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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Anheuser-Busch Incorporated v. Fernand Dumas a/k/a The Plant Doctor
Case No. D2001-0651
1. The Parties
1.1 The Complainant is Anheuser-Busch, Incorporated, a corporation having its principal place of business at One Busch Place, St. Louis, Missouri, United States of America.
1.2 The Respondent is Fernand Dumas, a/k/a The Plant Doctor, an individual having an address at 11146 Grapefruit Lane, Punta Gorda, Florida, United States of America.
2. The Domain Names and Registrars
The domain names at issue are <floridabushgardens.com>, <bush-gardens.net>, <bushgardensfl.com>, <bushgardens.net>, <bush-gardens.com>, <bushgardensflorida.com>, <bushfl.com>, and <bushgardensinc.com>, which domain names are registered with Network Solutions, Inc., based in Herndon, Virginia ("NSI"), United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 14, 2001, and the signed original together with four copies forwarded by express courier was received on May 15, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated May 15, 2001.
3.2 On May 17, 2001, a Request for Registrar Verification was transmitted to the registrar, NSI, requesting it to: (1) confirm that the domain names at in issue are registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.
3.3 On May 18, 2001, NSI confirmed by reply e-mail that the domain names at issue are registered with NSI, are currently in active status, and that the Respondent is the current registrant of the names. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on May 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of June 16, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.6 Respondent requested of the WIPO Center and received extensions of time in which to file his Response to and including June 26, 2001.
3.7 A Response was received by email on June 22, 2001, and by hardcopy on July 6, 2001. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on June 25, 2001.
3.8 On July 9, 2001, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was July 22, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
4.1 Complainant registered the service mark Busch Gardens in connection with providing entertainment and amusement park facilities with the United States Patent Office ("USPTO") on December 7, 1971. The registration shows a first use in commerce of June 1, 1959. Complaint, Annex C.
4.2 Complainant has used the BUSCH GARDENS mark in connection with two amusement parks, one located in Williamsburg, Virginia, and the other in Tampa, Florida. Between 1975 and 2000, Complainant has spent in excess of US$175 million in the promotion and advertising of these ventures.
4.3 In the year 2000, over seven million patrons visited the two Busch Gardens amusement parks.
4.4 Respondent registered the eight domain names at issue between April 19, 2000, and May 24, 2000. Complaint, Annex D. Respondent uses the domain names at issue to link to a site to which the domain name <linkfl.com> resolves. Complaint, Annex E. That web site contains links to various web sites, the vast majority of which contain information regarding Florida sites, attractions, commerce, and government.
4.5 Respondent has registered over 90 names, most of which reference Florida, geographical locations in Florida. Complaint, Annex F. A newspaper story concerning Respondent appeared in the Sun Herald newspaper, in which Respondent was described as holding more than 90 domain names, and stated that Respondent wanted to "promote tourism, economic development and retirement in the Sunshine State."
4.6 Respondent incorporated Bush Gardens, Inc., under the laws of the State of Florida on May 8, 2000. Response, Annex A.
4.7 Respondent obtained an Occupational License for tax purposes from the County of Charlotte, State of Florida, to engage in advertising and sales of horticultural products over the Internet on May 17, 2000. Response, Annex B.
4.8 On July 6, 2000, Respondent also obtained a Master Business Licence to conduct business under the name of Bush Gardens at an address in Canada from the Ministry of Finance in Ontario, Canada. Id.
4.9 Respondent opened a business checking bank account for Bush Gardens, Inc. on May 17, 2000. Response, Annex C.
4.10 Respondent, in the name of Fern Dumas, submitted an offer to purchase real property in the County of Charlotte, State of Florida. Response, Annex D.
4.11 Respondent wrote a check in the amount of US$ 37.75 on the checking account of Bush Gardens, Inc. to the Charlotte Sun Herald, allegedly in payment for business software. Response, Annex, E.
4.12 Respondent submitted copies of photographs of plants that were allegedly purchased as inventory for Bush Gardens, Inc. Response, Annex F.
4.13 Respondent incorporated Bush Gardens, Inc. in Ontario, Canada, on June 23, 2000. Response, Annex G.
4.14 Respondent obtained a Vendor Permit from the Ontario government on July 6, 2000, and had business cards printed. Response, Annexes I and J.
4.15 Respondent applied for a trademark from the United States Patent and Trademark Office on February 4, 2001, and from the Canadian Register of Trademarks on February 26, 2001, for the mark BUSH GARDENS INC. Response, Annexes K and L.
4.16 Complainant sent cease and desist letters to Respondent on March 29, 2001, and on April 18, 2001. Complaint, Annex H. Respondent replied that he is engaged in the horticultural business and thus has legitimate rights to the domain names at issue.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered domain names which are confusingly similar to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
5.2 Respondent contends that the domain names at issue are not confusingly similar to Complainant's mark, which is spelled differently, that Respondent has rights and legitimate interests in respect of the domain names at issue, and that Respondent .did not register nor is he using the domain names at issue in bad faith.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.2 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain names; and,
3) that the domain names have been registered and are being used in bad faith.
6.3 Although spelled differently, the Panel believes that seven of the domain names at issue are confusingly similar to Complainant's BUSCH GARDENS mark in that an Internet user seeking to find information concerning Complainant's amusement park might, because of either misspelling or committing a typographical error, be taken to Respondent's web site. Expedia, Inc. v. European Travel Network, ICANN/WIPO Case No. D2000-0137. In this case, the addition of geographic indicators probably increases the likelihood of confusion, since one of Complainant's parks is located in Florida. Wal-Mart Stores, Inc. v. Walmarket Canada, ICANN/WIPO Case No. D2000-0150; CBS Broadcasting, Inc. v. Sale's (NYCBS-DOM), et al., ICANN/WIPO Case No. D2000-0255.
6.4 As to the domain name <bushfl.com>, the Panel does not find that the name is confusingly similar to the trademark of Complainant. An Internet user entering such a domain name is more likely to expect that he or she will be taken to a site that contains information about the current Governor of the State of Florida. In fact, that is exactly what happens. Complaint, Annex I.
6.5 As to the seven other domain names at issues, the Panel must consider whether the Respondent has demonstrated rights or legitimate interests in respect of those domain names.
6.6 Respondent is a resident of the south Florida county of Charlotte. The County is close to and on the same seacoast as Tampa, where Complainant's Florida amusement park bearing the BUSCH GARDENS name is located. As Complainant's amusement parks are well known throughout the United States and are major tourist attractions, it is impossible to believe that Respondent did not know of their name and existence prior to registering the domain names at issue. Respondent never claims such ignorance in the Response. Indeed the first link under the "Amusements" link at Respondent's web site to which the remaining domain names resolve is a link to "Busch Gardens."
6.7 It is also true that Respondent expended sums of money to incorporate Bush Gardens, Inc in two jurisdictions, to obtain business and other licenses, to establish a bank account, to apply for the trademarks BUSH GARDENS, INC. in the U.S. and Canada, etc. All of this activity took place prior to receiving notification of any dispute from Complainant.
6.8 Despite all of Respondent's business preparations allegedly directed at establishing an online horticultural business, the remaining seven domain names all resolve to a web site which contains links to other web sites concerning information about Florida. There is apparently no link to or any mention of Respondent's supposed business venture.
6.9 The Panel is mindful of the limited nature of its jurisdiction. In the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, submitted for the ICANN Board meeting of October 24, 1999 (the "Second Staff Report"), the Staff described the limited nature of the jurisdiction in the following terms:
Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of 'abusive registrations.' Thus, the fact that the policy's administrative resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw. The policy relegates all 'legitimate' disputes -- such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name -- to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.
Second Staff Report, at § 4.1 (emphasis added).
6.10 The Panel believes that it cannot shirk the obligation imposed on it to determine whether the dispute before it is a legitimate dispute, or whether the dispute is one created by a sophisticated cybersquatter bent on creating the illusion of a legitimate dispute. In this case, the Panel believes that Respondent undertook the actions that it did, not to establish a legitimate business, but to profit from the misspellings and typographical errors of those who are seeking information concerning Complainant's amusement parks.
6.11 Thus, Panel finds that Respondent has no rights or legitimate interests in respect of six of the remaining seven domain names at issue.
6.12 The exception concerns the domain name <bushgardensinc.com>. Respondent has registered this domain name as its corporate name, has applied for trademark status for BUSH GARDENS, INC., and has commenced preparations to use this name as a business. The Panel therefore finds that Respondent has rights to and legitimate interests in respect of this domain name. If Respondent actually intends to establish the business that he professes it is his desire to establish, this domain name is a sufficient vehicle. The Panel also notes that on Complainant's web site to which Complainant's domain name <buschgardens.com> resolves, reference is made to "Busch Gardens," to "the Anheuser-Busch Adventure Parks," and to "Busch Entertainment Corporation," but never to "Busch Gardens, Inc."
6.13 Finally, the Panel believes that Respondent has registered and is using the remaining six domain names at issue in bad faith. As stated above, the Panel finds that the six remaining domain names are being used by the Respondent to intentionally attract, for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with Complainant's BUSCH GARDENS service mark as to the source, sponsorship, affiliation or endorsement of the web site or of products or services offered there. Policy, ¶ 4(b)(iv). InfoSpace.com, Inc. v. Tenenbaum Ofer, ICANN/WIPO Case No. D2000-0075; Smoky Mountain Knife Works v. Deon Carpenter, ICANN/DeC Case No. AF-230a and b.
For all of the foregoing reasons, the Panel decides that all of the domain names at issue with the exception of <bushfl.com>are confusingly similar to the mark in which the Complainant has rights, that, with the exception of the domain name <bushgardensinc.com>, the Respondent has no rights to or legitimate interests in respect of the remaining domain names at issue, and that the six remaining domain names at issue have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <floridabushgardens.com>, <bush-gardens.net>, <bushgardensfl.com>, <bushgardens.net>, <bush-gardens.com>, and <bushgardensflorida.com> be transferred to the Complainant.
M. Scott Donahey
Dated: July 20, 2001