WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BuzzFeed, Inc. v. Victory Media One
Case No. D2021-1491
1. The Parties
Complainant is BuzzFeed, Inc., United States of America (“United States”), represented by Arent Fox LLP, United States.
Respondent is Victory Media One, United States.
2. The Domain Name and Registrar
The disputed domain name <recipestasty.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 May 13, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2021, 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 Complainant on May 18, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 21, 2021.
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 Respondent of the Complaint, and the proceedings commenced on June 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 22, 2021.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on July 1, 2021. 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
Complainant, BuzzFeed, Inc., is a provider of Internet media, news and entertainment. Complainant has developed and operates a food and lifestyle brand using the trademark TASTY. Complainant owns several trademark registrations in the United States for its TASTY mark in connection with its services including Registration Nos. 5,148,918 (which was filed on September 14, 2015 and issued to registration on February 28, 2017); 5,734,001 (which issued to registration on April 23, 2019); and 5,274,743 (which issued to registration on August 29, 2017). Complainant offers and promotes its TASTY services through a website at <tasty.co> and on social media platforms such as Facebook and YouTube.
Respondent registered the disputed domain name on March 7, 2016. Respondent has used, and continues to use, the disputed domain name for a website that offers recipes and cooking content, and which features a number of promotions for various products and services.
5. Parties’ Contentions
Complainant contends that it has strong rights in its TASTY mark in connection with its services on account of its use of the TASTY brand, and associated sub-brands such as Proper TASTY, since mid-2015 and through its trademark registrations. Complainant maintains that it owns multiple sub-brands that use the TASTY matk, such as PROPER TASTY, BIEN TASTY, TASTY DEMAIS, and TASTY VEGETARIAN, and that these subrands have millions of Facebook followers. Complainant also contends that “[b]y the time Respondent registered the Disputed Domain Name on March 7, 2016, BuzzFeed’s TASTY brand was immensely popular and a significant revenue stream for BuzzFeed. In February 2016, BuzzFeed’s TASTY Facebook page already had 41 million followers, and in that month alone BuzzFeed’s TASTY-related partnerships with numerous parties in the United States and the UK resulted in almost $500,000 of revenue for the company.”
Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s TASTY mark as the disputed domain name wholly incorporates the TASTY mark with the term “recipes” which is “directly pertinent to the services the consuming public has come to recognize as offered by [Complainant] under the TASTY mark.”
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) is making unauthorized use of Complainant’s TASTY mark, (ii) is using the disputed domain name for a website that features content that directly competes with Complainant’s TASTY services and has done so using a logo similar to the one used by Complainant as well as images and other content from Complainant’s TASTY platforms, (iii) has no affiliation or connection with Complainant, (iv) has never received any authorization or consent from Complainant to use the TASTY mark, and (v) is not commonly known by the disputed domain name.
Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith as Respondent “chose the Disputed Domain Name in an effort to free-ride off of [Complainant’s] hard-earned goodwill in the TASTY mark.” In particular, Respondent has used the disputed domain name to confuse consumers into visiting Respondent’s competing website. Complainant also notes that Respondent’s inclusion of small and “nearly undetectable” disclaimer at the bottom of its website actually reinforces Respondent’s bad faith conduct by showing that Respondent had prior knowledge of Complainant and its TASTY mark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Here, although Respondent has failed to respond to the complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the TASTY mark in connection with its food and lifestyle online channel. Complainant has provided evidence that it owns trademark registrations for the TASTY mark, and that Complainant has used the TASTY mark with its services and on its social media platforms well before Respondent registered the disputed domain name in March 2016.
In that regard, the Panel notes that while Complainant’s trademark registrations issued after Respondent registered the disputed domain name, Complainant had filed an application for its TASTY mark in September 2015 (with a claim of first use on July 31, 2015) which issued to registration on February 28, 2017 (Registration No. 5,148,918). In addition, Complainant provided evidence that it used its TASTY mark on social media platforms in connection with cooking content since late July 2015 and that Complainant’s TASTY related social media pages have enjoyed millions of followers. This particular aspect of the timing of the trademark registrations and the disputed domain name is of particular relevance to the third element. In any event, the Panel accepts that Complainant has rights in the TASTY name and mark.
With Complainant’s rights in the TASTY mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s TASTY mark as it incorporates the TASTY mark in its entirety. The addition of the word “recipes” does not prevent a finding of confusing similarity between Complainant’s TASTY mark and the disputed domain name and as the TASTY mark is clearly recognizable in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s TASTY mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the evidence submitted in this proceeding, none of which is contested, it appears that Respondent has only used the disputed domain name in connection with a competing website that prominently features the TASTY name and mark with a logo that is quite similar to the one used by Complainant for its TASTY brand. Indeed, Respondent’s logo is presented on its website in much the same way as Complainant displays its logo on its website and the look and feel of Respondent’s logo is quite similar to Complainant’s logo.
In essence, the website at the disputed domain name is promoting similar content as provided by Complainant under its TASTY mark and is doing so using Complainant’s TASTY mark, elements that conjure up Complainant and photographs and other content that appear to be taken from Complainant’s TASTY platforms. The Panel notes that the manner in which Respondent displays its logo for “Recipes Tasty” is in the same format that Complainant has used for its sub-brands, namely, showing the term used for the sub-brand above and in a much smaller size than the primary TASTY mark. Such use of the disputed domain name to piggyback on the reputation and goodwill of another in order to offer competing services does not constitute a bona fide offering of goods and services or a legitimate interest. See WIPO Overview 3.0 at section 2.5.3.
The fact that Respondent registered the disputed domain name in March 2016 before Complainant secured its trademark registrations for the TASTY mark does not provide Respondent with a legitimate interest. The evidence before the Panel shows that while Complainant’s trademark registrations were issued after Respondent registered the disputed domain name, Complainant filed an application for its TASTY mark in September 2015 with a claim of first use on July 31, 2015 (which issued to registration on February 28, 2017 (Registration No. 5,148,918)). In addition, the evidence submitted by Complainant shows that Complainant was using its TASTY mark on social media platforms in connection with cooking content since late July 2015 and that before Respondent registered the disputed domain name Complainant’s TASTY related social media pages already had millions of followers. Given that Respondent used a similar logo, and a format and look, that mirrored Complainant’s Proper TASTY sub-brand which Complainant commenced use of in December 2015, suggests that Respondent saw a good thing and wanted to take advantage of such for its own profit. Indeed, Respondent at some point started to use Complainant’s own TASTY stylized rendition in its Facebook profile picture. Moreover, Respondent included a tiny disclaimer at the very bottom of its website that some web users would need a magnifying glass to find, thereby suggesting that Respondent was well aware of Complainant when it registered and started using the domain name to offer competing content and services.
Given that Complainant has established with sufficient evidence that it owns rights in the TASTY mark, and given Respondent’s above noted actions and failure to appear in this matter, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Given Respondent’s actions and lack of rights in the TATSY mark, as noted above, and its failure to appear in this proceeding,1 it is easy to infer that Respondent’s registration and subsequent use of the disputed domain name with a website to promote competing cooking content and services for Respondent’s profit has been done in bad faith. Given that Complainant had established rights in the TASTY name and mark prior to when Respondent registered the disputed domain name in March 2016, it is evident that Respondent opportunistically registered and used the disputed domain name for purposes of profit at the expense of Complainant and its rights in the TASTY mark. That this is the case is further supported by the fact, as Complainant asserts, that “the website resolving from the Disputed Domain Name is replete with the use of exclusive copyrights owned by BuzzFeed’s in its original proprietary photographs and videos, which were copied directly from BuzzFeed’s TASTY platforms, such as its YouTube page.”
Accordingly, the Panel finds that Complainant succeeds under this element 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 <recipestasty.com> be transferred to Complainant.
Date: July 15, 2021
1 In addition to the attempts by the Center to notify Respondent of the Complaint, it is noted by Complainant that:
“BuzzFeed, by and through its investigator, has made multiple attempts to contact Respondent, but has yet to receive any response to date.”