Shutterfly, Inc. v. Alichec Inc. c/o Brett Alichec a/k/a Oleg Techino a/k/a Balram Brahmin c/o Balram Brahmin a/k/a Belroots Pty Ltd c/o Luis de Carvalho a/k/a Chin-Hui Wu c/o Chin-Hui Wu a/k/a Crystal Image Pty Ltd c/o Antonio Marques a/k/a David Ghou c/o David Ghou a/k/a Denesh Kumar c/o Denesh Kumar a/k/a Denholm Borg c/o Denholm Borg a/k/a Elarson & Associates Pty Ltd c/o Eric Larson a/k/a Domain Administrator a/k/a Lidnick Webcorp Inc c/o Lidnick Webcorp a/k/a Liquid SEO Limited c/o Julian Greenberg a/k/a Loshedina Inc c/o Xi Na a/k/a Luchichang Pty Ltd c/o Luchichang Luchichang a/k/a Marcelos Vainez c/o Marcelos Vainez a/k/a Netmilo c/o Stoyan Bagdanov a/k/a Orel Hlasek LLC c/o Orel Hlasek a/k/a Vlad Obchikov c/o Vlad Obchikov a/k/a Volchar Pty Ltd c/o Domain Administrator a/k/a Web Pescados LLC c/o Augustine Rivera a/k/a Webatopia Marketing Limited c/o Michael Short a/k/a WuWeb Pty Ltd c/o Michael Chung Wu a/k/a ZincFusion Limited c/o Vivian Cox
Claim Number: FA1007001337663
Complainant is Shutterfly,
Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <sautterfly.com>, <shuttercly.com>, <shutterflg.com>, <zhutterfly.com>, <syutterfly.com>, <whutterfly.com>, <shudterfly.com>, <shutterfoy.com>, <shutterflh.com>, <xhutterfly.com>, <shutterfpy.com>, <shugterfly.com>, <ehutterfly.com>, <shutterflyi.com>, <shutgerfly.com>, <shhtterfly.com>, <shutteffly.com>, <shutderfly.com>, <snutterfly.com>, <shutferfly.com>, <shuttdrfly.com>, <shuttervly.com>, <shutterrly.com>, <shuttertly.com>, <shjtterfly.com>, <shufterfly.com>, and <suutterfly.com>, registered with GoDaddy.com, 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 July 27, 2010.
On July 30, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sautterfly.com>, <shuttercly.com>, <shutterflg.com>, <zhutterfly.com>, <syutterfly.com>, <whutterfly.com>, <shudterfly.com>, <shutterfoy.com>, <shutterflh.com>, <xhutterfly.com>, <shutterfpy.com>, <shugterfly.com>, <ehutterfly.com>, <shutterflyi.com>, <shutgerfly.com>, <shhtterfly.com>, <shutteffly.com>, <shutderfly.com>, <snutterfly.com>, <shutferfly.com>, <shuttdrfly.com>, <shuttervly.com>, <shutterrly.com>, <shuttertly.com>, <shjtterfly.com>, <shufterfly.com>, <suutterfly.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 August 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sautterfly.com, postmaster@shuttercly.com, postmaster@shutterflg.com, postmaster@zhutterfly.com, postmaster@syutterfly.com, postmaster@whutterfly.com, postmaster@shudterfly.com, postmaster@shutterfoy.com, postmaster@shutterflh.com, postmaster@xhutterfly.com, postmaster@shutterfpy.com, postmaster@shugterfly.com, postmaster@ehutterfly.com, postmaster@shutterflyi.com, postmaster@shutgerfly.com, postmaster@shhtterfly.com, postmaster@shutteffly.com, postmaster@shutderfly.com, postmaster@snutterfly.com, postmaster@shutferfly.com, postmaster@shuttdrfly.com, postmaster@shuttervly.com, postmaster@shutterrly.com, postmaster@shuttertly.com, postmaster@shjtterfly.com, postmaster@shufterfly.com, postmaster@suutterfly.com by e-mail. Also on August 3, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 30, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
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" through submission of a Written Notice, as defined in Rule 1. 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 <sautterfly.com>, <shuttercly.com>, <shutterflg.com>, <zhutterfly.com>, <syutterfly.com>, <whutterfly.com>, <shudterfly.com>, <shutterfoy.com>, <shutterflh.com>, <xhutterfly.com>, <shutterfpy.com>, <shugterfly.com>, <ehutterfly.com>, <shutterflyi.com>, <shutgerfly.com>, <shhtterfly.com>, <shutteffly.com>, <shutderfly.com>, <snutterfly.com>, <shutferfly.com>, <shuttdrfly.com>, <shuttervly.com>, <shutterrly.com>, <shuttertly.com>, <shjtterfly.com>, <shufterfly.com>, <suutterfly.com> domain names are confusingly similar to Complainant’s SHUTTERFLY mark.
2. Respondent does not have any rights or legitimate interests in the <sautterfly.com>, <shuttercly.com>, <shutterflg.com>, <zhutterfly.com>, <syutterfly.com>, <whutterfly.com>, <shudterfly.com>, <shutterfoy.com>, <shutterflh.com>, <xhutterfly.com>, <shutterfpy.com>, <shugterfly.com>, <ehutterfly.com>, <shutterflyi.com>, <shutgerfly.com>, <shhtterfly.com>, <shutteffly.com>, <shutderfly.com>, <snutterfly.com>, <shutferfly.com>, <shuttdrfly.com>, <shuttervly.com>, <shutterrly.com>, <shuttertly.com>, <shjtterfly.com>, <shufterfly.com>, <suutterfly.com> domain names.
3. Respondent registered and used the <sautterfly.com>, <shuttercly.com>, <shutterflg.com>, <zhutterfly.com>, <syutterfly.com>, <whutterfly.com>, <shudterfly.com>, <shutterfoy.com>, <shutterflh.com>, <xhutterfly.com>, <shutterfpy.com>, <shugterfly.com>, <ehutterfly.com>, <shutterflyi.com>, <shutgerfly.com>, <shhtterfly.com>, <shutteffly.com>, <shutderfly.com>, <snutterfly.com>, <shutferfly.com>, <shuttdrfly.com>, <shuttervly.com>, <shutterrly.com>, <shuttertly.com>, <shjtterfly.com>, <shufterfly.com>, <suutterfly.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shutterfly, Inc., is an Internet-based social expression and personal publishing service that enables consumers to share, print, edit, and preserve their photographs. Complainant owns numerous trademark registrations for the SHUTTERFLY and related marks with the United States Patent and Trademark Office (“USPTO”):
SHUTTERFLY Reg. No. 2,520,840 issued December 18, 2001;
SHUTTERFLY Reg. No. 2,604,030 issued August 6, 2002;
SHUTTERFLY.COM Reg. No. 2,962,700 issued June 21, 2005; and
SHUTTERFLY Reg. No. 3,397,397 issued March 18, 2008.
Respondent registered the <sautterfly.com>, <shuttercly.com>, <shutterflg.com>, <zhutterfly.com>, <syutterfly.com>, <whutterfly.com>, <shudterfly.com>, <shutterfoy.com>, <shutterflh.com>, <xhutterfly.com>, <shutterfpy.com>, <shugterfly.com>, <ehutterfly.com>, <shutterflyi.com>, <shutgerfly.com>, <shhtterfly.com>, <shutteffly.com>, <shutderfly.com>, <snutterfly.com>, <shutferfly.com>, <shuttdrfly.com>, <shuttervly.com>, <shutterrly.com>, <shuttertly.com>, <shjtterfly.com>, <shufterfly.com>, <suutterfly.com> domain names on August 2, 2004. The disputed domain names do not currently resolve to an active website.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) 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.” The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant owns numerous trademark registrations for the SHUTTERFLY and related marks with the USPTO:
SHUTTERFLY Reg. No. 2,520,840 issued December 18, 2001;
SHUTTERFLY Reg. No. 2,604,030 issued August 6, 2002;
SHUTTERFLY.COM Reg. No. 2,962,700 issued June 21, 2005; and
SHUTTERFLY Reg. No. 3,397,397 issued March 18, 2008.
The Panel finds that USPTO trademark registration is conclusive evidence of Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i), regardless of whether Respondent lives or operates in the same country as the trademark registration. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); 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).
Complainant alleges that Respondent’s disputed domain names result from typographical errors of Complainant’s SHUTTERFLY mark that either exchange one letter in Complainant’s mark for a different letter usually adjacent to it on a QWERTY keyboard or insert an additional letter into Complainant’s mark. In addition, all of the disputed domain names append the generic top-level domain (“gTLD”) “.com.” The Panel finds that domain names that are merely commonly misspellings of Complainant’s mark differing in only one letter fail to avoid confusing similarity under Policy ¶ 4(a)(i). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark); see also 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.”). The Panel finds the gTLD “.com” to be of no consequence to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s SHUTTERFLY mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
In keeping with the requirements of Policy ¶ 4(a)(ii), Complainant has presented a sufficient prima facie case against Respondent’s rights and legitimate interests in the disputed domain name. As a result, the burden to demonstrate rights and legitimate interests shifted to Respondent. In failing to respond to the Complaint, however, Respondent has not satisfied this burden or demonstrated any rights and legitimate interests in the disputed domain names. The Panel thus finds that Complainant’s allegations stand uncontested and that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent has not contested the allegation . . . that the Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the Respondent having registered <bancodobrasil.com> but the presumably known existence of the Complainant’s mark BANCO DO BRASIL.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). The Panel elects to consider the evidence in record, however, in light of the Policy ¶ 4(c) in order to make a complete determination on whether Respondent possesses rights and legitimate interests in the disputed domain names.
Complainant argues that Respondent is not commonly known by the disputed domain names. The WHOIS information for the disputed domain names does not indicate any association between Respondent and the disputed domain names. Complainant further asserts that Respondent is not sponsored by or legitimately affiliated with Complainant and has not received permission from Complainant to use Complainant’s mark in any domain name. The Panel thus finds that Respondent is not commonly known by the disputed domain names and therefore lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); 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).
Complainant asserts that all of the disputed domain names
currently fail to resolve to a functioning website displaying content. Complainant contends that Respondent’s
failure to make active use of the disputed domain names is neither a bona fide offering of goods or services
according to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) and establishes no rights or
legitimate interests according to Policy
¶ 4(a)(ii). The Panel agrees with
Complainant. See State Fair of
Complainant contends that all of the disputed domain names result from Respondent’s registration of variations of Complainant’s mark that are typographical errors. The Panel finds that registering such misspelled versions of Complainant’s mark is typosquatting, which indicates a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant alleges that, despite evidence of Respondent’s intent to use the disputed domain names to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, the disputed domain names currently resolve to a non-functioning page with no content because of Respondent’s failure to update the affiliate link correctly. The Panel finds that Respondent’s failure to make an active use of the disputed domain names reveals Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The Panel has previously concluded that Respondent’s registration of the disputed domain name is typosquatting. The Panel finds typosquatting to be evidence in itself of bad faith registration and use under Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds 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 <sautterfly.com>, <shuttercly.com>, <shutterflg.com>, <zhutterfly.com>, <syutterfly.com>, <whutterfly.com>, <shudterfly.com>, <shutterfoy.com>, <shutterflh.com>, <xhutterfly.com>, <shutterfpy.com>, <shugterfly.com>, <ehutterfly.com>, <shutterflyi.com>, <shutgerfly.com>, <shhtterfly.com>, <shutteffly.com>, <shutderfly.com>, <snutterfly.com>, <shutferfly.com>, <shuttdrfly.com>, <shuttervly.com>, <shutterrly.com>, <shuttertly.com>, <shjtterfly.com>, <shufterfly.com>, <suutterfly.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 30, 2010
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