Getty Images (US), Inc. and its Subsidiary, Istockphoto LP v. Splix Networks / Networks Splix
Claim Number: FA1308001514438
Complainant is Getty Images (US), Inc. and its Subsidiary, Istockphoto LP (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Splix Networks / Networks Splix (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <istckphoto.com>, registered with WEBAGENTUR.AT INTERNET SERVICES GMBH d/b/a DOMAINNAME.AT.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2013; the National Arbitration Forum received payment on August 13, 2013.
After numerous requests, the Registrar, WEBAGENTUR.AT INTERNET SERVICES GMBH d/b/a DOMAINNAME.AT, failed to confirm by e-mail to the National Arbitration Forum that the <istckphoto.com> domain name is registered with WEBAGENTUR.AT INTERNET SERVICES GMBH d/b/a DOMAINNAME.AT or that Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
On September 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@istckphoto.com. Also on September 9, 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 October 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
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Trademark/Service Mark Information |
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Complainant Mark: ISTOCKPHOTO
ISTOCKPHOTO
in Class 9, 35, 38, 41, and 42 for the following goods and services: [ii.] Downloadable digital photographs, illustrations, audio clips, video clips, fonts, code snippets and graphics; commercial administration of the licensing of rights to download and use the digital photographs, illustrations, audio, video, fonts, code snippets and graphics of others; providing of information in the field of commercial administration of the licensing of visual and audio content; providing on-line chat rooms and discussion forums for transmission of messages among computer users concerning digital photographs, illustrations, audio, video, fonts, code snippets, and graphics, and providing online discussion forums and chat rooms in the field of digital media design tools, software and hardware, creative processes and methods and processes relating to the creation, editing, usage and licensing of visual and audio content. Providing information in the field of digital photographs, illustrations, audio and video, namely, providing an online searchable database of digital photographs, illustrations, audio, namely, prerecorded music, ring-tones, and other sounds, video, namely, prerecorded videos of still photographs, images, and moving images; Providing information about the methods and processes used in creating, editing and using traditional and digital photographs, illustrations, on-line audio recordings, videos, fonts, code snippets and graphics and other on-line design elements; providing information about digital design tools, software and hardware; technical support services, namely, troubleshooting of computer hardware and software problems incurred while uploading and downloading digital photographs, illustrations, audio, video, fonts, code snippets and other design elements via the Internet FIRST USE: 20060407. FIRST USE IN COMMERCE: 20060407 (US Reg. No. 3,440,599). |
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The marks cited above are hereafter referred to as the Complainant Mark(s). Complainant is the owner of trademark and/or service mark registrations cited in Section 4(c) above for which it has obtained registrations for U.S. Federal and Canadian Trademark Registrations. None of the referenced registrations have been abandoned, canceled or revoked with the USPTO or Canadian Intellectual Property Office, exhibiting clear rights to protect against any infringement of the use of their trademarked name by others. Furthermore, Complainant’s extensive use in commerce of the ISTOCKPHOTO.COM domain name(s) evidences Complainant’s ownership of rights in the Marks. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (Panel found “especially pertinent” that the Complainant Yahoo! owned and used the domain name finance.yahoo.com in holding the disputed domain name yahooventures.com confusingly similar to the mark YAHOO). |
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FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
Founded
in 1995, Getty Images (US), Inc. ("Getty Images") is one of the
world’s leading creators and distributors of still imagery, video and
multimedia products, as well as a recognized provider of other forms of premium
digital content, including music. Getty Images serves business customers in
more than 100 countries and is the first place creative and media professionals
turn, to discover, purchase and manage images and other digital content.
On its websites, GETTYIMAGES.COM and iStockPhoto.COM,
professionals and amateurs can access award-winning photography and imagery to
inspire their work, much of which appears every day in the world’s most
influential newspapers, magazines, advertising campaigns, films, television
programs, books and websites.
Since inception, Getty Images has adopted a business model that supports
aggressive acquisition and expansion. As a result, Getty Images has emerged as
the world’s largest stock photo company, operating some of the most
internationally famous and popular stock photography websites.
In 2006, Getty Images acquired Istockphoto. Istockphoto started as one of the
first stock imagery websites, growing to produce revenue of $71.9 million UDS
in 2007. Istockphoto LP is an image and design community, which enables its
members to buy and sell photos, illustrations, video, audio, and Flash files
online. The company was founded as Istock International, Inc. in 2000 and
changed its name to Istockphoto LP in October 2008. As of February 9, 2006,
Istockphoto LP was acquired as a subsidiary of Getty Images, Inc., and
continues to be based in Calgary, Canada. Istockphoto’s online, royalty free,
international microstock photography provides vector graphics in programs like
Adobe Illustrator, Macromedia Freehand, Macromedia Flash, and Adobe
Photoshop. The Istockphoto keyword searches provide multilingual
searching abilities, and the website can now be viewed in English, French,
Spanish, and German.
Getty Images owns the registered
US Trademarks for all of the Complainant’s Mark(s) listed above, clearly
evidencing Getty Images’ legitimate rights to protect against infringement of
their famous ISTOCKPHOTO trademarks. In addition to US federal trademark
registrations, Getty Images owns numerous foreign and Community trademark
registrations for ISTOCKPHOTO. Based on these registrations, as well as their
extensive use, Getty Images owns the exclusive right to use and defend the
ISTOCKPHOTO Mark(s) in connection with online digital photo and imaging
services.
Through the company’s various websites and products, Getty Images maintains a prominent presence on the Internet through Facebook, Twitter and Istockvideo on YouTube. In addition, Getty Images has spent millions of dollars in advertisement and promotion of the ISTOCKPHOTO Mark(s) on the Internet through their websites located at WWW.iStockPhoto.COM. The websites have been well-received, attracting significant online visitors each month, and the company has clearly established itself in the business of digital photographic services.
In
summary, Getty Images’ use, ownership and vigorous defense of their trademarks
evidences the Company’s legitimate rights to protect against infringement of
their well-known names.
Preliminary
Issue: MULTIPLE COMPLAINANTS
In the instant proceedings, Complainants are, in fact, one entity. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
It is undisputed in the record that Istockphoto LP is a subsidiary of Getty Images, and that together they specialize in the marketing multiple and varied online photographic services. Complainant cites prior UDRP Decisions wherein the previous panels deemed this to be proven. See Getty Images (US), Inc. v Above.com Domain Privacy, FA 1432745 (Nat. Arb. Forum April 30, 2012); see also Getty Images (US), Inc. v private Registrations Aktien Gesellschaft FA 1460732 (Nat. Arb. Forum October 26, 2012).
Additionally,
the Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one
party where they can show a sufficient link to each other. See, for example, Vancouver
Organizing Comm. for the 2010 Olympic and Paralympic Games and Int’l Olympic
Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel there
concluding that “It has been accepted that it is permissible for two
complainants to submit a single complaint if they can demonstrate a link
between the two entities such as a relationship involving a license, a partnership
or an affiliation that would establish the reason for the parties bringing the
complaint as one entity.”
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[a.] |
The
Disputed Domain Name(s) are nearly identical and confusingly similar to
Complainant's Marks.
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[b.] |
Respondent
has no rights or legitimate interests in respect of the Disputed Domain
Name(s) for the following reasons:
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[c.] |
The
Domain Name(s) should be considered as having been registered and being used
in bad faith for the following reasons:
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B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Getty Images (US), Inc. and Istockphoto LP. Complainants claim they are one entity for the purposes of this proceeding. Getty Images acquired Istockphoto in 2006 as a subsidiary, and together they specialize in marking multiple and varied online photographic services. Getty Images owns all the registered US Trademarks for Istockphoto. Getty images owns the exclusive right to use and defend the ISTOCKPHOTO mark.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The evidence in the Complaint is establishes a sufficient nexus between the Complainants and the Panel elects to treat them as a single entity in this proceeding. Hereinafter, the Complainants will be collectively referred to as “Complainant.”
Complainant claims it has rights in the ISTOCKPHOTO mark, used in connection with a searchable online database of digital photographs, illustrations, audio, video, fonts, code snippets and other design elements. Complainant is the owner of a registration for the ISTOCKPHOTO mark (Reg. No. 3,440,599, registered June 3, 2008, filed April 18, 2005) with the USPTO. The registration of a mark with a trademark authority, regardless of the location of the parties, is sufficient evidence of having rights in a mark and satisfies Policy ¶4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, Complainant has rights in the ISTOCKPHOTO mark pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s <istckphoto.com> domain name is confusingly similar to Complainant’s ISTOCKPHOTO mark. The disputed domain name differs from Complainant’s mark substantively by only the omission of a single character and the addition of the gTLD “.com” (which is disregarded for the purposes of this analysis). In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panel held that the misspelling of a mark by a single letter without more renders the disputed domain name confusingly similar to the mark misspelled with in it. The panel in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), found that gTLDs are inconsequential. This Panel agrees and finds the <istckphoto.com> domain name is confusingly similar to the ISTOCKPHOTO mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent does not have rights or legitimate interests in the <istckphoto.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its ISTOCKPHOTO mark in any way. “Splix Networks / Networks Splix” is listed as the domain name registrant for the <istckphoto.com> domain name on the domain’s WHOIS record. The WHOIS record, Complainant’s claims, and Respondent’s failure to submit a response in this dispute justify finding Respondent is not commonly known by the <istckphoto.com> domain name under Policy ¶4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant claims Respondent is using the <istckphoto.com> domain name to redirect Internet users to a website featuring links to third parties, some of which directly compete with Complainant’s business. The use of a disputed domain name to display links to competing third parties is not a use which would demonstrate that the respondent has rights or legitimate interests in the domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)). Respondent’s use of the <istckphoto.com> domain name is neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <istckphoto.com> domain name in bad faith. Respondent is displaying third-party links, via the disputed domain name, that directly compete with Complainant, thereby disrupting Complainant’s business. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel held the registration and use of a domain name displaying competing links was disruptive to the complainant’s business. Respondent’s registration and use of the <istckphoto.com> domain name diverts consumers intending to visit Complainant’s website, who instead reach Respondent’s website and are shown competing links, thereby disrupting Complainant’s projected consumer base. Respondent registered and uses the <istckphoto.com> domain name in bad faith under Policy ¶4(b)(iii).
Complainant claims Respondent is using the disputed domain name to attract and mislead consumers for its own profit by displaying third-party links from which Respondent presumably receives “click-through” revenue. Bad faith can be found when a respondent intentionally creates a likelihood of confusion between the disputed domain name and the complainant which allows the respondent to profit. 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). Respondent registered and uses the <istckphoto.com> domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent’s conduct constitutes typosquatting, which is evidence of bad faith. The substantive portion of the <istckphoto.com> domain name differs from the ISTOCKPHOTO mark by the omission of a single letter. While other Panels may accept this logic, this Panel does not. Typosquatting (by itself) is not mentioned in the UDRP. While a factual inquiry into the circumstances surrounding typosquatting may well lead to a determination of bad faith registration and use under the UDRP, that finding is based upon other facts and circumstances. Typosquatting does not automatically justify a finding of bad faith. This Panel declines to find Respondent registered the <istckphoto.com> domain name in bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent had knowledge of Complainant’s ISTOCKPHOTO mark prior to registration of the <istckphoto.com> domain name. Respondent was a member of Complainant’s affiliate program and therefore had to know about Complainant’s mark. Respondent would not have registered the disputed domain without first knowing of Complainant’s mark and the potential for exploitation of the mark.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <istckphoto.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, October 9, 2013
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