The Complainant is BuzzFeed, Inc., United States of America (“United States”), represented by Arent Fox LLP, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / David Robinson, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2019. On April 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 10, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 15, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2019.
The Center appointed Nicholas Weston as the sole panelist in this matter on May 17, 2019. 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 Complainant operates an online media business founded in or around 2008 with more than 1,000 employees currently and offices in North America, Europe, Asia, and Latin America. The Complainant holds registrations for the trademark BUZZFEED and variations of it in the United States which it uses to designate a range of goods and services from film distribution, media content syndication to training in marketing services. One variation, United States trademark registration No. 4,853,690 for the word BUZZFEED within a ribbon on top of large stylized “U”, for example, shows a first use date of November 30, 2013, and is registered on November 17, 2015, in class 41 for business education and workshops in the field of marketing.
The Respondent registered the Disputed Domain Name on September 6, 2018. The Disputed Domain Name resolves to a website that contains embedded malware and other malicious links. 5. Parties’ Contentions A. Complainant
The Complainant cites several trademark registrations including United States Registration No. 3,367,020 registered on January 8, 2008 for the mark BUZZFEED as evidence of ownership.
The Complainant submits that the mark BUZZFEED has been used extensively on the Internet by its owner and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the BUZZFEED trademark and that the similarity is not removed by the additional letter “u” or the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a website that contains “links to malware and malicious websites”, and contends that the Respondent, having no connection with the Buzzfeed business, has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules, having regard to the distinctiveness and long standing prior use of the Complainant’s trademarks. The Complainant submits that “Respondent is using the Disputed Domain Name to confuse consumers into visiting its website, where Respondent has illegally copied the content of BuzzFeed’s Website and therein embedded malware and other malicious links”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name 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 Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BUZZFEED in numerous jurisdictions including the United States. United States trademark registration No. 4,853,690 for example, contains the word BUZZFEED within a ribbon on top of large stylized “U”, for example, shows a first use date of November 30, 2013, and is registered in class 41 for business education and workshops in the field of marketing. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see, Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the BUZZFEED trademarks, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark BUZZFEED; (b) followed by the letter “u”; (c) followed by the gTLD “.com”.
It is well-established that the gTLD is a technical part of a domain name and may be disregarded for the purposes of finding confusing similarity between the Disputed Domain Name and the Complainant’s trademark (see, Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “buzzfeedu”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the use of a different gTLD (see, Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285; Statoil ASA v. Weiwei Qiu / PrivacyP,WIPO Case No. D2011-1752; Statoil ASA v. Domain Admin/ Management SO Hkg,WIPO Case No. D2012-2392). This Panel finds the Complainant’s trade mark BUZZFEED is well-known.
Numerous previous UDRP panels have found that confusing similarity can result from the practice of “typosquatting”, which arises where the domain name is a slight alphabetical variation from a famous mark (see, LouisVuitton v. Net-Promotion,WIPO Case No. D2000-0430; Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,WIPO Case No. D2001-1314; Playboy Enterprises v. Movie Name Company,WIPO Case No. D2001-1201) or a deliberate misspelling of a trademark (see, Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.WIPO Case No. D2000-0587). In BuzzFeed, Inc. v. Ryan Lenahan,WIPO Case No. D2015-0803 the panel found the disputed domain name in that case “confusingly similar to the Complainant’s marks” notwithstanding the addition of the descriptive word “news” to the Complainant’s trademark. In this case, this Panel finds that the addition of the letter “u” to the Complainant’s trademark is confusingly similar to United States trademark registration No. 4,853,690 for the word BUZZFEED within a ribbon on top of large stylized “U”.
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that once the Complainant puts forward a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to rebut that prima facie case (see, World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of the Respondent’s use, or demonstrable preparations to use, of the Disputed Domain Name in connection with a bona fide offering of goods and services, noting that:
“Respondent is not using the Disputed Domain Name for a bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name […]
Respondent began using the Disputed Domain Name with full knowledge of BuzzFeed’s rights in its Marks […]
BuzzFeed has never consented to Respondent’s use of its Mark in connection with any domain name […]
Respondent is not commonly known by the Disputed Domain Name”.
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. In the absence of a reply by the Respondent, the Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy requires the Complainant to also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent has registered and used the Disputed Domain Name in bad faith.
On the issue of registration, it would be inconceivable that the Respondent might have registered the Disputed Domain Name incorporating the trademark BUZZFEED mark without knowing of it (see, WIPO Overview 3.0, section 3.2.2; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Louis Dreyfus Trademarks B.V. v. David Rosenberg, Louis Dreyfus Commodities,WIPO Case No. D2014-2253: “The Complainant provides ample evidence that the disputed domain name was registered with the sole purpose of having users believe that they were connecting to a website affiliated to the Complainant”).
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see, L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
Further, a gap of ten years between registration of a complainant’s trademarks and a respondent’s registration of the disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see, Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name at least ten years after the Complainant first established trademark rights in the BUZZFEED mark via United States Registration No. 3,367,020 registered January 8, 2008.
On the issue of use, the evidence that the Disputed Domain Name resolves to a website containing malware and other malicious links which, in this Panel’s view, is evidence of bad faith use in accordance with paragraph 4(b)(iv) of the Policy.
Moreover, the Panel has considered whether it should draw an adverse inference from the Respondent’s use of a privacy shield. In the circumstances it seems reasonable to infer that the main purpose the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent or the identity of the Respondent (see, BuzzFeed, Inc. v. Ryan Lenahan, supra; Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito,WIPO Case No. D2007-0542; Ustream.TV, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0598; Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647).
Further, the Panel notes a delivery report from the courier service used by the Center to serve the materials in this case on the Respondent sent on April 17, 2019, indicating the Respondent provided wrong/incomplete contact information when registering the Disputed Domain Name. This Panel therefore infers that the Respondent has used a privacy service in combination with provision of incomplete contact information to conceal the identity of the “true” or “underlying” registrant and accepts this as further evidence of bad faith (See WIPO Overview 3.0, section 3.2).
In this case, the Complainant has a well-known trademark, the Disputed Domain Name resolves to a website containing malware and other malicious links and the Respondent hid behind a privacy service supplied with wrong/incomplete contact information. This Panel regards such conduct as evidence of bad faith use in the absence of a Response.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: May 28, 2019
Full & Egal Universal Law Academy