Shutterfly.com, Inc. v. Carla Douglas a/k/a Dave Smith a/k/a Ted Spencer a/k/a Jen Hansen a/k/a Nick Jones a/k/a Carla Williams a/k/a Chris Hansen a/k/a Chris Rogers a/k/a Ted Smith a/k/a Dave White a/k/a Joe Jackson a/k/a Joe Williams a/k/a Nick White a/k/a Dave Rogers a/k/a Gideon Blair a/k/a Carla Rogers a/k/a Ted Rogers a/k/a Dave Spencer a/k/a Carla Hansen a/k/a Ted Stern a/k/a Jan Jones a/k/a Jacob Sheppard a/k/a Lisa Durham a/k/a Dave Jackson a/k/a Nick Jones a/k/a Joe Stern a/k/a Ted Williams a/k/a Yazmin Wheeler a/k/a Dave Stern a/k/a Ted Douglas a/k/a Mike Hansen a/k/a Jan White a/k/a Ted Jones a/k/a Carla Smith a/k/a Jen Rogers a/k/a Mike Smith a/k/a Mike Douglas a/k/a Joe Douglas a/k/a Taylor Nash
Claim Number: FA0801001141116
Complainant is Shutterfly.com, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <ahutterfly.com>, <chutterfly.com>, <dhutterfly.com>, <hsutterfly.com>, <hutterfly.com>, <sgutterfly.com>, <shetterfly.com>, <shhutterfly.com>, <shotterfly.com>, <shtuterfly.com>, <shurterfly.com>, <shutherfly.com>, <shutrerfly.com>, <shuttarfly.com>, <shutteefly.com>, <shutteerfly.com>, <shutterefly.com>, <shutterffly.com>, <shutterfli.com>, <shutterflly.com>, <shutterflt.com>, <shutterfy.com>, <shutterrfly.com>, <shuttertfly.com>, <shuttetfly.com>, <shuttetrfly.com>, <shuttherfly.com>, <shuttirfly.com>, <shuttorfly.com>, <shuttrefly.com>, <shuttrerfly.com>, <shuttrrfly.com>, <shutturfly.com>, <shuttwrfly.com>, <shutyerfly.com>, <shuutterfly.com>, <shuyterfly.com>, <shytterfly.com>, <sjutterfly.com>, <sshutterfly.com>, <suhtterfly.com>, and <wshutterfly.com>, registered with Enom, Inc.
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 February 5, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ahutterfly.com>, <chutterfly.com>, <dhutterfly.com>, <hsutterfly.com>, <hutterfly.com>, <sgutterfly.com>, <shetterfly.com>, <shhutterfly.com>, <shotterfly.com>, <shtuterfly.com>, <shurterfly.com>, <shutherfly.com>, <shutrerfly.com>, <shuttarfly.com>, <shutteefly.com>, <shutteerfly.com>, <shutterefly.com>, <shutterffly.com>, <shutterfli.com>, <shutterflly.com>, <shutterflt.com>, <shutterfy.com>, <shutterrfly.com>, <shuttertfly.com>, <shuttetfly.com>, <shuttetrfly.com>, <shuttherfly.com>, <shuttirfly.com>, <shuttorfly.com>, <shuttrefly.com>, <shuttrerfly.com>, <shuttrrfly.com>, <shutturfly.com>, <shuttwrfly.com>, <shutyerfly.com>, <shuutterfly.com>, <shuyterfly.com>, <shytterfly.com>, <sjutterfly.com>, <sshutterfly.com>, <suhtterfly.com>, and <wshutterfly.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 12, 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 postmaster@ahutterfly.com, postmaster@chutterfly.com, postmaster@dhutterfly.com, postmaster@hsutterfly.com, postmaster@hutterfly.com, postmaster@sgutterfly.com, postmaster@shetterfly.com, postmaster@shhutterfly.com, postmaster@shotterfly.com, postmaster@shtuterfly.com, postmaster@shurterfly.com, postmaster@shutherfly.com, postmaster@shutrerfly.com, postmaster@shuttarfly.com, postmaster@shutteefly.com, postmaster@shutteerfly.com, postmaster@shutterefly.com, postmaster@shutterffly.com, postmaster@shutterfli.com, postmaster@shutterflly.com, postmaster@shutterflt.com, postmaster@shutterfy.com, postmaster@shutterrfly.com, postmaster@shuttertfly.com, postmaster@shuttetfly.com, postmaster@shuttetrfly.com, postmaster@shuttherfly.com, postmaster@shuttirfly.com, postmaster@shuttorfly.com, postmaster@shuttrefly.com, postmaster@shuttrerfly.com, postmaster@shuttrrfly.com, postmaster@shutturfly.com, postmaster@shuttwrfly.com, postmaster@shutyerfly.com, postmaster@shuutterfly.com, postmaster@shuyterfly.com, postmaster@shytterfly.com, postmaster@sjutterfly.com, postmaster@sshutterfly.com, postmaster@suhtterfly.com, and postmaster@wshutterfly.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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ahutterfly.com>, <chutterfly.com>, <dhutterfly.com>, <hsutterfly.com>, <hutterfly.com>, <sgutterfly.com>, <shetterfly.com>, <shhutterfly.com>, <shotterfly.com>, <shtuterfly.com>, <shurterfly.com>, <shutherfly.com>, <shutrerfly.com>, <shuttarfly.com>, <shutteefly.com>, <shutteerfly.com>, <shutterefly.com>, <shutterffly.com>, <shutterfli.com>, <shutterflly.com>, <shutterflt.com>, <shutterfy.com>, <shutterrfly.com>, <shuttertfly.com>, <shuttetfly.com>, <shuttetrfly.com>, <shuttherfly.com>, <shuttirfly.com>, <shuttorfly.com>, <shuttrefly.com>, <shuttrerfly.com>, <shuttrrfly.com>, <shutturfly.com>, <shuttwrfly.com>, <shutyerfly.com>, <shuutterfly.com>, <shuyterfly.com>, <shytterfly.com>, <sjutterfly.com>, <sshutterfly.com>, <suhtterfly.com>, and <wshutterfly.com> domain names are confusingly similar to Complainant’s SHUTTERFLY mark.
2. Respondent does not have any rights or legitimate interests in the <ahutterfly.com>, <chutterfly.com>, <dhutterfly.com>, <hsutterfly.com>, <hutterfly.com>, <sgutterfly.com>, <shetterfly.com>, <shhutterfly.com>, <shotterfly.com>, <shtuterfly.com>, <shurterfly.com>, <shutherfly.com>, <shutrerfly.com>, <shuttarfly.com>, <shutteefly.com>, <shutteerfly.com>, <shutterefly.com>, <shutterffly.com>, <shutterfli.com>, <shutterflly.com>, <shutterflt.com>, <shutterfy.com>, <shutterrfly.com>, <shuttertfly.com>, <shuttetfly.com>, <shuttetrfly.com>, <shuttherfly.com>, <shuttirfly.com>, <shuttorfly.com>, <shuttrefly.com>, <shuttrerfly.com>, <shuttrrfly.com>, <shutturfly.com>, <shuttwrfly.com>, <shutyerfly.com>, <shuutterfly.com>, <shuyterfly.com>, <shytterfly.com>, <sjutterfly.com>, <sshutterfly.com>, <suhtterfly.com>, and <wshutterfly.com> domain names.
3. Respondent registered and used the <ahutterfly.com>, <chutterfly.com>, <dhutterfly.com>, <hsutterfly.com>, <hutterfly.com>, <sgutterfly.com>, <shetterfly.com>, <shhutterfly.com>, <shotterfly.com>, <shtuterfly.com>, <shurterfly.com>, <shutherfly.com>, <shutrerfly.com>, <shuttarfly.com>, <shutteefly.com>, <shutteerfly.com>, <shutterefly.com>, <shutterffly.com>, <shutterfli.com>, <shutterflly.com>, <shutterflt.com>, <shutterfy.com>, <shutterrfly.com>, <shuttertfly.com>, <shuttetfly.com>, <shuttetrfly.com>, <shuttherfly.com>, <shuttirfly.com>, <shuttorfly.com>, <shuttrefly.com>, <shuttrerfly.com>, <shuttrrfly.com>, <shutturfly.com>, <shuttwrfly.com>, <shutyerfly.com>, <shuutterfly.com>, <shuyterfly.com>, <shytterfly.com>, <sjutterfly.com>, <sshutterfly.com>, <suhtterfly.com>, and <wshutterfly.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shutterfly.com, is a leading
Internet-based personal publishing service which allows consumers to share,
print, and preserve their photographs and other media. Complainant’s products and services enable
consumers, among other things, to upload, edit, organize, share, and print
their digital photos. Complainant has
been using the SHUTTERFLY mark in connection with this business since 1999 and
has gained widespread popularity.
Complainant owns a trademark registration for the SHUTTERFLY mark with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,520,840
issued
Respondent registered each of the disputed domain names on
one of four dates:
Preliminary Issue:
Multiple Respondents
The Panel must first consider whether these proceedings have been properly instituted. UDRP ¶ 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent is operating under various asserted alleged aliases. Additionally, the National Arbitration Forum’s Supplemental Rule 4(f)(ii) requires a Panel to dismiss the Complaint in relation to the domain names it deems to be insufficiently linked to Respondent.
The disputed domain names all redirect to Complainant’s main website through Complainant’s affiliate program, and forward through the same affiliate network account ID. Complainant additionally alleges that the disputed domain names forward traffic through the same software mechanism and IP address. The similarities between the contact information for each of the disputed domain names, including similar names, street addresses, and e-mail addresses also indicates that the disputed domain names are controlled by a single entity. The Panel thus finds that the listed aliases are the same person or entity, or entities controlled by the same person or entity, so that the filing of this Complaint is justified and proper pursuant to Supplemental Rule 4(f)(ii). See Yahoo!, Inc. v. Soksripanich & Others., D2000-1461 (WIPO Jan. 29, 2001) (finding multiple aliases to be the same respondent when the administrative contact information of the various subject domain names was the same or quite similar); see also Yahoo! Inc. & GeoCities v. Data Art Corp., D2000-0587 (WIPO Aug. 10, 2000) (decision rendered against multiple aliases where "the addresses used and the Contacts designated [were] inter-linking and identical.").
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 first finds that Complainant’s registration of the
SHUTTERFLY mark with the USPTO sufficiently establishes Complainant’s rights in
the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum
Next, the Panel notes that each of the disputed domain names
includes the generic top-level domain (“gTLD”) “.com.” Because a top-level domain is a required
element of all domain names, the Panel finds that Respondent’s inclusion of the
gTLD “.com” is irrelevant for the purposes of Policy ¶ 4(a)(i). See 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); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat.
Arb. Forum
Each disputed domain name is a slight variation of Complainant’s SHUTTERFLY mark; Respondent either adds letters to or deletes letters from the mark, substitutes incorrect letters, or juxtaposes existing letters in the mark. The Panel finds that these slight alterations constitute common spelling errors and thus do not sufficiently distinguish the disputed domain names from the mark. Thus, the Panel concludes that the each of the disputed domain names is confusingly similar to Complainant’s SHUTTERFLY mark under Policy ¶ 4(a)(i). See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
The Panel thus concludes that Complainant has satisfied
Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of showing that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, however, the burden shifts to Respondent to show that it does have rights or legitimate interests. Here, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent failed to file an answer to the Complaint in this proceeding. Based on this default, the Panel presumes that Respondent has no rights or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”). However, the Panel will still examine all evidence in the record to determine if Respondent has rights or legitimate interests as contemplated by Policy ¶ 4(c).
Complainant asserts that there is nothing in the record, including the WHOIS information, to suggest that Respondent is commonly known by the disputed domain names. The Panel agrees and finds that, although Respondent is a member of Complainant’s affiliate program, Respondent did not have permission to register domain names incorporating Complainant’s SHUTTERFLY mark. Thus, the Panel finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s disputed domain names all redirect Internet
users to Complainant’s website located at the <shutterfly.com> domain
name, and the Panel presumes that Respondent profits from this practice. The Panel finds that, pursuant to Policy ¶¶
4(c)(i) and (iii), such use does not constitute either
a bona fide offering of goods or
services, or a legitimate noncommercial or fair use of the disputed domain
names. This further indicates
Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Sports
Finally, each of the disputed domain names constitutes a
common misspelling or typing error of Complainant’s SHUTTERFLY mark, and thus
indicates that Respondent is engaged in typosquatting. The Panel finds this to be additional
evidence of Respondent’s lack of rights and legitimate interests under Policy ¶
4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum
The Panel thus finds that Complainant has satisfied Policy ¶
4(a)(ii).
The Panel presumes that Respondent profits when Internet
users type in one of the disputed domain names and is immediately redirected to
Complainant’s website. This practice is
in violation of the affiliate agreement between Complainant and Respondent, and
Respondent is thus capitalizing on the likelihood that Internet users will
believe that Complainant is the sponsor of the disputed domain names. Under Policy ¶ 4(b)(iv),
this indicates that Respondent registered and is using the disputed domain
names in bad faith. See Deluxe Corp.
v.
Furthermore, the Panel finds that Respondent’s typosquatting also indicates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also 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)).
The Panel thus finds that Complainant has satisfied Policy ¶
4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ahutterfly.com>, <chutterfly.com>, <dhutterfly.com>, <hsutterfly.com>, <hutterfly.com>, <sgutterfly.com>, <shetterfly.com>, <shhutterfly.com>, <shotterfly.com>, <shtuterfly.com>, <shurterfly.com>, <shutherfly.com>, <shutrerfly.com>, <shuttarfly.com>, <shutteefly.com>, <shutteerfly.com>, <shutterefly.com>, <shutterffly.com>, <shutterfli.com>, <shutterflly.com>, <shutterflt.com>, <shutterfy.com>, <shutterrfly.com>, <shuttertfly.com>, <shuttetfly.com>, <shuttetrfly.com>, <shuttherfly.com>, <shuttirfly.com>, <shuttorfly.com>, <shuttrefly.com>, <shuttrerfly.com>, <shuttrrfly.com>, <shutturfly.com>, <shuttwrfly.com>, <shutyerfly.com>, <shuutterfly.com>, <shuyterfly.com>, <shytterfly.com>, <sjutterfly.com>, <sshutterfly.com>, <suhtterfly.com>, and <wshutterfly.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 25, 2008
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