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Generic Top Level Domain Name (gTLD) Decisions |
Anheuser-Busch Inc. v. BargainName.com
c/o Domain Admin
Claim
Number: FA0410000338434
Complainant is Anheuser-Busch Inc. (“Complainant”), represented
by Michelle W. Alvey of Blackwell Sanders Peper Martin PLC, 720 Olive Street, Suite 2400, St. Louis, MO 63101. Respondent is BargainName.com c/o Domain Admin (“Respondent”),
Georgetown, Grand Cayman.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <buschgardensva.com>, registered with eNom.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
1, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 4, 2004.
On
October 4, 2004, eNom confirmed by e-mail to the National Arbitration Forum
that the domain name <buschgardensva.com> is registered with eNom
and that Respondent is the current registrant of the name. eNom has verified
that Respondent is bound by
the eNom 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
October 11, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 1, 2004 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@buschgardensva.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
November 13, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed the
Honorable Charles K. McCotter, Jr. (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 <buschgardensva.com>
domain name is confusingly similar to Complainant’s BUSCH GARDENS mark.
2. Respondent does not have any rights or
legitimate interests in the <buschgardensva.com> domain name.
3. Respondent registered and used the <buschgardensva.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Anheuser-Busch Inc., owns and operates the
BUSCH GARDENS amusement park in Williamsburg, Virgina.
Complainant holds numerous trademark registrations with the United States
Patent and Trademark Office for the BUSCH GARDENS mark and
its related marks
(including Reg. No. 925,302 issued December 7, 1971; Reg. No. 2,257,664 issued
June 29, 1999; Reg. No. 2783350
issued November 11, 2003). Complainant has used its BUSCH GARDENS mark
continuously and extensively since at least as early as 1959.
Complainant’s BUSCH GARDENS-Virgina amusement park and its companion
water park host more than three million visitors each year. The National Amusement Park Historical
Association (NAPHA) named the park as the world’s “Most Beautiful Threme Park”
for fourteen
consecutive years. The
NAPHA also named Complainant’s park as the world’s “Favorite Theme Park” for
the fourth year in a row. Complainant’s
BUSCH GARDENS-Virginia amusement park has also been highly ranked in several
categories in the amusement park trade
and industry newspaper Amusement
Today. In 2003, the park also
received the prestigious Applause Award from the International Association of
Amusement Parks & Attractions
(IAAPA) and Amusement Business Magazine.
Complainant expends significant effort in advertising and promoting its
BUSCH GARDENS marks and BUSCH GARDENS-Virgina park in Virgina,
including
co-operative promotions with the Colonial Williamsburg tourist destination in
Virginia. Additonally, Complainant uses
its BUSCH GARDENS mark on its websites including its website at the <buschgardens.com>
domain
name.
Respondent is in the business of registering and warehousing domain
names, which it resells for profit.
Respondent registered the <buschgardensva.com> domain name on May 24, 2003, and
Respondent is using the disputed domain name to redirect Internet users to a website
that displays
a generic search engine and hyperlinks to various websites
unrelated to Complainant, including travel websites for rates to Williamsburg,
Virginia and websites for real estate near Williamsburg, Virginia. Additionally, the website includes a false
link to the BUSCH GARDENS-Virginia park’s website, which actually directs users
to more
travel websites. Respondent
generates revenue from the redirection of Internet users through pay-per-click
fees.
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.
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 in this proceeding that is has rights in the BUSCH GARDENS mark
through registration with the United States
Patent and Trademark Office and by
continuous use of its mark in commerce for the last forty-five years. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently
distinctive and
have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that 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. Respondent has the burden of refuting this
assumption).
The <buschgardensva.com>
domain name registered by Respondent is confusingly similar to Complainant’s
BUSCH GARDENS mark because the domain name incorporates
Complainant’s mark in
its entirety, adding only the generic abbreviation “VA” for the state of
Virginia. Furthermore, Complainant
operates one of its BUSCH GARDENS amusement parks in the state of Virginia and
advertises and promotes its
BUSCH GARDENS marks extensively in that state. Therefore, the Panel finds that the mere
addition of a geographic abbreviation to a registered mark does not negate the
confusing
similarity of Respondent’s domain name pursuant to Policy ¶
4(a)(i). See Am. Online, Inc. v. Asian On-Line This
Domain For Sale, FA 94636 (Nat. Arb. Forum May 17, 2000) (finding that the
domain names, which consist of “ao-l” and geographic location are confusingly
similar to Complainant’s mark); see also Wal-Mart Stores, Inc. v. Walmarket Canada,
D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com>
is confusingly similar to Complainant’s famous
mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges in the Complaint that Respondent has no rights or legitimate interests
in the <buschgardensva.com> domain name. Since Respondent failed to respond to the Complaint, the Panel
assumes that Respondent lacks rights and legitimate interests in the
<buschgardensva.com>
domain name. Furthermore, once
Complainant makes a prima facie case in support of its allegations, the
burden shifts to Respondent to show that it does have rights to or legitimate
interests in
the domain name pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate
interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion
because this information is “uniquely within
the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has
no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate
interest does exist).
Moreover, where
Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact
in the allegations of the Complaint to be deemed
true); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the
very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Respondent is
using the <buschgardensva.com> domain name to redirect Internet
users to a website that displays a generic search engine as well as links to
various products and
services unrelated to Complainant or its BUSCH GARDENS
mark. Some of the links are for travel
websites that can search for travel rates to Williamsburg, Virginia, and one
link is for a website
related to real estate near Williamsburg, which is near
one of Complainant’s BUSCH GARDENS amusement parks. Respondent’s use of a domain name confusingly similar to
Complainant’s registered mark to divert Internet users to Respondent’s website,
which features a generic search engine and hyperlinks, is not a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name
pursuant
to Policy ¶ 4(c)(iii). See
Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17,
2003) (finding that Respondent’s diversionary use of Complainant’s mark to
attract Internet
users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods
or
services nor a legitimate noncommercial or fair use of the disputed domain
names); see also Am. Online, Inc.
v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding
that use of Complainant’s mark “as a portal to suck surfers into a site
sponsored
by Respondent hardly seems legitimate”); 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 Respondent attempted to
profit using Complainant’s
mark by redirecting Internet traffic to its own website).
Furthermore,
nothing in the record suggests that Respondent is commonly known by the <buschgardensva.com>
domain name, and Complainant did not authorize or license Respondent to use
Complainant’s BUSCH GARDENS mark. Therefore,
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May
16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one
has been commonly known
by the domain name prior to registration of the domain
name to prevail"); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known
by the mark).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <buschgardensva.com> domain name to attract Internet
users interested in Complainant’s BUSCH GARDENS mark to Respondent’s commercial
website. Respondent generates revenue
from its website through redirecting Internet users to other websites through
its search engine and hyperlinks.
Respondent’s use of a domain name confusingly similar to Complainant’s
registered mark to gain financially through a likelihood of
confusion is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the
disputed domain name was registered and used in bad faith pursuant to
Policy ¶
4(b)(iv) through Respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet
users to its fraudulent
website by using Complainant’s famous marks and likeness); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that Respondent registered and used the domain name in bad faith
pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website);
see
also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if Respondent profits from its diversionary use of Complainant's
mark when
the domain name resolves to commercial websites and Respondent fails
to contest the Complaint, it may be concluded that Respondent
is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of a domain name, additional factors
can also be used to support findings of bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel
must look at the “totality of
circumstances”); see also 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.”).
Respondent’s
registration of the <buschgardensva.com> domain name, which
deviates from Complainant’s BUSCH GARDENS mark only with the addition of the
geographic abbreviation “VA,” suggests
that Respondent knew of Complainant’s
rights in the BUSCH GARDENS mark.
Furthermore, the geographic term incorporated in the domain name
indicates the location of one of Complainant’s BUSCH GARDENS amusement
parks,
and content on Respondent’s website mentions Complainant. Thus, the Panel finds that Respondent chose
the disputed domain name based on the distinctive and well-known qualities of
Complainant’s
mark. See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly
known mark at the time
of registration); 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 Complainant’s mark and the
content advertised on Respondent’s
website was obvious, 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 the <buschgardensva.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
November 29, 2004
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