bona fide offering of goods or services.
(iv) Respondent's registration has prevented Complainant from reflecting its trademark in a corresponding domain name. Respondent is not in a position to use the domain name for services provided by its business and has registered the domain name in bad faith.
7.2 Respondent rests its case upon the provisions of paragraph 4(c)(i) of the Policy and recites ownership of the trademarks referred to in paragraph 4.5 above. Respondent has accordingly demonstrated its rights and legitimate interest in the domain name. Respondent further contends that in the light of its demonstrated rights and interest in the domain name, it could not be found to have registered the domain name in bad faith.
8. Discussion and Findings
8.1 The Panel finds, and the Response concedes, that the domain name is identical to a trademark or service mark in which Complainant has rights.
Rights or Legitimate Interests
8.2 Complainant appears to base its claim that Respondent has no legitimate right or interest on the contention that Complainant has trademark rights in the United Kingdom which would prevent Respondent from using the domain name for "insurance, financial and banking services". Even if that were the case, it is clearly insufficient to demonstrate that Respondent, engaged, through its subsidiary, has no legitimate right or interest in the domain name. Though Respondent itself does not own trademarks including the word "Clydesdale" its subsidiary does. Respondent therefore has a demonstrated legitimate interest in the domain name, and a legitimate right to register it which is not defeated by the rights claimed by Complainant.
8.3 The Panel therefore finds that Complainant has failed to satisfy ground 4(a)(ii) of the Policy.
Bad Faith Use or Registration
8.4 Whilst it is unnecessary to make a finding in this respect, the Panel notes that there is no evidence of any bad faith use or registration on the part of the Complainant. Complainant has established its bona fides by reference to the trademark holdings of its subsidiary.
9.1 Complainant having failed to satisfy the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, the Complaint is dismissed.
9.2 Respondent having demonstrated legitimate rights to the domain name, the Panel decides that no subsequent challenges under the Policy against the domain name shall be permitted.
Dated: August 13, 2002