Shutterfly.com, Inc. v. Domain Administration Limited c/o David Halstead
Claim Number: FA0801001140702
Complainant is Shutterfly.com, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shutteryfly.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 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 postmaster@shutteryfly.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <shutteryfly.com> domain name is confusingly similar to Complainant’s SHUTTERFLY mark.
2. Respondent does not have any rights or legitimate interests in the <shutteryfly.com> domain name.
3. Respondent registered and used the <shutteryfly.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shutterfly.com, Inc., is an Internet provider of consumer photography services, including storage, editing, and preservation. Since 1999, Complainant has operated under the SHUTTERFLY mark (Reg. No. 2,520,840 issued December 18, 2001), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant had net revenues exceeding $89 million in 2007. Moreover, Complainant has owned and operated the <shutterfly.com> domain name in connection with its web-based photography operations since 1999.
Respondent registered the <shutteryfly.com>
domain name on
Respondent has also been the respondent in several other
UDRP proceedings wherein the disputed domain names were transferred from
Respondent to the respective complainants in those cases. See Thomson
Educ. Direct Inc. v. Domain Administration Limited c/o David Halstead, FA
843555 (Nat. Arb. Forum
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.
Complainant has offered sufficient evidence to demonstrate its rights in the SHUTTERFLY mark through registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the 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.").
Respondent’s <shutteryfly.com>
domain name integrates Complainant’s entire SHUTTERFLY mark with an additional
“y” and generic top-level domain “.com.”
The addition of a single letter generally does not make a disputed
domain name sufficiently distinct under a Policy ¶ 4(a)(i) analysis. Indeed, the addition of the letter “y” does
not prevent Complainant’s mark from remaining the sole dominant feature of the
disputed domain name. Furthermore, the
addition of the generic top-level domain “.com” is entirely irrelevant when
conducting a Policy ¶ 4(a)(i) analysis.
Therefore, the Panel finds that the disputed domain name is confusingly
similar to Complainant’s mark under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25,
2000) (finding that the top level of the domain name such as “.net” or “.com”
does not affect the domain name for the purpose of determining whether it is
identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and
legitimate interests in the <shutteryfly.com>
domain name. Because Complainant has
successfully asserted a prima facie
case supporting its allegations, Respondent carries the burden to prove that it
does have rights or legitimate interests.
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s <shutteryfly.com>
domain name diverts Internet users to a website that offers links to
third-party competitors of Complainant. Respondent
presumably profits from this enterprise by receiving referral fees from the
advertisers listed on Respondent’s website.
The Panel finds that such a use cannot constitute a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert
Internet users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum
There is no evidence in the record, including the WHOIS
domain name registration information, to suggest that Respondent is commonly
known by the <shutteryfly.com>
domain name. Nothing in the registrant’s
name, “Domain Administration Limited c/o David Halstead,” implies any
connection to the disputed domain name.
Therefore, the Panel finds that Respondent lacks rights and legitimate
interests in the dispute domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
Respondent is engaging in typosquatting, the practice of
registering a domain name to purposely capitalize on common typographical
errors in order to divert those users from the desired website to a
respondent’s website. In this case,
Respondent incorporated Complainant’s entire SHUTTERFLY mark in the disputed
domain name, while adding a “y” between “shutter” and “fly,” in the hopes of
diverting Internet users seeking Complainant’s services to Respondent’s
website. The Panel finds that the
registration of the <shutteryfly.com>
domain name constitutes typosquatting and therefore itself comprises evidence
of Respondent’s lack of rights and legitimate interests in the disputed domain
name. See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and
legitimate interests in the disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the Respondent in numerous other UDRP
proceedings in which the disputed domain names have been transferred from
Respondent to the respective complainants in those cases. See
Thomson Educ. Direct Inc. v. Domain Administration Limited c/o David Halstead,
FA 843555 (Nat. Arb. Forum
The <shutteryfly.com>
domain name resolves to a website that features links to Complainant’s
competitors. Given the confusing
similarity of the disputed domain and Complainant’s mark, the Panel concludes
that Respondent registered the disputed domain name in bad faith primarily to
disrupt Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Respondent’s <shutteryfly.com> domain name diverts
Internet users seeking Complainant’s services to a website that offers links to
third-party competitors of Complainant.
Respondent thus commercially benefits from such diversion due to the
receipt of referral fees from those competitors. Therefore, Respondent has created a
likelihood of confusion as to the source and affiliation of the disputed domain
name and corresponding website for commercial benefit. The Panel finds that Respondent has engaged
in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also State
Fair of
The Panel notes that
evidence of bad faith registration and use is not exhausted in the listed
circumstances in Policy ¶ 4(b). Thus,
the Panel finds that Respondent’s engagement in typosquatting constitutes
itself sufficient evidence of bad faith registration. See Cellular One Group v. Brien, D2000-0028
(WIPO
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 <shutteryfly.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 14, 2008
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