Shutterstock, Inc. v. EMRE SAHIN / CID306545
Claim Number: FA1304001496397
Complainant is Shutterstock, Inc. (“Complainant”), represented by Michael C. Lesser, New York, USA. Respondent is EMRE SAHIN / CID306545 (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shutterstockphoto.net>, registered with FBS 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2013; the National Arbitration Forum received payment on April 25, 2013. The Complaint was submitted in both English and Turkish.
On May 8, 2013, FBS INC. confirmed by e-mail to the National Arbitration Forum that the <shutterstockphoto.net> domain name is registered with FBS INC. and that Respondent is the current registrant of the name. FBS INC. has verified that Respondent is bound by the FBS 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 May 14, 2013, the Forum served the Turkish language Complaint and all Annexes, including a Turkish language Written Notice of the Complaint, setting a deadline of June 3, 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@shutterstockphoto.net. Also on May 14, 2013, the Turkish language 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 10, 2013, 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.
Language of the Proceedings
The Registration Agreement is written in Turkish, thereby making the language of the proceedings in Turkish. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
i. Respondent is not associated with Complainant in any way.
ii. Respondent’s website purports to offer “Free Stock Photos” for download.
i. Respondent has the present intent to sell the domain.
ii. Respondent attempts to disrupt the business of Complainant and others who license, sell, or otherwise exploit intellectual property by making such intellectual property available for free, without the authority of the rightful copyright holder, and with full knowledge that Respondent’s activities infringe the copyright and trademark rights of Complainant and third parties.
iii. Respondent’s domain name is likely to and intentionally does deceive Internet users who are seeking Complainant’s products and services to instead visit Respondent’s website.
iv. Respondent is aware of the strength of Complainant’s word mark and is relying on that strength to draw traffic to Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Shutterstock, Inc., owns the SHUTTERSTOCK mark, which is used in connection with the licensing of digital data including, but not limited to, still and moving images. Complainant is the owner of trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SHUTTERSTOCK mark (e.g., Reg. No. 3,084,900, registered April 25, 2006).
Respondent, EMRE SAHIN / CID306545, registered its <shutterstockphoto.net> on August 1, 2011. Respondent’s website purports to offer “Free Stock Photos” for download.
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.”).
The Panel finds that Complainant’s registration of the SHUTTERSTOCK mark with the USPTO proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Although Respondent appears to reside within Turkey, Complainant does not have to register its trademark in the country in which Respondent operates under Policy ¶ 4(a)(i). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s domain name incorporates the word mark SHUTTERSTOCK in its entirety, with the addition of the word “photo,” a word directly related to and descriptive of Complainant’s business. Respondent’s addition of a descriptive term to Complainant’s mark in the domain name does not differentiate the <shutterstockphoto.net> domain name from Complainant’s SHUTTERSTOCK mark under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Respondent has added the generic top-level domain (“gTLD”) “.net” to the domain name. Respondent’s addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). The Panel finds that Respondent’s <shutterstockphoto.net> domain name is confusingly similar to Complainant’s SHUTTERSTOCK 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 asserts that Respondent is not associated with Complainant in any way. Complainant argues that Respondent has never applied for a license nor sought permission from Complainant to use the marks. The WHOIS record provides that “EMRE SAHIN / CID306545” is the registrant of the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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).
Complainant contends that Respondent’s website purports to offer “Free Stock Photos” for download. Complainant asserts that Respondent’s intent is to deceive visitors seeking Complainant’s website to mistakenly visit Respondent’s website, thus using Respondent’s domain name to generate advertising revenue, including advertisements for Complainant’s direct competitors. Complainant argues that Respondent’s website also displays images available for license through Complainant’s website and provides links to high-resolution images for visitors to download. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that because respondent’s disputed domain names resolved to a website featuring a series of advertising links to various third-parties, many of whom offered products and services in direct competition with those offered under complainant’s mark, the respondent was not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Therefore, the Panel finds that Respondent is not using the <shutterstockphoto.net> domain name in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant alleges that Respondent has the intent to sell the domain. Respondent’s <shutterstockphoto.net> domain name states “Domain FOR SALE just $1500.” The Panel finds that Respondent registered the <shutterstockphoto.net> domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant argues that Respondent attempts to disrupt the business of Complainant and others who license, sell, or otherwise exploit intellectual property by making such intellectual property available for free, without the authority of the rightful copyright holder. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel determined that the fact that the disputed domain names resolved to websites that listed links to competitors of Complainant was evidence that Respondent intended to disrupt Complainant’s business, indicating bad faith pursuant to Policy ¶ 4(b)(iii). Accordingly, the Panel finds that Respondent’s domain name is disrupting Complainant’s business according to Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s domain name is likely to and intentionally does deceive Internet users who are seeking Complainant’s products and services. Complainant argues that Respondent reinforces the deception by incorporating Complainant’s mark into the design of Respondent’s website. Complainant asserts that Respondent diverts traffic seeking Complainant’s website to Respondent’s website, thereby increasing Respondent’s advertising revenue. The Panel finds that Respondent’s use of the disputed domain name to intentionally divert consumers from Complainant’s website to Respondent’s website for which it commercially profits demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant claims that Respondent is aware of the strength of Complainant’s word mark and is relying on that strength to draw traffic to Respondent’s website. Respondent uses Complainant’s SHUTTERSTOCK mark on the website resolving from the disputed domain name. Based on Respondent’s use of Complainant’s SHUTTERSTOCK mark on its own website, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <shutterstockphoto.net> domain name be TRANSFERRED from Respondent..
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 24, 2013
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