Shutterstock, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1303001491591
Complainant is Shutterstock, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shuttersock.com>, <shutterstork.com>, <shutterstrock.com>, and <sshutterstock.com>, registered with INTERNET.BS CORP.
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 March 26, 2013; the National Arbitration Forum received payment on March 26, 2013.
On April 3, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <shuttersock.com>, <shutterstork.com>, <shutterstrock.com>, and <sshutterstock.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 April 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2013 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@shuttersock.com, postmaster@shutterstork.com, postmaster@shutterstrock.com, and postmaster@sshutterstock.com. Also on April 4, 2013, 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 May 2, 2013, 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 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 <shuttersock.com>, <shutterstork.com>, <shutterstrock.com>, and <sshutterstock.com> domain names are confusingly similar to Complainant’s SHUTTERSTOCK mark.
2. Respondent does not have any rights or legitimate interests in the <shuttersock.com>, <shutterstork.com>, <shutterstrock.com>, and <sshutterstock.com> domain names.
3. Respondent registered and uses the <shuttersock.com>, <shutterstork.com>, <shutterstrock.com>, and <sshutterstock.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a trademark registration for its SHUTTERSTOCK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,084,900 filed Feb. 8, 2005; registered Apr. 25, 2006).
Respondent registered the <shuttersock.com> domain name on March 15, 2006, the <shutterstork.com> domain name on October 15, 2006, the <shutterstrock.com> domain name on September 1, 2006, and the <sshutterstock.com> domain name on January 3, 2007. Respondent is using the disputed domain names to redirect Internet users to a website featuring generic links to third party websites, some of which directly compete 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."
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 has rights in the SHUTTERSTOCK service mark based on its registration of the mark with the USPTO for purposes of Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). The Panel notes that Complainant need not register its mark in the country of Respondent to demonstrate rights in the mark. 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). Although the <shuttersock.com> domain name registration predates Complainant’s registration of the mark, the Panel finds that the relevant date of rights is the date of filing with the USPTO. 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”). Therefore, the Panel finds that Complainant has established rights under ¶ 4(a)(i) in the SHUTTERSTOCK mark.
Respondnet’s <shuttersock.com>, <shutterstork.com>, <shutterstrock.com>, and <sshutterstock.com> domain names are confusingly similar to its SHUTTERSTOCK mark under Policy ¶ 4(a)(i). The addition of a gTLD such as “.com” is irrelevant to a Policy ¶ 4(a)(i) confusing similarity comparison. 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). Respondent incorporates Complainant’s mark in each of the disputed domain names, with only a single letter added or deleted. Because past panels have found that such slight misspellings do not create distinct domain names, the Panel finds that the <shuttersock.com>, <shutterstork.com>, <shutterstrock.com>, and <sshutterstock.com> domain names are confusingly similar to Complainant’s SHUTTERSTOCK mark. 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 finds that complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has not been commonly known by the disputed domain names and has therefore not demonstrated rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). The WHOIS information identifies “Fundacion Private Whois / Domain Administrator” as the registrant of all four disputed domain names. Complainant also notes that it is not affiliated with Respondent and has not authorized Respondent to use the SHUTTERSTOCK mark. Past panels have found nominally unsupportive WHOIS information and a lack of authorization to be strong evidence that a respondent is not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names and has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
Complainant also states that Respondent is using the disputed domain names to redirect Internet users to web pages featuring generic links to third-party websites, some of which compete with Complainant. Complainant argues that this demonstrates that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). The Panel agrees and finds that the display of competing hyperlinks on Respondent’s resolving website does not demonstrate a bona fide offering or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) or 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).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(ii).
Complainant demonstrates that Respondent has listed some of the disputed domain names for sale and argues that this offer to sell domain names that are confusingly similar to Complainant’s mark is evidence of bad faith registration and use under Policy ¶ 4(b)(i). The Panel notes that past panels have found that an offer of sale in combination with other factors, such as confusing similarity, can demonstrate bad faith. See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”). The Panel finds that Respondent has similarly demonstrated bad faith registration and use under Policy ¶ 4(b)(i).
Complainant also argues that Respondent has demonstrated a pattern of bad faith registration and use under Policy ¶ 4(b)(ii), and sites multiple other UDRP decisions against Respondent. See Lenovo (Beijing) Limited Corporation China v. Fundacion Private Whois / Domain Administrator, FA 1465080 (Nat. Arb. Forum Nov. 19, 2012); see also United Air Lines, Inc. v. Fundacion Private Whois c/o Domain Administrator, FA 1460934 (Nat. Arb. Forum Oct. 16, 2012); see also Victoria’s Secret Stores Brand Management, Inc. v. Fundacion Private Whois / Domain Administrator, FA 1459258 (Nat. Arb. Forum Sept. 26, 2012). The Panel finds that the prior UDRP adverse rulings against Respondent demonstrate bad faith 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 disputed domain names resolve to “click through” websites with links promoting services that compete with Complainant’s, including <catholicmatch.com> and <maturesinglesonly.com>. This disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(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 intentionally using domain names confusingly similar to Complainant’s SHUTTERSTOCK mark in order to divert Internet users to its website, and likely receives revenue when users click the competing links found there. This demonstrates bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Respondent’s disputed domain names incorporate slight misspellings of Complainant’s SHUTTERSTOCK mark, deviating by only a single letter. This is typosquatting and additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See 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 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 <shuttersock.com>, <shutterstork.com>, <shutterstrock.com>, and <sshutterstock.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 8, 2013
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