Shutterfly, Inc. v. Names Private WHOIS
Claim Number: FA1111001414009
Complainant is Shutterfly, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Names Private WHOIS (“Respondent”), Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shutterdly.com>, registered with GoDaddy.com, 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 November 2, 2011; the National Arbitration Forum received payment on November 2, 2011.
On November 3, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <shutterdly.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2011 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@shutterdly.com. Also on November 3, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shutterdly.com> domain name is confusingly similar to Complainant’s SHUTTERFLY.COM mark.
2. Respondent does not have any rights or legitimate interests in the <shutterdly.com> domain name.
3. Respondent registered and used the <shutterdly.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shutterfly, Inc., is an Internet-based personal publishing service that enables consumers to share, print, and preserve their photographs. Complainant has registered its SHUTTERFLY.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,962,700 registered June 21, 2005).
Respondent, Names Private WHOIS, registered the <shutterdly.com> domain
name on November 1, 2007. The disputed domain name resolves to a pay-per-click directory, featuring a variety of links to third-party websites that are both unrelated to and competing with Complainant.
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 registered its SHUTTERFLY.COM mark with the USPTO, which sufficiently establishes Complainant’s rights in the SHUTTERFLY.COM mark pursuant to Policy ¶ 4(a)(i), regardless of whether Respondent lives or operates in the same country where the mark is registered. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <shutterdly.com> domain name is confusingly similar to Complainant’s SHUTTERFLY.COM mark as the disputed domain name merely exchanges the letter “d” for the letter “f,” insufficient to distinguish it from Complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). The Panel thus concludes that Respondent’s <shutterdly.com> domain name is confusingly similar to Complainant’s SHUTTERFLY.COM mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant has presented the prima facie case required by Policy ¶ 4(a)(ii), transferring the burden of demonstrating rights and legitimate interests in the disputed domain name to Respondent. Respondent, however, failed to respond to the Complaint and thus has not met the burden of demonstrating rights and legitimate interests. The Panel could assume that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel elects, however, to consider the evidence presented to determine whether Respondent has any rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent is not affiliated with Complainant in any way. Complainant also contends that it has not given Respondent permission to use Complainant’s mark in a domain name. The WHOIS information for the disputed domain name identifies the registrant as “Names Private WHOIS,” which reflects no nominal association with the disputed domain name. The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Saunders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also 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).
Complainant further argues Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name according to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Respondent’s <shutterdly.com> domain name redirects to a directory website with no function other than displaying links to other web pages, many of which compete with Complainant. The directory website presumably creates profits for Respondent through pay-per-click fees. The Panel finds that this is not a bona fide offering of goods or services, and Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Vance Int’l Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Complainant also argues that Respondent’s registration of a disputed domain name that differs by only one letter from Complainant’s mark is an attempt to take advantage of common typographical errors made by Internet users when seeking Complainant. The Panel finds this typosquatting is further evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 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 that Policy ¶ 4(a)(ii) has been satisfied.
Complainant makes no specific bad faith allegations under Policy ¶ 4(b)(iii). Complainant does, however, argue that Respondent uses the disputed domain name to redirect Internet users to a directory website featuring many third-party links offering services in competition with Complainant. This directory page substantially disrupts Complainant’s business because unsuspecting Internet users are directed away from Complainant’s website to competitors’ sites. The Panel finds that such efforts to disrupt Complainant’s business show bad faith registration and use according to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also argues that Respondent’s operation of a pay-per-click directory website at the <shutterdly.com> domain name financially benefits Respondent. The Panel finds that Respondent’s effort to increase traffic to its site and consequently profit by attracting Complainant’s customers is evidence of bad faith registration and use according to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445061 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel also finds that typosquatting is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
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 <shutterdly.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 10, 2011
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