WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BuzzFeed, Inc. v. Domains By Proxy, LLC / Haider Khan
Case No. D2020-2477
1. The Parties
The Complainant is BuzzFeed, Inc., United States of America (“United States”), represented by Arent Fox LLP, United States.
The Respondent is Domains By Proxy, LLC, United States / Haider Khan, Australia.
2. The Domain Name and Registrar
The disputed domain name <buzzfeedzz.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2020. On September 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2020, 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 September 28, 2020, 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 October 2, 2020.
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 October 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2020. The Response was filed with the Center on October 5, 2020.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on October 13, 2020. 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’s Senior Director of Communications, Matthew Mittenthal, has filed a Declaration in Exhibit 4, setting out evidence of the Complainant’s trade, its trade marks and of the Respondent’s website accessed by means of the disputed domain name.
The Complainant, BuzzFeed Inc., incorporated in Delaware is a worldwide leader in internet media, news, and entertainment including celebrity news. It has over 1000 employees worldwide and offices in North America, Europe, Latin America and Asia. It has a global audience of over 520 million users and over 3 billion content views per month.
Over the past six years it and its journalists have been awarded a number of awards as set out in the Declaration including the 2014 and 2016 National Press Foundation Awards and the British Journalism Award.
It is the owner of numerous trade marks throughout the world including in particular a series of BUZZFEED formative marks registered in the United States under US Trade Mark registrations Nos. 3,367,020, 5,576,079, 4,600,026, 6,018,665, 6,018,671, 6,023,090 and 6,023,285. Copies of the certificates of registration are set out in Exhibit 5 to the Amended Complaint. These marks have been used extensively worldwide in connection with its business, including the BuzzFeed website located at the domain name (www.buzzfeed.com). These marks predate the registration of the disputed domain name on January 14, 2018. The Complainant’s marks BUZZFEED have been used in connection with its business for over 18 years.
According to Mr. Mittenthal’s Declaration the Complainant first learned of the registration and use of the disputed domain name <buzzfeedzz.com> in or around July 20, 2020. An investigation showed that the registrant was protected by privacy proxy through Domains By Proxy LLC.
The website accessed by the disputed domain name redirects users to the Respondent’s website which is headed “buzzfeedzz” and is described as “a complete celebrity news and entertainment website”. Mr. Mittenhal points out that the Complainant has never consented to the use of its marks in connection with the disputed domain name and there is no affiliation or connection between the Complainant and the disputed domain name. Extracts from the Respondent’s website are set out at Exhibit 2.
On August 6, 2020, the Complainant’s lawyers at Arent Fox LLP, sent a demand letter to the Respondent requesting that its website be taken down immediately. Moss Uromtah replied the following day on behalf of the Respondent stating that the “Buzzfeedzz.com” website has been taken down”. Although the website was initially taken down it was shortly reactivated leading to further correspondence from Arent Fox LLP on August 10, 2020, and September 3, 2020, pointing out that the website had not been taken down and informing Moss Uromtah that the Complainant would be forced, inter alia, to commence the present Complaint.
On October 5, 2020, in response to service of the Amended Complaint by the Center, Haider Ali Khan responded by email on behalf of the Respondent indicating that:
“If you are willing to buy the domain name from us or would like us to take it down, I am more than happy to transfer the domain to BuzzFeed’s team. However I will be looking forward to an offer.”
In an email later that day he confirmed to the Center that his earlier email of October 5, 2020, should be regarded as “my current Response”.
The position, therefore, is that the Respondent has not submitted a “full” Response and does not counter the evidence adduced by the Complainant. The Panel proceeds to determine this Complaint on the basis of the Complainant’s evidence contained in the Amended Complaint and Mr. Mittenthal’s Declaration.
5. Parties’ Contentions
The Complainant submits:
i. The disputed domain name is confusingly similar to the mark BUZZFEED in which the Complainant has prior registered trade mark rights;
ii. On the evidence, the Respondent has no rights or legitimate interest in respect of the disputed domain name;
iii. On the evidence, the disputed domain name was registered and is being used in bad faith by the Respondent.
The Respondent submits that:
i. The disputed domain name is a completely unique name and website;
ii. The Respondent had no intention to confuse;
iii. The Respondent is willing to transfer the domain name to the Complainant but for a payment.
6. Discussion and Findings
A. Identical or Confusingly Similar
As set out in Section 4 above, the Panel is satisfied that the Complainant owns registrations in the United States and elsewhere in the world for the mark BUZZFEED and that it also trades throughout the world using BUZZFEED.
The Complainant submits that this is a clear example of “typosquatting” whereby a registrant deliberately introduces slight deviations into famous marks for commercial gain. If this is so, it demonstrates that the Respondent is seeking to achieve “confusing similarity”.
In the Panel’s view, on the evidence, the Respondent was by seeking to compete in the same sphere of activity as the Complainant attempting to ensure that users of its website were confused by similarities between BUZZFEED and the disputed domain name.
The only distinction between BUZZFEED as used as the dominant or primary part of the domain name is the addition of the suffix “zz”. It is well-established (and the Complainant sets out a number of authorities to support this view) that the mere addition of extra letters or characters to the domain name can constitute typosquatting and, it follows, confusing similarity.
The Panel also takes the view that there is particular confusion caused in this case by the fact that the middle letters ZZ are a dominant feature of the mark BUZZFEED and the Respondent is repeating the letters “zz” in the disputed domain name.
It is also well-established that the use of a generic Top-Level Domain, in this case “.com”, is not a distinguishing factor.
The Panel follows the reasoning of the panel in Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006, which is cited by the Complainant and finds on the evidence that the disputed domain name is confusingly similar to the Complainant’s mark BUZZFEED because it contains “the primary, distinctive element” of that mark.
The Respondent submits that it had no intention to “confuse any by making them think that we are BuzzFeed”. However in the Panel’s view “intention” is an immaterial factor in deciding whether confusing similarity exists.
Accordingly the Panel finds that the disputed domain name is confusingly similar to the mark BUZZFEED in which the Complainant has exclusive rights within paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In summary, the Complainant submits that it is well-established that an unauthorized party cannot claim a legitimate interest in a domain name that contains, or is confusing with a complainant’s mark. In this case the Respondent has used the disputed domain name to “obviously” exploit the goodwill the Complainant has built in its marks.
It relies upon the well-established panel decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which recognized that given the wide reputation in the complainant’s market is not possible to conceive of a plausible circumstance in which the respondents could legitimately use the disputed domain name. This is the position here where it is established on the evidence that the Respondent’s use of the domain name was for no other purpose than benefitting from and trading off the BUZZFEED marks. This is evidenced by the fact that the content of the Respondent’s website is in the same product category as the content of the Complainant’s website i.e. “celebrity news and entertainment news”, as the Respondent’s website is self-described.
The Complainant also submits that the Respondent is precluded from claiming a right or legitimate interest in the disputed domain name because it had notice of the BUZZFEED marks before any use of or preparation to use the disputed domain name. Moreover, the Complainant had used its own website since August 7, 2002 and made extensive use of the BUZZFEED marks in promoting and marketing its business. The Panel is satisfied that on the evidence the Respondent registered and used the disputed domain name with knowledge of the Complainant’s rights in the marks BUZZFEED.
The Complainant confirms that it has never consented to the Respondent’s use of its marks BUZZFEED so that there is no affiliation or connection between the parties.
There is no evidence that the Respondent is commonly known by the disputed domain name. According to the Registrar, the Respondent is Haider Khan who is the author of the October 5, 2020, email which constitutes the Response.
In that email, Haider Khan merely states that: “we just bought the domain from someone”. This itself is confirmation that the Respondent had no existing right or legitimate interest in the domain name.
Accordingly it follows that on the evidence and taking into account the Response, the Respondent has no rights or legitimate interests in respect of the disputed domain name within paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits that it is clear that the Respondent chose the disputed domain name in order to confuse consumers into visiting its website which in offering “celebrity news and entertainment news” intends to directly compete with it. It points out that there is consistent authority to the effect that such “typosquatting” does not constitute a bona fide offering of goods and services. The Panel agrees with that submission which in its view is also supported by the content of the Respondent’s website as shown at Exhibit 2.
The Complainant also relies upon the fact that the disputed domain name incorporating “buzzfeedzz” is a deliberate misspelling of the mark BUZZFEED. This is an example of “typosquatting” and on the basis of numerous earlier authorities cited by the Complainant in itself evidence of bad faith registration. The Panel agrees with this submission to the effect that “the practice of typosquatting, in and of itself, constitutes bad faith registration” as decided by the panel in Amazon.com. Inc v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517.
The Complainant also submits that the use by the Respondent of a privacy service to keep its personal identity private can be interpreted as evidence of bad faith. There is ample previous authority that this can be evidence of bad faith.
Additionally, the Complainant draws attention to the fact that both Moss Uromtah and Haider Khan purport to be the owner of the disputed domain name and this constitutes the provision of false contact information. In the Panel’s view this adds to the evidence of bad faith as does the unconvincing statement in the email constituting the Response which states: “we just bought the domain from someone.”
However, the Panel finds the evidence of typosquatting to be established. It is satisfied on the evidence, particularly that of its website shown at Exhibit 2 and which is not contradicted by the Response that the Respondent both registered and is using the disputed domain name in bad faith within paragraph 4(a)(iii) of the Policy.
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, <buzzfeedzz.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: October 27, 2020