WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BuzzFeed, Inc. v. Steven Asnicar, Urban Executive Pty Ltd

Case No. DAU2019-0027

1. The Parties

The Complainant is BuzzFeed, Inc., United States of America (“United States”), represented by Bird & Bird LLP, Australia.

The Respondent is Steven Asnicar, Urban Executive Pty Ltd, Australia, self-represented.

2. The Domain Names and Registrar

The disputed domain names <buzzfeed.com.au> and <buzzfeedshop.com.au> are registered with Web Address Registration Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2019. On September 17, 2019, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain names. On September 20, 2019, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain names.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 23, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2019. The Response was filed with the Center on September 26, 2019.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 2, 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 is the well-known digital media, news, and entertainment company. According to the Complaint, the Complainant has over 1,000 employees around the world with offices in Australia, North America, Europe, Asia, and Latin America.

The Complainant registered the domain name <buzzfeed.com> in 2002 and has been operating a website offering its services from that domain name since at least November 2006. Materials submitted with the Complaint show that the name “Buzzfeed” has appeared consistently in a slightly stylised form as the banner or header of the home page of that website since at least December 2006.

Amongst other things, the Buzzfeed website includes a “shopping” page located at “www.buzzfeed.com/shopping”.

According to the Complaint, people located in Australia have been accessing the Complainant’s website at <buzzfeed.com> since the website went live in November 2006. The number of visitors to the site from Australia was sufficiently substantial that the Complainant established a section of its website specifically targeting Australia at “www.buzzfeed.com/?country=en-au” in January 2014.

The Complainant says it no longer has data for the number of visitors to or views of its website prior to 2015. Its records show, however, that in 2015 there were 12,743,756,916 page views in total from around the world. Of these, page views by people located in Australia totaled 401,159,582. While there has been some fluctuation in the number of page views by people from Australia in subsequent years, the number of views has nonetheless remained in the order of several hundreds of millions each year.

The Complainant has numerous registered trade marks for BUZZFEED. These include:

- United States Registered Trade mark No. 3,367,020, which was filed on April 17, 2006, and registered on January 8, 2008 in respect of a wide range of services in International Class 35;

- United States Registered Trade mark No. 4,600,026, which was filed on August 28, 2013, and registered on September 9, 2014, in respect of a range of entertainment and current events services in International Class 41;

- Australian Registered Trade mark No. 1,581,356, which was filed on and is registered from September 19, 2013, in respect of a wide range of services in International Classes 35 and 41.

The Respondent registered the first disputed domain name, <buzzfeed.com.au>, on May 6, 2013. The Respondent registered the second disputed domain name, <buzzfeedshop.com.au>, on September 23, 2013.

It appears that the second disputed domain name has always resolved to a parking page only.

In September 2013, one of the Complainant’s in-house lawyers had emailed the Respondent apparently objecting to the Respondent’s registration and use of the disputed domain name. The Respondent replied on October 25, 2013, rejecting the demands and declaring it had no intention of infringing the Complainant’s rights.

The first disputed domain name has resolved to a website which has carried news or informational content at various times. For a period between late 2017 and August 6 this year, however, the second disputed domain name resolved to a website which was simply headed “Coming Soon”.

On August 6, 2019, the Complainant’s present lawyers sent a letter of demand to the Respondent again objecting to its registration and use of the disputed domain names. On that day, or shortly after, the website which the first disputed domain name resolved to contained substantive content again.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered or subsequently used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark and, if so, the disputed domain names must be identical or confusingly similar to the trade mark.

The Complainant has proven that it owns registered trade marks for BUZZFEED in at least both the United States and Australia and, having regard to the extent of use in Australia, the Panel would find that the Complainant also has rights at common law in passing off and, to protect the public against misleading or deceptive conduct (or conduct likely to mislead or deceive) under the Australian Consumer Law, in BUZZFEED as well.

On the question of identity or confusing similarity, what is required is simply a comparison and assessment of each disputed domain name itself to the Complainant’s trade marks: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001. In undertaking this comparison, the Top‑Level Domains such as “.com.au” typically may be disregarded. See, e.g., auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview”), section 1.2. The test, therefore, is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

Applying that approach in the present case including disregarding the Top-Level Domain:

(a) the first disputed domain name is identical to the Complainant’s trade mark; and

(b) the second disputed domain name, which differs from the Complainant’s trade mark only by the addition of the descriptive word “shop” after BUZZFEED, is confusingly similar to the Complainant’s trade mark (see also auDA auDRP Overview, section 1.9).

The Complainant therefore has established the first requirement under the Policy in respect of both disputed domain names.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, supra.

In the present case, it is not in dispute between the Parties that the Complainant has not authorised the Respondent to use either of the disputed domain names. Nor is it in dispute that the Respondent is not associated with or endorsed by the Complainant in any way. The disputed domain names are not derived from the Respondent’s name. There is no evidence that the Respondent has a registered trade mark from which the disputed domain names have been derived.

These matters are generally sufficient to raise the required prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names, especially when regard is paid to how long and extensively the Complainant’s use of its trade mark has been.

The Respondent raises a number of objections to the Complainant’s conduct. The substantive thrust of the objections is that the Respondent uses the first disputed domain name in connection with its business or businesses in providing safety related information. In that connection, the Respondent says that there were a number of domain names clustered around safety which had been registered with “buzz” as an element of the domain name. The Respondent also points to exchange of correspondence in 2013 and contends that the delay in bringing the Complaint has prejudiced the Respondent.

First, it is not clear what “buzz” domain names the Respondent has in mind. In any event, as the Complainant contends, “buzzfeed” is an invented or coined term and not descriptive of safety or any particular thing. It would appear to have significance in relation to news or the provision of information by reason of its adoption and extensive use by the Complainant.

At this point, it is necessary to describe the nature of the website to which the first disputed domain name has resolved over time in more detail.

According to data captured by the Wayback Machine at “www.archive.org”, the first disputed domain name resolved on June 24, 2013, to a parking page with links to domain name sellers and website related activities.

On September 27, 2013, the website was headed:

buzz feed
Safety in Australia
Electrical Safety in Australia

and featured an article “Top Five Best Courses to Do in Australia for Employment”. The article then listed some information and links under the sub-headings:

1. White Card Course
2. RSA or Responsible Service of Alcohol Course
3. Responsible Service of Gambling Course
4. Workplace Bullying Course
5. Food handlers Course.

The website stored by the Wayback Machine on December 22, 2014, included the header BUZZFEED, a search box, links for “Home”, “Buzzing Australia” and “Safety in Australia”. Beneath these were a number of panes or tiles each of which was a link to a different news story; some related to safety, some not.

The website stored by the Wayback Machine for May 8, 2017 was headed:

Buzzfeed Australia (in large, bold type)
Buzzfeed Australia – Live News
Menu:

Buzzing in Australia
Safety in Australia
Breaking News:
NYC – A thunderous explosion rocked a Chelsea street Saturday night injuring at least 29 people,

- Colbert found guilty of manslaughter for second time – COR – Chain of Responsibility Laws
- Blenners Transport sued for nearly $690,000
- BACKLASH TO UNIVERSITY’S GENDER PAY GAP BAKE SALE HIGHLIGHTS ‘TREND OF ONLINE BEHAVIOUR TOWARDS WOMEN’
- Latest Footage at Brussels Bombings

Recent Posts:
[repeats the “Breaking News” items
Best Training Company in Australia

The next capture by the Wayback Machine is dated September 8, 2017. It shows the “Coming Soon” message.

On or shortly after August 6, 2019, the first disputed domain name resolved to a webpage headed “Safety in Australia – Get the Buzzfeed” and then followed a series of posts about safety type issues.

The first post or article is headed Farm hand killed while tree felling ”; the second, “$150,000 fines imposed after deadly duck farm fall”. The headlines and text of these posts appear to be repostings of stories previously published on Worksafe Victoria’s website. Worksafe Victoria is a governmental agency of the State of Victoria.

The third post “Man ordered to pay $200,000 in penalty and court costs for running fake training courses at Launceston businesses” appears to have the same headline and essentially the same text as appears in an article published Adam Holmes on June 2, 2019 by the (Tasmanian) Examiner.

The Respondent explains the gap between 2017 and August 2019 in its use of the first disputed domain name to resolve to an active website as resulting from a restructure and reorganization including a transition to a new platform.

Accepting that explanation at face value, the Respondent’s website includes, or has included, pages with content directed to news and developments about safety. As described above, however, the landing page of the website (when active) has often (if not principally) included general news content. In any event, as the Complainant contends, the services the Respondent appears to be providing from the website to which the first disputed domain name resolves appear to fall within the scope of the Complainant’s registered trade mark in Australia.

The Respondent registered the first disputed domain name before the Complainant registered its trade mark in Australia. The registration of the first disputed domain name occurred, however, many years after the Complainant registered its trade mark in the United States in 2008 and, moreover, many years after the Complainant adopted and began using its trade mark including in Australia in 2006.

Section 124 of the Trade Marks Act 1995 (Cth) does provide a defence to a claim of trade mark infringement for a prior user. To rely on the defence successfully, however, the Respondent must show it has been using “Buzzfeed” continuously in the course of trade in relation to the relevant services before the Complainant first used its trade mark in Australia. On the record in this proceeding, the Respondent cannot do that as its adoption of the first disputed domain name occurred only in 2013, not 2006.

Generally speaking, delay in bringing a complaint does not preclude a successful complaint under the Policy. See auDA auDRP Overview, section 4.10. Australia’s intellectual property statutes permit infringement actions to be brought in respect of conduct in the six years preceding the commencement of the litigation. Monetary remedies cannot be recovered in respect of conduct occurring more than six years earlier, but injunctive relief is available in respect of future conduct. Mere delay, therefore, is not sufficient to disentitle a right owner from bringing infringement proceedings.

In rare cases, a right owner may be estopped from pursuing its claim where the right owner’s conduct has been such as to cause prejudice to the defendant such as by changing its position to its detriment. The Respondent has identified a large number of matters which it says mean it has been prejudiced by the Complainant’s delay. It is appropriate to set them out in full rather than attempt to summarise them:

“- the Complainant is not presenting a full record or a complete assessment of the sites at the time (2013). Accordingly the material provided is not reliable other than to demonstrate the narrow focus of the website to which the first domain name resolved.

- not all evidence can be presented by the Respondent due to the effluxion of time

- a loss of perspective, on what was the true state of affairs at the time (and accepted by the Complainant at the time) in 2013

- the changing nature and focus of the Respondent’s business operations and the evolving nature of the business as new areas of activities become available

- the ability to demonstrate the need to own, control and operate multiple domain names and websites prior to launch of a business, with the necessary antecedent issues. Not all business opportunities or initiatives turn out to be as important as originally thought, when developing up the business opportunity.

- the ability to demonstrate the need to own, control and operate dictionary based and non-dictionary based domain names to support those business opportunities

- the ability to demonstrate the decision to release or retain domain names at the renewal date, depending on the current view of potential business opportunities on a forward looking basis

- the ability to demonstrate the need to operate, maintain and update websites according to business opportunities, specifically when the businesses operate across many diverse markets

- the resources required to deploy and maintain numerous websites across numerous businesses

- the evidence in Annex 5 for the website is from one date – Wayback 04 Feb, 2017; proving that the website was active since 2013. The look and feel of the .com and .com.au sites have been and remain very different, with very different content, with different presentation format, and with a different focus.”

Apart from perhaps the first three matters, it is difficult to see that the matters relied on by the Respondent are relevantly prejudicial.

In relation to the difficulties in presenting evidence, the Respondent’s case is that it has been using the first disputed domain name to provide safety (or workplace safety) related information continuously since 2013. The Respondent has not identified any evidence related to this point that it has not been able to present, particularly bearing in mind what is available through the Wayback Machine. And, as noted above, the Panel accepts for present purposes the Respondent’s claims about the hiatus in use of the first disputed domain name due to restructuring. (In any event, this hiatus occurred between at least September 2017 and August 2019 and so is not affected by what may have occurred in 2013.)

The matters raised by the Respondent do not point to some change in bargaining position; the Respondent’s exposure to the Complainant’s trade mark is the same in 2019 as it was in 2013. Rather than being prejudicial in the relevant sense, the Complainant’s delay has meant that the Respondent has continued to derive benefit from the first disputed domain name. See Fisher v Brooker [2009] UKHL 41 at [79] per Lord Neuberger (rejecting a similar argument based on even longer delay in the context of copyright infringement).

The Respondent also argues that the Policy in force in 2013 was more favourable to it than is the case under the Policy as currently in force. The Response does not identify in what particular ways the Policy as currently in force is less favourable to the Respondent than the Policy as in force in 2013. So far as the Panel is aware, the central requirements of paragraph 4(a) as identified above have remained unchanged. In any event, as the Complainant points out (and the Respondent does not dispute), the registration agreement for the disputed domain name by clause 13 incorporate by reference into the terms of the agreement the policies published by auDA from time to time. Further, amendments to the policies operate as amendments to the registration agreement which by clause 6 of those agreements become binding if the registrant continues to use the services under the agreement. Moreover, the registration of a domain name in the “.au” domain space is effective for up to two years. By clause 11.8, renewal of the registration constitutes agreement to the latest version of the service agreement and the policies as then in force. And, in renewing the registration, the registrant warrants that:

“Your renewal complies with the services agreement, polices and requirements of us and the
relevant registry operator.”

Accordingly, the Panel finds that the delay in the filing of the Complaint since 2013 does not preclude the Complainant from bringing the Complaint.

In these circumstances, the Panel finds that the Respondent has not been using the first disputed domain name in connection with a good faith offering of services since, as discussed above, the Respondent’s services appear to use the name “Buzzfeed” in infringement of the Complainant’s trade mark or services so closely aligned with the services covered by the Complainant’s registered trade mark as to be likely to cause deception or confusion.

The Respondent explains that the second disputed domain name was registered in case the business associated with the first disputed domain name developed along lines where products could be offered for sale via an online shop. The second disputed domain name can be in no better position, therefore, than the first disputed domain name.

Accordingly, on the materials before the Panel in this administrative proceeding, the Complainant has established the second requirement under the Policy.

C. Registered or Subsequently Used in Bad Faith

In contrast to the Uniform Dispute Resolution Policy (UDRP), the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy. That is, these requirements are disjunctive, not conjunctive as under the UDRP.

The requirement of bad faith, as under the UDRP, typically implies an attempt to take advantage of the trade mark significance of the disputed domain name without permission.

In the present case, the Respondent does not deny knowledge of the Complainant or its trade mark when the Respondent registered the disputed domain names. The Respondent does disavow, however, any intention to infringe the Complainant’s rights or otherwise take advantage of the reputation of the Complainant’s trade mark.

Whatever the Respondent’s intentions, objectively it appears that the Respondent’s use of the first disputed domain name conflicts with the Complainant’s rights in its registered trade mark (at least). Such conflict does not qualify as use in good faith under the Policy. Moreover, it seems more than likely that the Respondent was well aware of the reputation of the Complainant’s trade mark in Australia when the Respondent registered the disputed domain names. With such an awareness, the Respondent would, and certainly ought, to have appreciated that there was at the very least a real and not fanciful or remote possibility that people arriving at the Respondent’s website would question whether there was a relationship with the Complainant. See, e.g., Anheuser-Busch, Inc v. Budějovický Budvar, Národní Podnik [2002] FCA 390 at [207].

The mere “parking” of the second disputed domain name qualifies as use in bad faith under the well-known principle in Telstra Corporation Ltd v Nuclear Marshmallows, WIPO Case No. D2000-0003.

Accordingly, the Complainant has established all three requirements under the Policy in respect of both disputed domain names.

6. Decision

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 names <buzzfeed.com.au> and <buzzfeedshop.com.au> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: October 7, 2019