The Complainant is BzzAgent, Inc. of Boston, Massachusetts, United States of America, represented by Clock Tower Law Group, United States of America.
The Respondents are bzzagen.com c/o Nameview Inc. Whois IDentity Shield of St. Michael, Barbados / Vertical Axis of St. Michael, Barbados, represented by ESQwire.com, United States of America.
The disputed domain name <bzzagen.com> (the “Disputed Domain Name”) is registered with Nameview Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2010. On July 20, 2010, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the Disputed Domain Name. On July 20, 2010, Nameview Inc. 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 July 27, 2010, 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 amendment to the Complaint on July 27, 2010.
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” 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2010. The Respondent Vertical Axis submitted its Response on August 18, 2010.
The Center appointed Nicholas Weston as the sole panelist in this matter on August 27, 2010. 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.
The Complainant is the owner of three trademark registrations as follows:
MARK & JURISDICTION | DATE REGISTERED | REG. NO | INT’L CLASS | GOODS AND/OR SERVICES |
|
BZZAGENT (United States) |
April 25, 2006 |
3,085,518 |
35 |
Business marketing and business consulting services; grass roots marketing campaigns for others arranged via the Internet; organization and automation of direct consumer-to-consumer marketing campaigns via the Internet; promotional marketing services; direct marketing services; organizing and facilitating a community of consumer-based marketers of new products and services; automated grass roots marketing campaigns via the Internet; conducting marketing studies and consumer research; developing promotional campaigns for businesses; promoting the goods and services of others by means of a preferred customer program online featuring consumer-to-consumer communications; promoting the goods and services of others by means of word-of-mouth and nontraditional marketing program; providing information about the goods and services of others via the Internet. |
|
|
42 |
Application service provider (ASP) featuring program management software in the field of word-of-mouth marketing. | ||
|
BZZAGENT (European Union) |
June 28, 2006 |
910 368 |
35 |
Business marketing and business consulting services; grass roots marketing campaigns for others arranged via the Internet; organization and automation of direct consumer-to-consumer marketing campaigns via the Internet; promotional marketing services; direct marketing services; organizing and facilitating a community of consumer-based marketers of new products and services; automated grass roots marketing campaigns via the Internet; conducting marketing studies and consumer research; developing promotional campaigns for businesses; promoting the goods and services of others by means of a preferred customer program online featuring consumer-to-consumer communications; promoting the goods and services of others by means of word-of-mouth and non-traditional marketing program; providing information about the goods and services of others via the Internet. |
|
|
42 |
Application service provider (ASP) featuring program management software in the field of word-of-mouth marketing. | ||
|
BzzAgent (Canada) |
November 5, 2009 |
TMA752,420 |
Business consulting services, namely developing promotional campaigns for businesses; organization and automation of direct consumer-to-consumer marketing campaigns via the Internet; organizing and facilitating a community of consumer-based marketers of new products and services; conducting marketing studies and consumer research; developing promotional campaigns for businesses; promoting the goods and services of others by means of a preferred customer program online featuring consumer-to-consumer communications; promoting the goods and services of others by means of word-of-mouth programs.. |
The Complainant operates a well-known website located at “www.bzzagent.com” for word-of-mouth media and “buzz” marketing services.
The Disputed Domain Name <bzzagen.com> was registered on November 7, 2006.
The Respondent uses the Disputed Domain Name currently to point to a web page that offers audition, talent and modeling agency services, marketing services and contains advertisements which display links in connection with word-of-mouth, online advertising, social media, modeling agency services and related information.
The Complainant cites its registrations of the trademark BZZAGENT in various countries as prima facie evidence of ownership.
The Complainant submits that its trademark rights predate the Respondents’ registration of the Disputed Domain Name <bzzagen.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark because the Disputed Domain Name “is an example of typo domain name with ’[t]’ missing”.
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name and infers that the Respondents have no trademark rights in or license to use the mark BZZAGENT.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that “Registration of the Domain Name cannot be considered good faith domaining because (1) the Domain Name does not consist of a single descriptive or generic word, (2) the Domain Name does not consist of a combination of descriptive or generic words, and (3) the Domain Name was registered after Complainant's trademark rights had been established” and that the Disputed Domain Name was registered with “a well known typo employed by cybersquatters (typosquatters) and is a classic case of cybersquatting (typosquatting)”. On the issue of use, the Complainant contends that the Respondents use the Disputed Domain Name for a pay-per-click (“PPC”) landing page: a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements. In this case, when the Disputed Domain Name <bzzagen.com> is typed in, the website, to which the Disputed Domain Name resolves, proposes sponsored links for word-of-mouth marketing services including “advertisements for and links to websites of competitors to Complainant's goods and services.”
The Respondent Vertical Axis’s Response denies that the Disputed Domain Name was registered in bad faith and submits that it registered the Disputed Domain Name after it was deleted, expired and became available for registration. The Respondent Vertical Axis had no knowledge of the Complainant or its trademark when it registered the Disputed Domain Name, did not register the Disputed Domain Name with the Complainant’s trademark in mind and never intended to target or profit from the Complainant’s trademark. This submission is repeated in a Statutory Declaration provided by the Respondent Vertical Axis that states, in part, “ We had no knowledge of Complainant or its trade mark when [we] registered the disputed Domain. We did not register the Disputed Domain with Complainant’s trademark in mind and never intended to target or profit from Complainant’s trademark” (“the Respondent Vertical Axis’s Stat. Dec.”). The Respondent Vertical Axis submitted that “in the interest of saving the cost involved in defending its rights to the Disputed Domains, Respondent stipulates for the Panel to transfer the Disputed Domains to Complainant”.
The Respondent Vertical Axis also requested that the Panel issue an order transferring the Disputed Domain Name to the Complainant, without undergoing an analysis under the Policy or issuing an opinion on the merits of the case, citing Texas Medical Center v. Joseph Spindler, NAF Claim No. 886496 (Feb. 19, 2007); Valero Energy Corporation , Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336 (Dec. 22, 2006); Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., NAF Claim No. 212653 (Jan. 13, 2004); Disney Enterprises, Inc. v. Elmer Morales, NAF Claim No. FA 475191 (June 24, 2005); The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 (Jan. 5, 2006); Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207 (May 5, 2000); Boehringer Ingelheim International GmbH v. Modern Limited - Cayman Web Development, NAF Claim No. 133625 (Jan. 9, 2003,).
For the reasons further states below, the Panel has decided to render a decision in this case and will therefore proceed to analyze whether the Complainant has proven the three elements of a claim for transfer of the Disputed Domain Name.
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The proper respondent must first be identified. Indeed, the Panel must be satisfied that any orders made will address the appropriate Respondent or Respondents.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant’s original Complaint named as the Respondent a domain name registration privacy service listed as the registrant of the Disputed Domain Name in the WhoIs database prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent or Respondents. Second, the Panel may address the issue of mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent (or Respondents) by reasonable means.
On July 20, 2010, in response to a request, the registrar Nameview Inc., sent an email to the Center advising that Vertical Axis was the registrant of the Disputed Domain Name.
Vertical Axis was then named as the Respondent in the Complainant’s Amendment to the Complaint. Having regard to the fact that the Disputed Domain Name was registered to “bzzagen.com c/-o Nameview Inc. Whois IDentity Shield” and a Response was filed on behalf of the Respondent Vertical Axis, and taking into account that a domain name does not have a separate legal personality and cannot own itself, and having regard to the above questions as also set out in Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr, WIPO Case No. D2009-0243, this Panel finds that in light of the record the named Respondent bzzagen.com c/o Nameview Inc. Whois IDentity Shield is a proper Respondent, whether on its own behalf or as an agent for Vertical Axis Inc., and that the named Respondent Vertical Axis is also a proper Respondent.
As noted, having regard to the Complainant’s submissions and the location of the principal office of the registrar, it appears that the applicable mutual jurisdiction1 is St. Michael, Barbados.
Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondents by reasonable means. Prima facie evidence of this, apart from the Response by Vertical Axis is the delivery reports received by the Center after the notification of the Complaint to the Respondent.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BZZAGENT in the United States, European Union and Canada. The Panel finds that the Complainant has rights in the mark BZZAGENT that date back to April 2006.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark BZZAGENT; (b) omitting letter “t”; and (c) followed by the top level domain suffix “.com” all in one continuous domain name. The Panel observes that the Complainant’s trademark BZZAGENT comprises the onomatopoeia “bzz” and the descriptive word “agent”.
It is well-established that the top-level designation used as part of a domain name should be disregarded when considering identity or confusing similarity. The relevant comparison to be made is with the dominant part of the Disputed Domain Name: “bzzagen”.
It is also well-established that the omission in a domain name of a single letter typically is not sufficient to make the domain name distinguishable in relation to the trademark at issue (See Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642; Accor v. Howell Edwin, WIPO Case No. D2005-0980; HM Publishers Holdings Limited v. Webserve LLC, WIPO Case No. D2005-0741; Siemens AG v. Simens.Com, WIPO Case No. D2005-0927; Netstock, Inc. v. Music Wave, WIPO Case No. D2002-0441; Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. Amcore & Company For sale domains $250 or best offer, WIPO Case No. D2003-0838). The omission of the letter “t” in the Complainant’s trademark does not serve to differentiate the Disputed Domain Name from the trademark. This is an example of typo-squatting whereby a widely known mark is intentionally misspelled in order to create a domain name that is confusingly similar to the trademark and so create confusion amongst Internet users who are seeking information about the Complainant.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy 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 a complainant need only put forward a prima facie case that a respondent lacks rights or legitimate interests. The evidential burden then 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 of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1).
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name may coincidentally and unintentionally correspond to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, this business model is generally recognized under the Policy as legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see National Trust for Historic Preservation, supra; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview of WIPO Panel Decisions, paragraph 2.2). Insofar as the Disputed Domain Name <bzzagen.com> resembles the Complainant’s trademark BZZAGENT, which comprises the onomatopoeia “bzz” and the descriptive word “agent”, the word “agen” is not a dictionary word. The Respondents make no ground on this issue.
The Complainant’s evidence demonstrates that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a page composed of advertisements and links in connection with the same industry sector as the Complainant’s trademark and thereby attempting illegitimately to intentionally trade on the mark of another to lure Internet users to the Respondents’ website offering services that are competitive with the Complainant’s services. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. In Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 the panel stated that “use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services”. The Complainant provided evidence that typing in the Disputed Domain Name diverts traffic to a webpage that offers audition, talent and modeling agency services, marketing services and contains advertisements which display links in connection with word-of-mouth, online advertising, social media, modeling agency services and related information.
In the absence of a convincing Response, the Panel finds for the Complainant on the second element of the Policy.
The third element of the Policy that the Complainant must also demonstrate is 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.
“b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, [(relevantly)]:
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product . . . .”
The evidence supports the Complainant’s contention that the Respondents registered and have used the Disputed Domain Name in bad faith. The onus is on the respondent to make the appropriate enquiries to ensure that the registration of a domain name does not infringe or violate the third party rights. The Respondent Vertical Axis’s submissions and the Respondent Vertical Axis’s Stat. Dec. make no mention of the appropriate enquiries having been made. Paragraph 2 of the Policy clearly states: “It is your [the domain name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The Respondents’ apparent lack of any good faith attempt to ascertain whether or not the Disputed Domain Name was infringing someone else’s trademark, for example by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oreal v. Domain Park Limited, WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448).
The trademark BZZAGENT is so widely known in the United States for word-of-mouht marketing that it is inconceivable that the Respondents might have registered a domain name similar to this mark without knowing of it. (See TPI Holdings, Inc. v. Roxane Gwyn, WIPO Case No. D2009-0824; TPI Holdings, Inc. v. Elaine Noe, WIPO Case No. D2009-0568; TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361; TPI Holdings, Inc. v. Alfredo Rowland, WIPO Case No. D2008-0960; TPI Holdings Inc. v. Shola Ajiboye, WIPO Case No. D2007-1019). In this Panel’s view, the denial of such knowledge in the Respondent Vertical Axis’s Stat. Dec. and supporting submission carry no weight: (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 where the panel found that a claim that the domain name at issue, <telstra.org>, could have been registered without knowledge of the complainant’s trademark not just implausible, but incredible).
Moreover, the Panel has considered whether it should draw an adverse inference from the Respondent Vertical Axis’s use of a privacy shield. The Disputed Domain Name resolves to a webpage offering competitive products and services to those offered on the website operated by the Complainant’s licensee rather than a website critical of, or satirising, the Complainant’s business which may warrant the use of a privacy service as protection from retribution. In the circumstances it seems reasonable to infer that the main purpose for which the Respondent Vertical Axis has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453; Microsoft Corporation, supra; 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).
A further conclusion can therefore be drawn about the Respondents from their use of the Disputed Domain Name resolving to a webpage containing links and advertisements that directly compete with the offerings to be found on the website operated by the Complainant’s licensee. In this Panel’s view, it is in breach of the “Nameview Domain Registration Agreement” for breach of the warranty [at para 13]: “You further represent that, to the best of your knowledge and belief, neither the registration of the domain nor the manner in which it is directly or indirectly used infringes the legal rights of a third party.”
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous 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).
The Respondents’ consciousness of the inevitability of such a finding is set out in Vertical Axis’s Response, stating as follows: “in the interest of saving the cost involved in defending its rights to the Disputed Domains, Respondent stipulates for the Panel to transfer the Disputed Domains to Complainant.” This Panel is of the view that once a panel seized jurisdiction over a dispute pursuant to the Policy and the Rules, and is the only forum to be invoked by the parties, unless the parties demonstrate potential prejudice to the satisfaction of the panel, it is not the function of a panel, once appointed, to accede to any request the parties, or one of them, make simply because they make such request, or to draw inferences from matters on which the parties may or may not have been able to reach agreement on in relation to issues that the panel is to consider under the Policy, Rules and Supplemental Rules, or to grant an opportunity for a respondent to avoid the possibility of a finding of “bad faith” pursuant to a panel decision based on the available evidence. This Panel has considered the authorities cited by the Respondents and decides to exercise its discretion to determine the matter on its merits rather than base its decision on the unilateral request of the Respondent Vertical Axis. This Panel observes that the Respondent Vertical Axis’s Response elsewhere insists innocence and so by ordering an unconsidered transfer of the Disputed Domain Name, abdication of the Panel’s responsibility to determine the matter by reference to the evidence may make the Panel party to visiting an unfairness on both parties.
This Panel finds that the Respondents have engaged in “typosquatting” by having taken the Complainant’s widely -known trademark BZZAGENT then omitting a single letter, in this case the letter “t”, and incorporating it into the Disputed Domain Name, and in doing so has engaged in diverting Internet users to their webpage for commercial gain without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <bzzagen.com> be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Dated: September 10, 2010
1 In general having regard to the definition of “mutual jurisdiction” in the Rules, it would be that of the registrant as identified in the WhoIs at the time of the filing of the complaint with the provider, see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320.