Getty Images (US), Inc. v. Crystal International
Claim Number: FA1304001492488
Complainant is Getty Images (US), Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Crystal International (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <gettyimage.com>, registered with MEGAZONE CORP. d/b/a HOSTING.KR.
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 1, 2013; the National Arbitration Forum received payment on April 1, 2013. The Complaint was submitted in both Korean and English.
On April 2, 2013, MEGAZONE CORP. d/b/a HOSTING.KR confirmed by e-mail to the National Arbitration Forum that the <gettyimage.com> domain name is registered with MEGAZONE CORP. d/b/a HOSTING.KR and that Respondent is the current registrant of the name. MEGAZONE CORP. d/b/a HOSTING.KR has verified that Respondent is bound by the MEGAZONE CORP. d/b/a HOSTING.KR 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 9, 2013, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of April 29, 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@gettyimage.com. Also on April 9, 2013, the Korean 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 May 8, 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.
A. Complainant
a) Complainant claims rights in the GETTY IMAGES mark, which is used in connection with the creation and distribution of still imagery, video, and multimedia products, as well as providing other forms of premium digital content, including music. Complainant owns the registrations for the GETTY IMAGES mark (e.g., Reg. No. 2,656,652 filed Aug. 30, 2001; registered Dec. 3, 2002) with the United States Patent and Trademark Office (“USPTO”) See Complainant’s Exhibit E. Complainant, through its website at <gettyimages.com>, allows professionals and amateurs access to award-winning photographs. Complainant also owns subsidiaries the Istockphoto, Thinkstock, and Istockvideo. Complainant was, however, well-known in business prior to the registration of the disputed domain name. Complainant’s acquisition of Istockphoto LP for $50 million in 2000 made Complainant the world’s largest stock photo company. Complainant provides the Panel with media and award recognition that Complainant has received, dating back to as early as August 10, 1999. See Complainant’s Exhibit G.
b) The <gettyimage.com> domain name is confusingly similar to Complainant’s mark. The relevant comparison is between the mark and the second-level portion of the disputed domain name, thus making Respondent’s addition of a generic top-level domain (“gTLD”) irrelevant. Respondent removes the space between terms as well as a single letter from Complainant’s mark, but this does not negate the confusing similarity between the <gettyimage.com> domain name and the GETTY IMAGES mark.
c) Respondent does not possess rights or legitimate interests in the <gettyimage.com> domain name. Respondent is not commonly known by the disputed domain name, having not been authorized to use the GETTY IMAGES mark and the WHOIS record demonstrating that Respondent is known as an entity other than is related to the GETTY IMAGES mark or <gettyimage.com> domain name. Additionally, Respondent has the <gettyimage.com> domain name resolve to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Presumably, Respondent receives pay-per-click fees from these linked websites.
d) Respondent registered and uses the <gettyimage.com> domain name in bad faith. Respondent has the <gettyimage.com> domain name listed for sale. Further, Respondent is a serial cybersquatter, having developed a pattern of bad faith. Complainant’s Exhibit H includes screenshots showing the auction sites where the disputed domain name is currently listed for sale. Respondent’s use of the disputed domain name to divert potential consumers from Complainant’s website and to take advantage of Complainant’s well-known mark to profit from is evidence of bad faith. Finally, Respondent’s typosquatting behavior by manipulating the mark in the disputed domain name by a single letter, is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Getty Images (US), Inc., claims rights in the GETTY IMAGES mark, which is used in connection with the creation and distribution of still imagery, video, and multimedia products, as well as providing other forms of premium digital content, including music. Complainant owns the registrations for the GETTY IMAGES mark (e.g., Reg. No. 2,656,652 filed Aug. 30, 2001; registered Dec. 3, 2002) with the United States Patent and Trademark Office (“USPTO”). Complainant also has common law rights in the GETTY IMAGES mark which predate Respondent’s registration of the disputed domain name.
Respondent, Crystal International, registered the <gettyimage.com> domain name on July 11, 2001. Respondent has the <gettyimage.com> domain name resolve to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Presumably, Respondent receives pay-per-click fees from these linked websites.
Respondent registered the <gettyimage.com> domain name on July 11, 2001.
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.”).
Language of the Proceedings
The Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant has rights in the GETTY IMAGES mark through its registrations with the USPTO with rights dating back to the filing date of the application. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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”). Despite the location of Respondent in Korea, Complainant’s registration of the GETTY IMAGES mark with the UPSTO satisfies the required showing of rights under Policy ¶ 4(a)(i) with rights dating back to the filing date of the application. 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant notes that through its website at <gettyimages.com>, it allows professionals and amateurs access to award-winning photographs. Complainant states that it also owns the subsidiaries Istockphoto, Thinkstock, and Istockvideo. Complainant was, it argues, well-known in business prior to the registration of the disputed domain name. According to Complainant, its acquisition of Istockphoto LP for $50 million in 2000 made Complainant the world’s largest stock photo company. Complainant provides evidence of media and award recognition that Complainant has received, dating back to as early as August 10, 1999. Complainant’s trademark registrations list a date of first use back to 1997. Therefore, the Panel finds that Complainant has common law rights in the GETTY IMAGES mark dating as far back as 1997 pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant asserts that the <gettyimage.com> domain name is confusingly similar to Complainant’s mark. Complainant states that the relevant comparison is between the mark and the second-level portion of the disputed domain name, thus Respondent’s addition of a gTLD is irrelevant. Respondent removes the space between terms, as well as a single letter from Complainant’s mark, but such changes do not negate the confusing similarity between the <gettyimage.com> domain name and the GETTY IMAGES mark. The deletion of a space and addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. 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.”). Also the misspelling of a mark by a single letter does not remove a domain name from the realm of confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Therefore, the Panel finds that Respondent’s <gettyimage.com> domain name is confusingly similar to Complainant’s GETTY IMAGES 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 argues that Respondent does not possess rights or legitimate interests in the <gettyimage.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, having no authorization to use the GETTY IMAGES mark, and the WHOIS record, which demonstrates that Respondent is known as an entity other than the GETTY IMAGES mark or <gettyimage.com> domain name. The WHOIS record for the <gettyimage.com> domain name lists “Crystal International” as the domain name registrant. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Next, Complainant alleges that Respondent causes the <gettyimage.com> domain name to resolve to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant presumes that Respondent receives pay-per-click fees from these linked websites. The panel in Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), held that the respondent did not gain rights or legitimate interests in the disputed domain name given its use as a website to feature competing links. Therefore, the Panel finds that Respondent’s use of the <gettyimage.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant contends that Respondent registered and uses the <gettyimage.com> domain name in bad faith. Complainant notes that Respondent has the <gettyimage.com> domain name listed for sale. Panels have held that the offering of a domain name for sale is evidence of bad faith. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). Therefore, the Panel finds that the <gettyimage.com> domain name was registered and is used in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant next asserts that Respondent is a serial cybersquatter, having developed a pattern of bad faith. Respondent has been the subject of multiple adverse UDRP decisions. See Nike, Inc. v. Crystal International, D2001-0102 (WIPO Mar. 19, 2001); see also Adidas evil Etienne-Gesellschaft v. Crystal Int’l, KR-09000036 (Seoul Office Feb. 10, 2010). In Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006), the panel held that multiple adverse UDRP decision was cause for an inference of bad faith in future disputes. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Next, Complainant alleges that Respondent’s use of the disputed domain name to divert potential consumers from Complainant’s website evidences bad faith. Complainant again notes that the <gettyimage.com> domain name resolves to a website featuring links to third-party websites. Panels have found that such use disrupts a complainant’s business. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Therefore, the Panel finds that Respondent registered and is using the <gettyimage.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant additionally argues that Respondent’s attempt to take advantage of Complainant’s well-known mark in order to profit is evidence of bad faith. Complainant asserts that Respondent receives fees when Internet users click through the links displayed on the <gettyimage.com> domain name’s resolving webpage, and thereby generates more traffic by creating a likelihood of confusion with Complainant’s mark. Therefore, the Panel finds that Respondent registered and uses the <gettyimage.com> domain name in a bad faith attempt to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv). 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).
Lastly, Complainant claims that Respondent’s typosquatting behavior by manipulating the mark in the disputed domain name by a single letter, is evidence of bad faith. Complainant notes that the only substantive change made by Respondent to the GETTY IMAGES mark is the deletion of one letter. This minor change has been found to be a classic example of typosquatting. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). Therefore, the Panel finds that Respondent registered and uses the <gettyimage.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
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 <gettyimage.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.) Panelist
Dated: May 22, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page