Shutterfly.com, Inc. v. Total Net Solutions c/o Dan Booker
Claim Number: FA0801001140694
Complainant is Shutterfly.com, Inc. (“Complainant”), represented by CitizenHawk,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shtterfly.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On February 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shtterfly.com> domain name is confusingly similar to Complainant’s SHUTTERFLY mark.
2. Respondent does not have any rights or legitimate interests in the <shtterfly.com> domain name.
3. Respondent registered and used the <shtterfly.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shutterfly.com, Inc.,
is a leading Internet-based social expression and personal publishing service
that primarily provides a wide range of products and services related to the
management of photographs. In 2006 alone
Complainant had approximately 1.7 million customers and earned over 89 million
dollars in 2007. Complainant holds
several trade and service mark registrations for its SHUTTERFLY mark with the
United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,520,840
Respondent registered the <shtterfly.com>
domain name on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s registrations with the USPTO adequately establish Complainant’s rights in the SHUTTERFLY mark for the purposes of Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The <shtterfly.com> domain name is confusingly
similar to Complainant’s SHUTTERFLY mark under Policy ¶ 4(a)(i) as the disputed
domain name contains Complainant’s mark with the deletion of the letter “u”
from the mark, as well as the addition of the generic top-level domain
“.com.” The Panel is unconvinced that
either of these modifications creates a domain name sufficiently distinct from
Complainant’s mark under Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins.
Co. v. Try Harder &
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights
or legitimate interests in the <shtterfly.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove that it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has
established a prima facie case. Due to Respondent’s failure to respond to the
Complaint, the Panel may assume that Respondent does not have rights or
legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum
Respondent is using the <shtterfly.com> domain name on a website that contains links and advertisements for various goods and services, some of which are in direct competition with Complainant. Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to direct users interested in Complainant’s products to a website that advertises competing goods and services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
Additionally, the record and WHOIS information indicates no
evidence suggesting Respondent is commonly known by the <shtterfly.com>
domain name. There is no evidence in the
record that Respondent is authorized to use Complainant’s mark. Thus, Respondent has not established rights
or legitimate interests in the <shtterfly.com> domain name pursuant
to Policy ¶ 4(c)(ii).
See Gallup, Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Additionally, the Panel finds that the <shtterfly.com>
domain name is a typosquatted version of Complainant’s SHUTTERFLY mark, as it
takes advantage of a common typographical error by admitting one letter of the
mark. Such a domain name in and of
itself indicates that Respondent lacks rights and legitimate interests under
Policy ¶ 4(a)(ii).
See Encyclopaedia Britannica, Inc.
v. Zuccarini, D2000-0330 (WIPO
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
In addition, Respondent is using the <shtterfly.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is using Complainant’s mark to attract Internet users to a website that has links which advertise for the goods and services, some of which are Complainant’s competitors. This conduct is evidence that Respondent is attempting to profit by giving the impression of being affiliated with Complainant, in violation of Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”)
Finally, Respondent’s use of a typosquatted domain name
indicates bad faith registration and use under Policy ¶ 4(a)(iii). See Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com>
domain name was a “simple misspelling” of the complainant's DERMALOGICA
mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶
(a)(iii)); see also Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shtterfly.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 20, 2008
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