Shutterfly.com, Inc. v. Hanjin Wo
Claim Number: FA0801001140703
Complainant is Shutterfly.com, Inc. (“Complainant”), represented by CitizenHawk,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shuttterfly.com>, registered with Rebel.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically 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 firstname.lastname@example.org 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 <shuttterfly.com> domain name is confusingly similar to Complainant’s SHUTTERFLY mark.
2. Respondent does not have any rights or legitimate interests in the <shuttterfly.com> domain name.
3. Respondent registered and used the <shuttterfly.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shutterfly.com, Inc., is an Internet-based
social expression and personal publishing service that enables consumers to
share, print, and preserve digital photographs.
Complainant registered the SHUTTERFLY mark with the United States Patent
and Trademark Office (“USPTO”) on
Respondent registered the <shuttterfly.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.
Complainant registered the SHUTTERFLY mark with the USPTO, thereby establishing rights to the mark pursuant to Policy ¶ 4(a)(i). See 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."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
domain name is confusingly similar to Complainant’s SHUTTERFLY mark because it
merely inserts an additional letter “t” into Complainant’s mark. In Marriott
International, Inc. v. Seocho, FA 149187
(Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant carries the initial burden to demonstrate a prima facie case that Respondent lacks all rights and legitimate interests before the burden shifts to Respondent. Complainant has alleged that Respondent lacks all rights and legitimate interests based on Respondent’s registration information and current use of the disputed domain name. Therefore, the Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), shifting the burden to Respondent. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.”).
Respondent has not responded to the Complaint. In American
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum
When a respondent is commonly known by the disputed domain
name, rights and legitimate interests can be shown under Policy ¶
4(c)(ii). Here, however, the WHOIS
information does not indicate that Respondent is commonly known by the <shuttterfly.com> domain name. Furthermore, Complainant contends that it has
never licensed, authorized, or permitted Respondent to register a domain name
incorporating the SHUTTERFLY mark. As a
result, the Panel concludes that Respondent is not commonly known by the
disputed domain name under Policy ¶ 4(c)(ii).
See Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because the respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use); see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum
Moreover, Respondent is using the disputed domain name to redirect Internet users to its website that displays both competing and unrelated links to third-party websites. Respondent is likely profiting by receiving click-through fees for redirecting Internet users to the displayed links. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel found 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. This Panel also concludes that Respondent’s use of the disputed domain name does not demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
In addition, because the disputed domain name differs from
the SHUTTERFLY mark by only one letter, the Panel finds that Respondent is
engaging in typosquatting. The panel in Encyclopaedia Britannica, Inc. v. Zuccarini,
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name to display
links to third-party websites evidences registration and use in bad faith under
Policy ¶ 4(b)(iv). By receiving
click-through referral fees, Respondent is commercially benefiting from use of
the disputed domain name. Moreover, as a
result of the similarity between Complainant’s SHUTTERFLY mark and the disputed
domain name, there is a likelihood of confusion as to the source, sponsorship,
affiliation, or endorsement of the website that resolves from the <shuttterfly.com> domain name. Therefore, the Panel finds that Respondent’s
use is evidence of registration and use in bad faith under Policy ¶
4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb.
Respondent’s use of the <shuttterfly.com>
domain name is also evidence of registration and use in bad faith under Policy
¶ 4(b)(iii). By displaying competing
third-party links, the disputed domain name is capable of disrupting
Complainant’s business. See Disney Enters., Inc. v. Noel, FA
198805 (Nat. Arb. Forum
Finally, Respondent is typosquatting by using the <shuttterfly.com> domain name. In Zone Labs,
Inc. v. Zuccarini, FA 190613 (Nat.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shuttterfly.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 13, 2008
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