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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.

4. Factual Background

The Complainant is the owner of three trademark registrations as follows:

MARK &

JURISDI

CTION

DATE

REGIS

TERED

REG. NO INT’L 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 arrangedvia the Internet; organization

and automation of direct

consumer-to-consumer marketing campaigns via the

Internet; promotional

marketing services; directmarketing services;

organizing and facilitating a

community of consumer- based marketers of new

 products and services;

automated grass roots

marketing campaigns via theInternet; conducting

marketing studies and

consumer research;

developing promotionalcampaigns for businesses;

 promoting the goods andservices of others by means of 

a preferred customer program

online featuring consumer-to-

consumer communications;

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 promoting the goods and

services of others by means of 

word-of-mouth andnontraditional marketing

 program; providing

information about the goodsand services of others via the

Internet.

42 Application service provider 

(ASP) featuring programmanagement 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; organizationand automation of direct

consumer-to-consumer 

marketing campaigns via theInternet; 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; conductingmarketing studies and

consumer research;

developing promotionalcampaigns 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 andservices of others by means of 

word-of-mouth and non-

traditional marketing program; providing

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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’ registrationof 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 anexample of typo domain name with ’[t]’ missing”.

The Complainant contends that the Respondents have no rights or legitimate interests inrespect 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) and4(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 containingsponsored 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 andservices.”

B. Respondent

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 itwas 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’strademark 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 indefending its rights to the Disputed Domains, Respondent stipulates for the Panel to

transfer the Disputed Domains to Complainant”.

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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., NAFClaim 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 , WIPOCase No. D2000-0207 (May 5, 2000); Boehringer Ingelheim International GmbH v.Modern Limited - Cayman Web Development , NAF Claim No. 133625 (Jan. 9, 2003,).

6. Discussion and Findings

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.

A. Identification of the Respondent

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 mayaddress 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.

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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 theComplaint. 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 theabove 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 isa 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 reportsreceived by the Center after the notification of the Complaint to the Respondent.

B. Identical or Confusingly Similar

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 thatdate 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 BZZAGENTcomprises 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 relevantcomparison 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;

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 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 theComplainant.

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 bythe 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 thereforeconfusingly 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.

C. Rights or Legitimate Interests

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 preparationsto 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 commonlyknown 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 totarnish 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 needonly 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

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 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 toattract Internet traffic based solely on the appeal of a commonly used descriptive phrase,

even where the domain name may coincidentally and unintentionally correspond to theregistered 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. DHLVirtual 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, paragraph2.2). 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 noground 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 thesame industry sector as the Complainant’s trademark and thereby attempting

illegitimately to intentionally trade on the mark of another to lure Internet users to theRespondents’ website offering services that are competitive with the Complainant’sservices. 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 Parisiand "Madonna.com" , WIPO Case No. D2000-0847 the panel stated that “use whichintentionally 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 inconnection 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 thesecond element of the Policy.

D. Registered and Used in Bad Faith

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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 thetrademark 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 tomake 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 enquirieshaving been made. Paragraph 2 of the Policy clearly states: “It is your [the domain nameholder’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 someoneelse’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 , WIPOCase 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, WIPOCase 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 domainname similar to this mark without knowing of it. (See TPI Holdings, Inc. v. RoxaneGwyn, 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;

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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 carryno 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’strademark 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 websiteoperated 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 purposefor 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. TraveritoTraverito, 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 theDisputed 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 representthat, 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 involvedin 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 theonly 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 suchrequest, or to draw inferences from matters on which the parties may or may not have

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 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 theavailable 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 Panelobserves 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 thePanel 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 doingso 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.

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 <bzzagen.com> be transferred to the

Complainant.

 Nicholas WestonSole 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.

 

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