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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BzzAgent, Inc. v. Bzzing, Inc., Diego Berdakin

Case No. D2009-0295

1. The Parties

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 Bzzing, Inc., Diego Berdakin, both of Los Angeles, California, United States of America.¹

2. The Domain Name and Registrar

The disputed domain name <bzzing.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 5, 2009 by email and on March 10, 2009 in hardcopy. On March 6, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 7, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on March 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2009. The Response was filed with the Center on March 31, 2009.

The Center received a Supplemental Filing from the Complainant on April 3, 2009, consisting of an additional statement and supporting annexes. The Center acknowledged receipt of the same, and informed the parties that such document will be brought to the attention of the Panel (on appointment) for its consideration and discretion.²

The Center appointed William R. Towns as the sole panelist in this matter on April 8, 2009. 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 in the online marketing business utilizing "word of mouth" (WOM) advertising in promotional campaigns relating to its customers` products and services. This general approach to marketing sometimes is referred to as "buzz marketing". The record indicates that the Complainant has operated its business since 2002, and that the Complainant owns federal registrations for the marks BZZ and BZZAGENT, issued by the United States Patent and Trademark Office (USPTO) on April 29, 2006 and April 25, 2006, respectively. The Complainant`s application to register the BZZ mark was filed with the USPTO on June 4, 2003. There is evidence in the record of the Complainant`s use of one or both of these marks in commerce since as early as May 2002, including such use on the Complainant`s website at "www.bzzagent.com".

The Respondent registered the disputed domain name on November 28, 2005.

The record reflects that as of August 11, 2006, the Respondent`s website consisted primarily of content copied directly from the Complainant`s website. Such content was removed from the Respondent`s website after the Complainant notified the host for the Respondent`s site under the applicable provisions of the Digital Millennium Copyright Act (DMCA). At or near the time of the filing of the Complaint herein, the Respondent`s website was being used to promote marketing services (apparently provided by Bzzing, Inc.) competing directly with the Complainant`s services. At present, the disputed domain name resolves to a parking page bearing the legend "under construction. Come back soon!"

5. Parties` Contentions

A. Complainant

The Complainant maintains that the disputed domain name <bzzing.com> is confusingly similar to the Complainant`s registered BZZ and BZZAGENT marks. The Complainant also asserts common law trademark rights in "bzzing" based on prior use, and asserts further rights in "bzzing" based on a pending application before the USPTO to register YOU BZZIN` ME as a mark.

According to the Complainant, this dispute originated in 2006 when the Respondent began copying the Complainant`s website and posting the copied material on the Respondent`s website. The Complainant maintains that the Respondent had no legitimate business reason for copying material from the Complainant`s website, and that the Respondent has intentionally used the disputed domain name to create confusion among Internet users regarding marketing services promoted on the Respondent`s website. The Complainant asserts that Google search results for "bzzing" reflect that the Respondent has not established goodwill or reputation behind this phrase, but is simply using it to capture consumers based on the Complainant`s established marks. Accordingly, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant notes that the Respondent registered the disputed domain name some three years after the Complainant began operating its website, and that the Respondent`s initial website consisted essentially of content copied directly from the Complainant`s site. According to the Complainant, this is indicative of the Respondent bad faith in attempting to attract Internet visitors to the Respondent`s website by creating a likelihood of confusion with the Complainant`s marks. The Complainant asserts that the Respondent has continued to use disputed domain name in bad faith to attract Internet traffic to the Respondent`s website. The Complainant also argues that bad faith can be inferred from the Respondent`s recent use of a Flash-based website, which the Complainant contends hides the Respondent`s webpage from standard online search engines and induces site traffic driven by Internet visitors typing a web address looking for the Complainant`s services.

B. Respondent

The Respondent asserts that he is the sole owner of the disputed domain name. According to the Respondent, he rented the domain name to Bzzing, Inc. in good faith, and Bzzing, Inc. has now removed their information from the Respondent`s website and is in the process of changing their corporate name pursuant to a settlement with the Complainant.

The Respondent denies that the disputed domain name is confusingly similar to any trademark in which the Complainant has rights. The Respondent disputes that the Complainant has trademark rights in the verb "bzzing", which the Respondent insists is generic a permutation of "buzzing", and an onomatopoeia. The Respondent asserts that he registered the disputed domain name prior to the registration of the Complainant`s BZZ and BZZAGENT marks and without any knowledge of the Complainant`s business. The Respondent further asserts, in any event, that the Complainant`s marks are generic and thus not entitled to protection.

The Respondent disclaims any responsibility for the copying of content from the Complainant`s website and the posting of such content on the Respondent`s website. According to the Respondent, once he became aware of the copyright issues with respect to the content on his website he voluntarily removed the copied materials, which the Respondent states had been placed on the website by an "uncooperative, outsourced contractor", who the Respondent subsequently terminated.

The Respondent characterizes Bzzing, Inc. as a "social media marketing" company whose services that are "extremely different" from those of the Complainant. According to the Respondent, not a single customer of the Complainant has been captured as a result of direct traffic to the Respondent`s website, and he describes the Complainant`s allegation in that regard as "ludicrous" and indicative of the Complainant`s attempt at domain name hijacking.

According to the Respondent, Bzzing, Inc.`s use of "bzzing" constitutes a natural and obvious use of that name that does not infringe on the Complainant`s trademarks. The Respondent argues that "buzz marketing" is a common term for a marketing practice that significantly predates the Complainant`s business, and that the disputed domain name was registered because "bzzing" is a commonly used and generic word in the field of marketing. The Respondent further disputes the Complainant`s claim that development of a Flash website is indicative of bad faith, claiming that flash websites are searchable by web search engines including Google. According to the Respondent, this "unequivocally false" claim by the Complainant is further evidence of attempted reverse domain name hijacking.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

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

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

(iii) The disputed domain name has been registered and is being used in bad faith

Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Respondent argues that the Complainant does not have enforceable rights in its BZZ and BZZAGENT marks, asserting that these terms are generic with respect to the promotional services (i.e. "buzz marketing") provided by the Complainant. Under United States trademark law, the registration of the Complainant`s marks by the USPTO at a minimum constitutes prima facie evidence of validity. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Some panel have held this to create a rebuttable presumption that the marks are inherently distinctive, which the respondent has the burden of refuting. Id. Other panels have concluded that a complainant`s holding of a registered mark is sufficient without more to establish rights under the Policy, and that a respondent`s claim that registration should not have been granted or should be revoked is a matter for the courts or trademark authority of the relevant country. See, e.g., Hola S.A. and Hello Limited v. Idealab, WIPO Case No. D2002-0089. See also Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

Given the limited scope of the Policy and this Panel`s narrowly circumscribed jurisdiction, this Panel`s inclination is to adopt the reasoning of the panels in the second line of cases referred to above. See Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635. However even if, for purposes of reaching a decision in this case, the Panel would adopt the reasoning of the first line of cases, the Panel, after careful review the record in this case, finds that the Respondent has not made a sufficient showing to rebut the presumption of validity arising from the USPTO registrations of the Complainant`s BZZ and BZZAGENT marks.

The Panel has considered the registration of the Complainant`s marks in light of the USPTO requirements for registration of a mark on its principal register.<sup>3</sup> The Panel finds no persuasive evidence in the record of this administrative proceeding that would justify the Panel in disregarding the USPTO`s determination the Complainant`s marks are distinctive and entitled to registration. Based on a review of the record, it appears to the Panel that the phrase "buzz marketing" likely has a commonly understood meaning in the marketing industry, and that this term may be descriptive of the WOM-style marketing conducted by the Complainant. However, the Complainant did not seek to register "Buzz Marketing" as a trademark, and the Panel is not prepared based on the limited record before it to disregard the USPTO`s determination that the Complainant`s BZZ and BZZAGENT marks are inherently distinctive in relation to the Complainant`s marketing services.

The Panel therefore concludes that the Complainant has established rights in the BZZ and BZZAGENT marks. The Panel further finds that the disputed domain name <bzzing.com> is confusingly similar to the Complainant`s marks. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. See also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr., WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe`s Internet Cafe, WIPO Case No. D2000-0068. Based on such a comparison, the Panel concludes that the disputed domain name is confusingly similar to the Complainant`s marks.

The fact that the Complainant did not secure the United States registrations of its BZZ and BZZAGENT marks until several months after the Respondent registered the disputed domain name is not material for purposes of the first element of the Policy. Paragraph 4(a)(i) embodies no requirement that a complainant`s trademark rights must have arisen before the disputed domain name was registered. The Policy refers to the complainant`s ownership of trademark rights in the present tense, and it is the consensus view of WIPO UDRP Panelists that a complainant can have rights in a trademark or service mark corresponding to the disputed domain name even where those rights first arose after the registration of the domain name. See, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544; Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598.⁴

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden is shifted to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. It is uncontroverted that the Complainant has not authorized the Respondent to use the BZZ or BZZAGENT marks. The record reflects that the Respondent registered the disputed domain name, which is confusingly similar to the Complainant`s registered marks, and that the Respondent has used or allowed the disputed domain name to be used with a website prior to the filing of the Complainant was advertising marketing services that compete with those of the Complainant, and which at one time consisted largely of content copied directly from the Complainant`s website. This is sufficient in the Panel`s judgment to constitute a prima facie showing under paragraph 4(a)(ii). See, e.g., Document Technologies, Inc., supra; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent`s 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent makes no claim to have been commonly known by the disputed domain name <bzzing.com>. The Respondent maintains, however, that the disputed domain name is a generic term denoting "buzz marketing" and the Respondent asserts that he has the right to register and use the disputed domain name to attract Internet traffic to his website based on its descriptive appeal. A number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is identical or confusingly similar to the registered mark of a complainant, provided it has not been registered with the complainant`s trademark in mind. See, e.g., 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.

Thus, where a respondent registers a domain name consisting of a "dictionary" term because the respondent has a good faith belief that the domain name`s value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).

In this instance, however, the record unequivocally reflects that the Respondent registered a domain name that is confusingly similar to the Complainant`s marks, and then used the domain name to divert Internet users to a website consisting almost entirely of content copied directly from the Complainant`s website, including instances of the unauthorized depiction of the Complainant`s BZZAGENT mark. The Respondent`s claim not to have been aware of the content of his own website simply is not credible, particularly where the Respondent maintains that he registered the disputed domain name for use with a website featuring content regarding buzz marketing. Moreover, since the curtailment of this dubious initial use, the Respondent has used or allowed the disputed domain name to be used further to promote marketing services that compete directly with those of the Complainant.

The Panel does not consider "bzzing" to be a common or "dictionary" term within the contemplation of the prior panel decisions referred to above. Regardless, the circumstances surrounding the Respondent`s use of the disputed domain name – in particular the deliberate copying of the Complainant`s website and unauthorized use of the Complainant`s BZZAGENT mark on the Respondent`s website – are not consistent with a good faith belief that the domain name`s value derives from its alleged generic or descriptive values. To the contrary, the circumstances in the record strongly suggest to this Panel that the Respondent registered the disputed domain name with the Complainant`s rights in its BZZ and BZZAGENT firmly in mind. The Panel finds nothing in the record that reasonably indicates that the Respondent has used the disputed domain name for any purpose other than to exploit and profit from the Complainant`s marks.

In view of the foregoing, the Panel finds that the Respondent`s use of disputed domain name as reflected in the record does not constitute use in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319. Nor, under the circumstances of this case, can the Respondent credibly claim to have made a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. See Covanta Energy Corporation v. Anthony Mitchell, WIPO Case No. D2007-0185 (respondent must demonstrate that the domain name is being used without intent for commercial gain in order to successfully invoke paragraph 4(c)(iii) of the Policy).

Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent`s documented out of pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of the respondent`s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is "to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another". See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Panel considers it a more than reasonable inference from the circumstances discussed under the preceding heading of this decision that the Respondent was aware of the Complainant`s rights or prospective rights in the BZZ and BZZAGENT marks at the time the Respondent registered the disputed domain name. There is evidence of the Complainant`s use of these marks on its website for some three years prior to the Respondent`s registration of the disputed domain name, and the Respondent`s claim not to have known of the Complainant business simply is not credible in view of the Respondent`s initial use of the disputed domain name with a website consisting almost entirely of content copied directly from the Complainant`s website.

The Panel finds the Respondent`s registration of the disputed domain name with knowledge of the Complainant`s existing or prospective trademark rights to be evidence of bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc., WIPO Case No. D2000-1551. The Panel further finds the Respondent`s claim to have used the disputed domain name based only on its attractive qualities as a common or descriptive word unpersuasive, if not pretextual. The Panel concludes from the circumstances in the record that the Respondent registered the disputed domain name in bad faith with the aim of exploiting and profiting from the Complainant`s trademark rights. The Panel further is of the opinion that the Respondent has used the disputed domain name in bad faith in an intentional attempt to attract Internet users to the Respondent`s website for commercial gain, by creating a likelihood of confusion in terms of paragraph 4(b)(iv) of the Policy. See Edmunds.com v. Ultimate Search, Inc., supra.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

E. Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name". To prevail on such a claim, a respondent must show that the complainant knew of the respondent`s strong rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Limited., WIPO Case No. D2000-1224; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. In view of the Panel`s decision, the Panel finds Respondent`s assertion of reverse domain name hijacking domain name to be without merit.

7. 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 name <bzzing.com> be transferred to the Complainant.

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William R. Towns
Sole Panelist

Dated: April 22, 2009