Getty Images (US), Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1205001443660
Complainant is Getty Images (US), Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <istockphot.com>, <istochphoto.com>, and <istockohoto.com>, registered with Internet.Bs Corp.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2012; the National Arbitration Forum received payment on May 11, 2012.
On May 17, 2012, Internet.Bs Corp confirmed by e-mail to the National Arbitration Forum that the <istockphot.com>, <istochphoto.com>, and <istockohoto.com> domain names are registered with Internet.Bs Corp and that Respondent is the current registrant of the names. Internet.Bs Corp has verified that Respondent is bound by the Internet.Bs Corp 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 May 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2012 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@istockphot.com, postmaster@istochphoto.com, and postmaster@istockohoto.com. Also on May 25, 2012, 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 June 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Getty Images (US), Inc., owns the company “iStockphoto,” which began operating in May 2000 and was acquired by Complainant on February 9, 2006. Complainant’s predecessor-in-interest first began using the ISTOCKPHOTO mark on April 7, 2000. Under the ISTOCKPHOTO mark, Complainant operates an online, royalty-free, international microstock photography business that operates with the micropayment business model under the ISTOCKPHOTO mark. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ISTOCKPHOTO mark (Reg. No. 3,440,599 filed on April 18, 2005; registered June 3, 2008). Complainant also owns a trademark registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA660331 filed on October 19, 2004; registered March 7, 2006).
Respondent, PPA Media Services / Ryan G Foo, registered the <istockphot.com> domain name on September 25, 2004; the <istochphoto.com> domain name on September 9, 2005; and the <istockohoto.com> domain name on June 8, 2006. Respondent’s <istockphot.com>, <istochphoto.com>, and <istockohoto.com> domain names resolve to websites that contain third-party hyperlinks, some of which resolve to Complainant’s competitors’ websites. Respondent receives click-through fees from the hyperlinks. Respondent has been a respondent in previous UDRP cases in which Respondent was ordered to transfer disputed domain names to the respective complainants.
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."
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.
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.”).
Complainant owns the company “iStockphoto,” which Complainant claims began operating in May 2000 and was acquired by Complainant on February 9, 2006. Complainant owns a USPTO trademark registration for the ISTOCKPHOTO mark (Reg. No. 3,440,599 filed on April 18, 2005; registered June 3, 2008). See Complainant’s Exhibit E. Complainant also owns a trademark registration with CIPO for the ISTOCKPHOTO mark (Reg. No. TMA660331 filed on October 19, 2004, registered March 7, 2006). Complainant contends that its rights in both the USPTO and CIPO trademark registrations date back to the filing date. In regards to the USPTO trademark registration, the Panel finds that Complainant’s rights in the ISTOCKPHOTO mark date back to the filing date of April 18, 2005. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). However, there is no precedent for finding that the effective date of a complainant’s rights in a CIPO trademark registration is the filing date. Therefore, the Panel concludes that Complainant’s rights in the CIPO trademark registration date back only to March 7, 2006. Thus, the Panel concludes that Complainant’s trademark registrations with the USPTO and the CIPO demonstrate Complainant’s rights in the ISTOCKPHOTO mark under Policy ¶ 4(a)(i), dating back to April 18, 2005, regardless of where Respondent resides or operates. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO); 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 further alleges that Complainant’s predecessor-in-interest first began using the ISTOCKPHOTO mark on April 7, 2000. Under the ISTOCKPHOTO mark, Complainant claims that it operates an online, royalty-free, international microstock photography business that operates with the micropayment business model. The Panel notes that Complainant lists April 7, 2000 as its first-use date on both of its trademark registrations with the USPTO and CIPO. See Complainant’s Exhibit E. Complainant includes the WHOIS information for its <istockphoto.com> domain name, which shows the domain name was created on January 6, 2000. See Complainant’s Exhibit J. Complainant also provides the Panel with articles regarding its business under the ISTOCKPHOTO mark. The Panel notes that the earliest article is from 2008. See Complainant’s Exhibit G. Based on this evidence, the Panel concludes that Complainant owns common law rights in the ISTOCKPHOTO mark under Policy ¶ 4(a)(i). See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also Yarosh Brothers, LLC v. Junk My Cars, FA 1048718 (Nat. Arb. Forum Sept. 12, 2007) (“The Panel finds by virtue of the commercial popularity and success of the domain name Complainant operated under the JUNKMYCAR mark, that Complainant has established common law rights in the JUNKMYCAR mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <istockphot.com>, <istochphoto.com>, and <istockohoto.com> domain names are confusingly similar to Complainant’s ISTOCKPHOTO mark. Complainant claims that all of the disputed domain names contain misspellings of Complainant’s mark that are designed to take advantage of typographical errors made by Internet users when attempting to type in Complainant’s mark. The misspellings featured in the disputed domain names are the removal of a letter or the replacing of one letter with another letter. The Panel concludes that both misspellings fail to adequately distinguish the disputed domain names from Complainant’s mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also 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”). Moreover, the addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain names is not relevant to a Policy ¶ 4(a)(i) analysis because all domain names require a top-level domain. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that Respondent’s <istockphot.com>, <istochphoto.com>, and <istockohoto.com> domain names are confusingly similar to Complainant’s ISTOCKPHOTO mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant avers that Respondent is not commonly known by the disputed domain names. Complainant contends that the WHOIS information, which identifies the registrant of the disputed domain names as “PPA Media Services / Ryan G Foo,” indicates that Respondent is known as an entity other than Complainant’s trademark or the <istockphot.com>, <istochphoto.com>, and <istockohoto.com> domain names. Furthermore, Complainant alleges that Respondent is not sponsored by, or legitimately affiliated with, Complainant and that Respondent is not permitted to use Complainant’s ISTOCKPHOTO mark. Therefore, the Panel finds that Respondent is not commonly known by the <istockphot.com>, <istochphoto.com>, and <istockohoto.com> domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent’s <istockphot.com>, <istochphoto.com>, and <istockohoto.com> domain names resolve to websites that contain third-party hyperlinks. See Complainant’s Exhibit H. Complainant contends that some of the third-party hyperlinks resolve to Complainant’s competitors. The Panel notes that some of the hyperlinks are entitled “FREE STOCK IMAGES,” “FOTOLIA STOCK PHOTOS,” and “Free Stock Photos,” which is evidence that the hyperlinks resolve to competing websites. Complainant claims that Respondent receives click-through fees from the hyperlinks. In light of this evidence, the Panel finds that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <istockphot.com>, <istochphoto.com>, and <istockohoto.com> domain names. See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Respondent has been a respondent in previous UDRP cases in which Respondent was ordered to transfer disputed domain names to the respective complainants. Complainant further argues that Respondent owns other domain names that are straightforward examples of typosquatting on other third parties’ trademarks. See Complainant’s Exhibit O. The Panel finds that the prior UDRP cases involving Respondent sufficiently prove that Respondent registered the <istockphot.com>, <istochphoto.com>, and <istockohoto.com> domain names as a part of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). The Panel treats the registration of other domain names containing the marks of third parties as evidence that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Complainant contends that Respondent registered and uses the <istockphot.com>, <istochphoto.com>, and <istockohoto.com> domain names to achieve a wrongful competitive advantage and commercial gain. Respondent’s disputed domain names resolve to website featuring pay-per-click hyperlinks, some of which resolve to Complainant’s competitors’ websites. Respondent commercially benefits from the disputed domain names as the result of Internet user confusion as to Complainant’s affiliation with the disputed domain names. Therefore, the Panel finds that Respondent registered and uses the <istockphot.com>, <istochphoto.com>, and <istockohoto.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See 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).”).
Complainant finally claims that Respondent’s typosquatting is evidence of Respondent’s bad faith registration and use. Respondent registered misspellings of Complainant’s ISTOCKPHOTO mark in order to take advantage of Internet users’ spelling and typing mistakes. The <istockphot.com>, <istochphoto.com>, and <istockohoto.com> domain names are examples of typosquatting. The Panel concludes that Respondent’s typosquatting further demonstrates Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <istockphot.com>, <istochphoto.com>, and <istockohoto.com> domain names be TRANSFERRED from Respondent to Complainant..
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 2, 2012
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