Getty Images (US), Inc. and its subsidiary, Istockphoto LP v. Domain Administrator / Fundacion Private Whois
Claim Number: FA1406001566113
Complainant is Getty Images (US), Inc. and its subsidiary, Istockphoto LP (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Administrator / Fundacion Private Whois (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain names at issue are <istockhpoto.com> ,<istockphtoto.com>, registered with Internet.bs Corp.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2014; the National Arbitration Forum received payment on June 23, 2014.
On Jun 26, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <istockhpoto.com>,<istockphtoto.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 July 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2014 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@istockhpoto.com, postmaster@istockphtoto.com. Also on July 2, 2014, 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 July 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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(s) be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <istockhpoto.com> and <istockphtoto.com> domain names, the domain names at issue, are confusingly similar to Complainant’s ISTOCKPHOTO mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Getty Images (US), Inc. and its subsidiary, Istockphoto LP, have been using the trademark ISTOCKPHOTO in commerce since 2000 in connection with a searchable online database of digital photographs and other design elements. Complainant has a valid trademark registration with the United States Patent and Trademark Office (“UPSTO”) for the ISTOCKPHOTO mark (Reg. No. 3440599, registered February 12, 2008). The domain names <istockhpoto.com> and <istockphtoto.com> are confusingly similar to the trademark in which Complainant has rights.
Respondent is not commonly known by the disputed domain names and is using the disputed domain name <istockhpoto.com> to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant. Respondent is using the disputed domain name <istockphtoto.com> to link Internet users to Complainant’s own website.
Respondent has engaged in an ongoing pattern of cybersquatting. Respondent’s use of the disputed domain name <istockhpoto.com> is disrupting the business of Complainant. Respondent is using the disputed domain name <istockhpoto.com> for commercial gain through reliance on confusion or mistake by linking potential Complainant customers to products sold by competitors and by collecting click-through revenue from the site. Respondent’s typosquatting conduct is evidence of bad faith.
Respondent’s registration of two marks confusingly similar to Complainant’s while Respondent was a member of Complainant’s affiliate program indicates intent and is evidence of 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 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 alleges has been using the ISTOCKPHOTO in commerce since 2000 in connection with a searchable online database of digital photographs and other design elements and has a valid trademark registration with the United States Patent and Trademark Office (“UPSTO”) for the ISTOCKPHOTO mark (Reg. No. 3440599, registered February 12, 2008). Although Respondent resides in Panama, it is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register its mark in the country in which Respondent operates. 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). Complainant’s registration of the ISTOCKPHOTO mark with the USPTO shows that it has the rights in the mark pursuant to 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 domain names <istockhpoto.com> and <istockphtoto.com> are confusingly similar to the mark in which Complainant has rights. The disputed domain names merely create typographical errors—traditionally, such errors create an inference of confusing similarity. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Accordingly, the Panel finds that the domain names <istockhpoto.com> and <istockphtoto.com> are confusingly similar to the ISTOCKPHOTO mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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); 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.”).
Respondent is not commonly known by the disputed domain names. The Panel notes that the registrant of the disputed domain names is listed as “Domain Administrator”. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) the panel found that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute. At present, the circumstances are comparable because the only evidence available to the Panel is the name listed in the WHOIS information due to Respondent’s default. Therefore, holds that the Respondent is not commonly known by the disputed domain names <istockhpoto.com> and <istockphtoto.com> under ¶ 4(c)(ii).
Respondent is using the disputed domain name <istockhpoto.com> to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant. The disputed domain name <istockhpoto.com> resolves to a web page that links Internet users to direct Complainant competitors. These links include “Download Image”, “Graphicstock.com”, and “Shutterstock Stock Images”. Accordingly, the Panel finds that Respondent is not using the disputed domain name <istockhpoto.com> for 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) as the domain name resolves to a website that links to direct competitors to Complainant’s business. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Respondent is using the disputed domain name <istockphtoto.com> to link Internet users to Complainant’s own website. The Panel finds that Respondent is not using the disputed domain name <istockphtoto.com> for 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) as the domain name resolves to Complainant’s own website. See Gen. Mills, Inc. v. Zuccarini, FA 97050 (Nat. Arb. Forum May 30, 2001) (“[U]nder the “Policy,” Respondent may not utilize close derivations of famous and distinctive trademarks and, thus, profit from Internet users’ misspelling the Internet destinations they desire.”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has engaged in an ongoing pattern of cybersquatting. Complainant has made searches through the NAF and WIPO UDRP decision databases and found that Respondent had been involved in similar previous decisions. The Panel agrees that Respondent has engaged in an ongoing pattern of cybersquatting and finds a pattern of bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Respondent’s use of the disputed domain names is disrupting the business of Complainant through the use of the disputed domain name <istockhpoto.com>. Respondent is using that disputed domain name to link Internet users to direct competitors of Complainant. The links to third-party websites on the domain name web page include “Download Image”, “Graphicstock.com”, and “Shutterstock Stock Images”. Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name <istockhpoto.com> in bad faith pursuant to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent is using the disputed domain name <istockhpoto.com> for commercial gain through reliance on confusion or mistake by linking potential Complainant customers to products sold by competitors and by collecting click-through revenue from the site. The links to third-party websites on the domain name web page include “Download Image”, “Graphicstock.com”, and “Shutterstock Stock Images”. Further, it appears that Respondent receives compensation for promoting the links. Accordingly, the Panel finds that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and that Respondent likely profits from the resulting confusion. Therefore, the Panel regards this as evidence of bad faith 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.’”).
Respondent’s typosquatting conduct is evidence of bad faith. Typosquatting is evident in the disputed domain names <istockhpoto.com> and <istockphtoto.com>, and this Panel finds a basis for Policy ¶ 4(a)(iii) bad faith. See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”).
Respondent’s registration of domains containing marks which are confusingly similar to Complainant’s while Respondent was a member of Complainant’s affiliate program indicates intent and is evidence of bad faith. Respondent is a member of Complainant’s affiliate program and thus would have known of Complainant’s mark before registering the disputed domain names. The Panel concludes that Respondent was using the disputed domain names to profit from the goodwill of Complainant’s mark and was therefore acting in bad faith. See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <istockhpoto.com>, <istockphtoto.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 2, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page