Shutterstock, Inc. v. darryl patterson / tekroanin llc
Claim Number: FA1306001503829
Complainant is Shutterstock, Inc. (“Complainant”), represented by Heidi S. Garfield, New York, USA. Respondent is darryl patterson / tekroanin llc (“Respondent”), Montana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shutterstocknude.com> and <shutterstocknudes.com>, registered with FASTDOMAIN, INC. (sometimes referred to herein as the “Disputed Domain Names”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2013; the National Arbitration Forum received payment on June 7, 2013.
On June 8, 2013, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <shutterstocknude.com> and <shutterstocknudes.com> domain names are registered with FASTDOMAIN, INC. and that Respondent is the current registrant of the names. FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, 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 June 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@shutterstocknude.com, postmaster@shutterstocknudes.com. Also on June 19, 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.
Respondent submitted its Response, which was received and found compliant on June 20, 2013.
On June 26, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.
On July 10, 2013, and due to exceptional circumstances, the Panel ordered an extension in the time in which to render its Decision until July 22, 2013.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of the United States trademark registration number 3,084,900 for the trademark SHUTTERSTOCK, which registration was issued on April 25, 2006 (“Complainant’s Mark”). Complainant’s Mark is used in connection with the licensing of digital data, including, but not limited to, still and moving images. Complainant’s Mark is world-famous and known to artists, photographers, designers, producers, editors, and other creators and consumers of images and film clips throughout the world.
Respondent registered the disputed domain names on May 6, 2013 and May. 17, 2013, well after Complainant’s Mark had gained widespread recognition.
The Disputed Domain Names are confusingly similar to Complainant’s Mark as contemplated by the Policy in that The Disputed Domain Names consist of the entirety of Complainants Mark with the mere addition of the common words “nude” and “nudes.”
Respondent has no rights or legitimate interest in respect of the Disputed Domain Names, as is established by the following:
1. Respondent does not use nor intend to use The Disputed Domain Names in connection with a bona fide offering of goods or services or in making a legitimate noncommercial or fair use. Rather, respondent intends to capitalize on Complainant’s Mark to drive traffic to a site featuring self-styled pornographic links and content;
2. Respondent has made a demand in the amount of $148,888 in exchange for the sale of the Disputed Domain Names to Complainant;
3. Respondent is not associated with Complainant in any way; and
4. Respondent has never applied for a license nor sought permission from complainant to use Complainants Mark.
Respondent registered the Disputed Domain Names and is using the Disputed Domain Names in bad faith, as is established by the following:
1. Respondent’s is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s Mark;
2. Respondent’s use of the Disputed Domain Names in connection with pornographic content and links is likely to and does tarnish and dilute Complainant’s valuable goodwill and recognition in Complainant’s Mark;
3. Respondent’s attempt to negotiate with Complainant to extract a significant monetary payment well in excess of any out-of-pocket expenses incurred by Respondent directly related to the Disputed Domain Names; and
4. Respondent registered its second of the Disputed Domain Names within days after he was initially contacted by Complainant to stop using the first of the Disputed Domain Names to be registered.
B. Respondent
Respondent’s response consists of approximately ninety words in which he asserts that he legitimately registered and paid for the Disputed Domain Names and that he objects to the legitimacy of this administrative proceeding and the authority of the Panel to make an award that would involve his domain names.
Respondent also filed a late, informal e-mail with the administrator in which he contends that:
As this e-mail was not timely filed, it has not been considered.
1. Complainant is the owner of the United States trademark registration number 3,084,900 for the trademark SHUTTERSTOCK, which registration was issued on April 25, 2006. The Complainant’s Mark is used in connection with the licensing of digital data, including, but not limited to, still and moving images.
2. Respondent registered the Disputed Domain Names on May 6, 2013 and May. 17, 2013, <shutterstocknude.com> and <shutterstocknudes.com>.
3. Respondent demanded $148,888 from Complainant for transfer of the Disputed Domain Names to 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.
Such a contractual obligation is valid and enforceable within the United States pursuant to the Federal Arbitration Act, 9 U.S.C. § 1, et seq. (2013).
The present proceeding is administered and conducted pursuant to such obligation and in furtherance of the noted goal of the Policy.
As such, this Panel has the authority to make an award under the Policy with respect to Respondent’s Disputed Domain Names.
Under the first element of the Policy Complainant must demonstrate that it has rights in a trademark and that the Disputed Domain Names are either identical or confusingly similar to this trademark.
Rights in a trademark can be established by demonstrating ownership of a trademark registration that has issued from a national trademark office, such as, but not limited to the United States Patent and Trademark Office. See Miller Brewing Company v. Miller family, FA 104177 (Nat. Arb. Forum Apr. 15, 2010) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registration); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).
In the present matter Complainant has established rights in a trademark for purposes of Policy ¶ 4(a)(i) by virtue of its ownership of United States trademark registration number 3,084,900.
For purposes of determining whether the Disputed Domain Names are identical to the Complainant’s Mark, a simple comparison is made between the two, and in doing so the generic top-level domain identifiers (“gTLD”) and minor variations of a single character or two can be ignored. See Islewoth Land Co., v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)(“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a policy ¶ 4(a)(i) analysis.”); see also Barnsandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006)(finding that the <barnesandnobles.info> and <barnesandnobles.biz> domain names are confusingly similar to the complainant’s BARNESANDNOBLE.COM Mark because the addition of the letter “s” and generic top-level domain to the dominant features of the complainants Mark do not negate the confusingly similar aspect of the domain names pursuant to Policy ¶ 4(a)(i)).
In the present matter the Disputed Domain Names are not identical to the Complainant’s Mark because the differences are more than the top-level domain identifiers and a single character or two. The Disputed Domain Names include the words “nude(s)” that are not included within the Complainant’s Mark.
When a domain name and trademark differ by more than the gTLD and the addition or subtraction of a character or two, the question becomes whether the additional content serves to adequately distinguish the domain name from the trademark. See Disney Enterprises, Inc. v. Nick Zammit, FA 1357814 (Nat. Arb. Forum Dec. 5, 2010)( finding that Respondent’s <disneylandchina.com>, <disneylandgermany.com>, and <disneylandengland.com> domain names are confusingly similar to Complainant’s DISNEYLAND mark pursuant to Policy ¶ 4(a)(i); see also Tyra Banks v. Hemang Infrasturecture Private Limited, FA 1330940 (Nat. Arb. Forum Aug. 3, 2010)(finding that the domain name <tyrabanksshow.com> was confusingly similar to the trademark TYRA BANKS.); see also Prudential Ins. Co. of Am. V. QuickNet Commc’ns, FA 146242 (Nat. Arb. Forum Mar 27, 2003)(finding that the domain name <prudentialmotors.com>, which incorporated the entirety of the complainants PRUDENTIAL mark with the addition of the word “motors,” had no apparent connection to the complainant, for the insurance and financial industry, and was thus not confusingly similar to the complainant’s mark).
In the present matter the Disputed Domain Names include the words “nude(s).” These are generic words and do not appear within the Complainant’s Mark. However, the addition of these generic words does not distinguish the Disputed Domain Names from the Complainant’s Mark.
The Complainant’s Mark was registered with respect to the following services: “the licensing of digital data, namely still images, for use in the fields of electronic and print publishing, graphic design, advertising, product packaging, and interactive media.” A review of Complainant’s website, < shutterstock.com>, reveals that Complainant offers a large number of photographs for download and use. Such a catalog of photographs has long been referred to in the photographic industry as “stock” photos, which is in contrast to specifically commissioned works, such as a portrait. Complainant’s website includes a directory of photographs that consists of a number of categories, such as: beauty/fashion; celebrities; model released only; nature; and people. This directory presumably allows for an easier search of the catalog.
The nude human figure is a recognized genre and category within the field of photography, as for example in the work of the American photographer Edward Weston (1886 – 1958).
For this reason the addition of the generic words “nude(s)” within the Dispute Domain Names do not serve to distinguish, but rather is entirely consistent with Complainant’s Mark and Complainant’s use of it mark. The addition of these words appears to merely present an additional category of stock photographs, much as Complainant itself does with its list of categories as noted. This is in contrast to other generic words, the addition of which the Panel believes might, depending on the totality of the circumstances, create an adequate distinction from the Complainant’s Mark, words such as “insurance,” “intelligence,” or “gravity,” as in “shutterstockinsurance,” or “shutterinsurancestock.”
As such, the Disputed Domain Names are confusingly similar to the Complainant’s mark for purposes of Policy ¶ 4(i).
As such Complainant has established the first element of the policy.
Policy Paragraph 4(c) provides guidance about what constitutes “rights and legitimate interests” in connection with a domain name. This paragraph provides three nonexclusive examples of conduct that could constitute a right and legitimate interest, and these examples are:
(i) Before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparation to use, the Disputed Domain Name or name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the Disputed Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent, for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has no difficulty finding that Respondent is not commonly known by the Disputed Domain Names for purposes of Subsection (ii).
The Panel has no difficulty finding that Subsection (iii) does not apply to the present matter. Complainant asserts that Respondent is not making a noncommercial or fair use of the Disputed Domain Names. Respondent does not assert or present evidence to the contrary. Further, the Panel can find no such use on the website to which the Disputed Domain Names direct.
With respect to Subsection (i), Complainant argues that Respondent is neither using nor intending to use the Disputed Domain Names in connection with a bona fide offering of goods or services because Respondent’s registrations of the Disputed Domain Names were in bad faith.
When the issue of bad faith registration is raised in the context of Policy ¶ 4(c)(i), it is the view of the Panel that this issue is better analyzed under the third element of the Policy, Policy ¶ 4(b), because that element of the Policy is directly concerned with bad faith. The decision reached in that context is then applied to the analysis of the second element of the Policy. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Above.com Domain Privacy, FA 1393078 (Nat. Arb. Forum July 23, 2011) (“The Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy Paragraph 4(c)(i) or a legitimate noncommercial or fair use under policy Paragraph 4(c)(iii), where Respondent is directing Internet users to a survey website for its own commercial gain.”); Wachovia Cor. V. Carrington, WIPO Case No. D2002-0775 (October 2, 2002) (“Although Respondent has provided users with access to… purported surveys about users online experiences, these services are not “bona fide” because Respondent is using the domain name in bad faith for the purpose of diverting users to its own site through confusion.”)
As can be seen from the discussion below concerning the third element of the Policy, the Panel finds that Respondent’s registrations and uses of the Disputed Domain Names were in bad faith, and as such, this finding precludes a finding that Respondent’s uses of the Disputed Domain Names have been in connection with a bona fides offering of goods or services.
As such, Complainant has established the second element of the Policy.
Policy
Paragraph 4(b) provides guidance of examples about what constitutes
“registration and use” of a domain names in bad faith, and these examples are:
(i) Circumstances indicating that Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) Respondent has registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Disputed Domain Name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the Disputed Domain Name, Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel has no difficulty finding that Respondent did not intend to prevent Complainant from reflecting the Complainant’s Mark in a corresponding domain name under Subsection ii. At all relevant times Complainant has had a domain name that reflects the Complainant’s Mark.
The Panel also has no difficulty finding that Respondent did not intend to disrupt the business of a competitor under Subsection iii. Neither Complainant nor Respondent has argued that they are competitors and the panel finds no evidence in the record to this effect.
Respondent did intend to sell the Disputed Domain Names to Complainant for purposes of Policy ¶ 4(b)(i). Firstly it is to be noted that Complainant’s Mark is fanciful, if only weakly so; whereas SHUTTERSTOCK is somewhat descriptive of stock photography, it is not the type of word combination that would readily come to mind when thinking about a catalog of stock photography. As such, it is unlikely that Respondent would have generated its Disputed Domain Names independent of actual knowledge of Complainants Mark. Secondly it is to be noted that Complainant’s Mark is well-known. A Google search of Complainant’s Mark yields several pages of websites and articles related to the Complainant, many of which concern Complainant’s initial public stock offering that took place in October 2012. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Of course, it is not bad faith to register a trademark with the express intention of selling it at some later time. However, it is bad faith to do so with the express intention of selling the domain name to the owner of a trademark that is reflected in the domain name and for a price in excess of the registrant’s out-of-pocket expenses incurred in connection with the domain name. 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”).
In the present matter the Disputed Domain Names reflect Complainant’s Mark, as noted above, and it is unlikely that this would have occurred but for knowledge of Complainant’s Mark, which knowledge was readily accessible in the popular press. Respondent’s intention to sell the Disputed Domain Names for a price in excess of Respondent’s out of pocket costs can be inferred from his demand during the course of negotiations concerning the Disputed Domain Names between Complainant and Respondent; Respondent’s price was $148,888.
As such, the Panel finds that Respondent’s intention when it registered the Disputed Domain Names was to sell the Disputed Domain Names to Complainant for price in excess of Respondents out-of-pocket costs in connection with them for purposes of Policy ¶ 4(b)(i).
Respondent did intentionally attempt to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with respect to the sponsorship of Respondent’s website under Policy ¶ 4(b)(iv). As is noted above, the Disputed Domain Names are confusingly similar to Complainant’s Mark, and the Disputed Domain Names appear to merely present a specific category of photographs that can be found on Complainant’s website. As a consequence, an Internet user seeking to find photographic nudes on Complainant’s website could easily and foreseeably enter <shutterstocknude.com> in the mistaken belief that he or she would thereby arrive at Complainant’s website.
As for commercial gain, the two websites (one for each of the Disputed Domain Names) to which each of the Dispute Domain Names direct each contains two lists of click-through options, one list is located on the left-hand side of the screen and the other list is located on the right-hand side of the screen. The list of click-through options on the right side of the screen includes the following options: “Window Treatments, Shutters, Doorknobs, Window Coverings, Discount Window Blinds, Currency Trading, Cheap Car Insurance, Would Screen Doors, Drapery Hardware, and Brokerage.” It is to be noted that each of these click-through options is a “dead end”; none leads to further content or websites. The other list of click-through options, the one on the left-hand side of the screen, includes the following options: “Free Sex Web Cams, Unique Adult Toys Sex Toys, Adult Chat Line Toll-Free; and Women’s Discount Lingerie.” It is to be noted that each of these click-through options does connect to other websites on which can be found additional content. Whereas no evidence is presented in the record about whether Respondent obtains advertising or other revenue as a result of these click-through menu options on the left-hand side of the screen, such is a reasonable inference, and the Panel so finds.
As such, the Panel finds that Respondent did intentionally attempt to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with respect to the sponsorship of Respondent’s website for purposes of Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shutterstocknude.com> and <shutterstocknudes.com> domain names be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed Panelist
Dated: July 18, 2013
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