Getty Images, (US), Inc. v. DOMAIN ADMIN / TARANGA SERVICES PTY LTD
Claim Number: FA1211001470795
Complainant is Getty Images, (US), Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gettyimagens.com>, registered with Moniker Onliine Services Llc.
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 November 12, 2012; the National Arbitration Forum received payment on November 12, 2012.
On November 14, 2012, Moniker Onliine Services Llc confirmed by e-mail to the National Arbitration Forum that the <gettyimagens.com> domain name is registered with Moniker Onliine Services Llc and that Respondent is the current registrant of the names. Moniker Onliine Services Llc has verified that Respondent is bound by the Moniker Onliine Services Llc 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 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@gettyimagens.com. Also on November 20, 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 December 26, 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 name be transferred from Respondent to Complainant.
A. Complainant
i. Respondent has not been commonly known by the disputed domain name where the WHOIS information identifies “DOMAIN ADMIN / TARANGA SERVICES PTY LTD” as the registrant. Complainant has not given Respondent permission to use Complainant’s mark in any way.
ii. Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business, for which Respondent presumably receives “pay-per-click” fees.
i. Respondent is a serial cybersquatter.
ii. Respondent’s disputed domain name diverts potential customers away from Complainant to third-party websites, which disrupts Complainant’s business.
iii. Respondent is using the disputed domain name in connection with generating revenue as a “click through” website, by using Complainant’s registered trademark and providing links to the services and products offered by Complainant to take advantage of Complainant’s mark to achieve a wrongful competitive advantage and commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Getty Images, (US), Inc., is a leading creator and distributor of still imagery, video, and multimedia products, and provider of other forms of digital content, including music. Complainant serves business customers in more than 100 countries. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GETTY IMAGES mark (e.g., Reg. No. 2,656,652, registered December 3, 2002).
Respondent, DOMAIN ADMIN / TARANGA SERVICES PTY LTD,
registered the <gettyimagens.com> domain name on February 17, 2007.
Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
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 trademark registrations with the USPTO for the GETTY IMAGES mark (e.g., Reg. No. 2,656,652, registered December 3, 2002). Although Respondent appears to reside in New Zealand, Policy ¶ 4(a)(i) only requires that Complainant establish its rights in the GETTY IMAGES mark in some jurisdiction. See 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant’s registration of the GETTY IMAGES mark with the USPTO is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <gettyimagens.com> domain name is confusingly similar to Complainant’s GETTY IMAGES mark as the domain name adds an extra character to Complainant’s mark. Respondent adds the letter “n” within the IMAGES portion of Complainant’s GETTY IMAGES mark. The addition of a letter does not distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Respondent removes the space between “GETTY” and “IMAGES” as well. Respondent adds the gTLD “.com” to the end of the disputed domain name. The Panel concludes that Respondent’s removal of a space and addition of a gTLD does not eliminate confusing similarity under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Accordingly, the Panel finds that Respondent’s <gettyimagens.com> domain name is confusingly similar to Complainant’s GETTY IMAGES mark under 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).
Respondent has not been commonly known by the disputed domain name as the WHOIS information identifies “DOMAIN ADMIN / TARANGA SERVICES PTY LTD” as the registrant. Complainant has not given Respondent permission to use Complainant’s mark in any way. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business, for which Respondent presumably receives “pay-per-click” fees. The Panel finds that Respondent’s use of the disputed domain name to feature competing links is not 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 H-D Michigan 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 is a serial cybersquatter. Respondent has been the subject of many UDRP decisions, showing that Respondent has engaged in an ongoing pattern of such behavior. The Panel concludes that Respondent’s prior UDRP proceedings that resulted in findings of bad faith registration and use on Respondent’s part show a pattern of bad faith registration 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).
Respondent’s disputed domain name diverts potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. Respondent’s advertised links featured on its page promotes products that compete with Complainant. The Panel concludes that Respondent’s use of the disputed domain name to feature competing links demonstrates disruption of Complainant’s business in bad faith under Policy ¶ 4(b)(iii), which show bad faith registration and use under Policy ¶ 4(a)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Respondent is using the disputed domain name in connection with generating revenue as a “click through” website, by using Complainant’s registered trademark and providing links to the services and products offered by Complainant to take advantage of Complainant’s mark to achieve a wrongful competitive advantage and commercial gain. Respondent likely receives revenue for each misdirected Internet user. The Panel concludes that Respondent’s use of the disputed domain name to provide links to competitors for which it presumably commercially gains is evidence of attraction for commercial gain under Policy ¶ 4(b)(iv), showing bad faith use and registration under Policy ¶ 4(a)(iii). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
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 <gettyimagens.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 9, 2013
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