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Anheuser-Busch, Incorporated v. Anti-Globalization Domains a/k/a Baby Safe a/k/a Azra Ari Khan a/k/a John Barry [2004] GENDND 500 (7 April 2004)

1. The Parties

The Complainant is Anheuser-Busch, Incorporated, St. Louis, Missouri, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.

The Respondent is Anti-Globalization Domains a/k/a Baby Safe a/k/a Azra Ari Khan a/k/a John Barry, Bronx, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wwwbudweiser.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2004. On February 11, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On February 11, 2004, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Complainant, on its own initiative, filed an amendment to the Complaint on February 11, 2004.

Further, on February 20, 2004, the Center notified the Complainant that the Respondent had not submitted to the jurisdiction of a court at the location of the principal office of the Registrar. Accordingly, on February 23, 2004, Complainant consented to the jurisdiction of the courts at the location of the domain-holder's address as shown for the registration of the domain name at the time the Amended Complaint was filed.

The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 23, 2004.

The Center appointed Kevin C. Trock as the Sole Panelist in this matter on March 25, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The domain name at issue is <wwwbudweiser.com>. The domain name is registered to Anti-Globalization Domains and, as of February 6, 2004, resolved to the domain name <abortionismurder.org>. The Complainant has registered the term BUDWEISER for use with beer and other products and services and owns U.S. Trademark Registration Nos. 13,064; 64,125; 895,176; 922,481 and 952,277, among others.

5. Parties' Contentions

A. Complainant

The Complainant contends that it has extensively used the term BUDWEISER since 1876 in connection with beer and related products, and that it owns several U.S. trademark registrations for the term BUDWEISER for such use and that such registrations were issued as early as 1878. Complainant also contends that it has extensively promoted and advertised the term BUDWEISER with beer and related products for decades such that the term BUDWEISER has achieved universal recognition as a trademark for beer and related products and that the trademark BUDWEISER has become famous. Complainant contends that it registered the domain name <budweiser.com> in July 1995 and that it has extensively promoted and advertised the related website since that time.

Complainant also contends that the disputed domain name <wwwbudweiser.com> is confusingly similar to its BUDWEISER trademark and the domain name <budweiser.com>. Complainant also contends that the Respondent has no legitimate rights or interests in the disputed domain name because, among other reasons, Complaint's use and registration of the term BUSWEISER as a trademark predates any use of the term by the Respondent by over 100 years and that Respondent must have known of Complainants prior rights in the mark. Complainant also contends that Respondent's use of the disputed domain name is not legitimate noncommercial speech because it resolves to the domain name <abortionismurder.org>, and that this website makes no reference to the Complainant or the BUDWEISER trademark. Complainant further contends that Respondent has registered and is using the disputed domain name in bad faith because i) it believes that Respondent was aware of Complainant's famous trademark and registered the disputed domain name as part of a scheme to sell the domain name for profit; ii) the Respondent deliberately incorporated a common typing mistake to divert traffic to the disputed domain name; and iii) that Respondent has engaged in a pattern of bad faith domain name registration in the past.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

In order to prevail, the Complainant must prove the following three elements: (i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in the domain name; and (iii) Respondent has registered the domain name and is using it in bad faith. (Policy, paragraph 4(a)).

The Respondent has not filed a response to the Complaint. Pursuant to the Rules, paragraph 5(ix)(e), the Panel will decide the dispute based on the Complaint.

A. Identical or Confusingly Similar

Complainant first began using the term BUDWEISER with beer and related products in 1876.

The Complainant first registered the BUDWEISER mark with the U.S. Patent and Trademark Office at least as early as July 16, 1878 (Reg. No. 6,376) and the BUDWEISER mark is the subject of more than twenty federal registrations for beer and a wide range of other products and services including U.S. Registrations Nos. 13,064; 64,125; 895,176; 922,481; and 952,277, among others.

Complainant has spent billions of dollars advertising and promoting its BUDWEISER Trademark in the United States and many other countries in virtually all media including print publications, billboards, television, radio, Internet and even airships. Complainant has sold billions of bottles and cans of beer under the BUDWEISER Trademark. By virtue of this extensive advertising and voluminous sales over many decades, Complainant contends that the BUDWEISER Trademark has acquired a high degree of fame and goodwill, and is the epitome of a "famous" trademark.

Based on this record, the Panel determines that the Complainant has legitimate rights in the trademark BUDWEISER.

The Respondent's domain name <wwwbudweiser.com> is identical to the BUDWEISER trademark in which the Complainant has rights, but for the ".com" top-level domain (TLD) locator and the world-wide-web (www) antecedent. Such identity is sufficient to show that Respondent's domain name is confusingly similar to Complainant's trademark. The Respondent's use of the www antecedent does nothing to alleviate the confusing similarity. See General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000-0377 (July 15, 2000); American Media Operations, Inc. v. Erik Simons, NAF Case No. AF-0134 (June 12, 2000); World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256 (June 7, 2000).

B. Rights or Legitimate Interests

Because Respondent has not filed a response, the Panel only has the Complaint by which to address the issue of Respondent's rights or legitimate interest in the disputed domain name.

There is no evidence in the record to suggest that the Respondent has a right or legitimate interest in the disputed domain name <wwwbudweiser.com>. Rather, the record shows that the Respondent knew or must have known about the Complainant's rights in the BUDWEISER trademark, that Respondent did not have permission from the trademark owner to register the domain name and that Respondent is using the domain name to misleadingly divert Complainant's customers or potential customers to its website. Respondent's subsequent registration and use of the disputed domain name could not be bona fide because it must have been made with knowledge of Complainant's prior rights in the BUDWEISER trademark.

Nor is there any evidence in the record to suggest that Respondent has any legitimate personal or business rights in the <wwwbudweiser.com> domain name. Respondent's use of the disputed domain name is not legitimate noncommercial speech. As of February 6, 2004, the disputed domain name resolves to the domain name <abortionismurder.org>. This website makes no reference to Complainant or the BUDWEISER trademark but rather displays graphic images of aborted fetuses and other related images. It is obvious that Respondent usurps the fame of the BUDWEISER trademark to divert traffic to this website. Courts and Panels addressing such conduct have rejected efforts to characterize such usage as legitimate noncommercial or fair use of a trademark. See e.g. Planned Parenthood Federation of Am. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997); Advance Magazine Publishers Inc. v. Buy This Domain, WIPO Case No. D2002-0803 (November 1, 2002).

Accordingly, the Panel determines that the Respondent has no rights or legitimate interests in the disputed domain name, <wwwbudweiser.com>.

C. Registered and Used in Bad Faith

Turning to the issue of bad faith, the Panel concludes that the Respondent has registered and is using the disputed domain name <wwwbudweiser.com> in bad faith. Evidence of bad faith includes, among other things, registering and using an identical or confusingly similar domain name to intentionally attract, for commercial gain, Internet users to the Respondent's website. (the Policy, paragraph 4(b)(iv)).

The registration and use of the confusingly similar domain name <wwwbudweiser.com> and its resolution to the "www.abortionismurder.org" website is being used by Respondent to create improper leverage against Complainant. This arrangement improperly diverts Complainant's customers and potential customers to the "www.abortionismurder.org" website where graphic images of aborted fetuses and other related images are displayed. This arrangement is designed to make Complainant so uncomfortable that it may feel compelled to purchase the disputed domain name from Respondent to resolve the problem. The record shows that Respondent has previously offered to sell the disputed domain name and has engaged in such illegitimate practices with other domain names. Such conduct is evidence of bad faith. See Dell Computer Corporation v. High Traffic Domains inc., and High Traffic Pro-Life Domains Only $999/Pro-Life Domains RockBottom Prices, WIPO Case No. D2003-0282 (June 6, 2003).

The fact that Respondent registered and uses a domain name that incorporates a common typing mistake also evidences an intent to deceive the public and constitutes bad faith. Courts have described this conduct as "typosquatting" and deemed it "a classic example" of a bad faith domain name registration. Shields v. Zuccarini, [2001] USCA3 120; 254 F. 3d 476, 484 (3d Cir. 2001). See also Victoria's Cyber Secret Limited v. V Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1351 (S.D. Fla. 2001); Porsche Cars North America, Inc. v. Spencer, 55 U.S.P.Q. 2d 1026, 1031 (E.D. Cal. 2000).

Moreover, the record contains numerous examples of Respondents using similar improper tactics with respect to other domain names. See for example, America West Airlines v. Azra Kahn, NAF Case No. FA0301000140626 (February 21, 2003); British Sky Broadcasting Group Plc., British Sky Broadcasting Limited v. Anti-Globalization Domains, WIPO Case No. D2003-0912 (December 30, 2003); (Prada S. A. v. Domains For Sale Inc., WIPO Case No. D2002-0512 (July 30, 2002); Wells Fargo & Co. v. Azra Kahn, NAF Case No. FA0211000135009 (January 3, 2003). Such conduct is further evidence that Respondents are deliberately manipulating the domain name registration system and engaging in a bad faith scheme to coerce Complainant to obtain an improper commercial benefit.

Accordingly, the record contains ample evidence for this Panel to conclude that the Respondent has registered and is using the disputed domain name <wwwbudweiser.com> in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <wwwbudweiser.com> be transferred to the Complainant.