Getty Images (US), Inc. and its subsidiary, Istockphoto LP v. Callum Macgregor / General Delivery
Claim Number: FA1407001570315
Complainant is Getty Images (US), Inc. and its subsidiary, Istockphoto LP (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Callum Macgregor / General Delivery (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ettyimages.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2014; the National Arbitration Forum received payment on July 17, 2014.
On July 21, 2014, Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com confirmed by e-mail to the National Arbitration Forum that the <ettyimages.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com 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 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 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@ettyimages.com. Also on July 29, 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 August 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
1. Complainant has rights in the GETTY IMAGES mark under Policy ¶ 4(a)(i).
a. Complainant 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. 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 such as Istockphoto, Thinkstock, and Istockvideo. Complainant was, however, well-known in business prior to the registration of the disputed domain name.
b. Respondent’s <ettyimages.com> domain name is confusingly similar to Complainant’s GETTY IMAGES mark.
i. Respondent merely removes the letter “g” in GETTY, removes the space in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <ettyimages.com> domain name.
a. Respondent is not commonly known by the disputed domain name. Respondent has no trademark or intellectual property rights in the domain name and the WHOIS information lists “Callum Macgregor” as registrant. Complainant also states that it has not licensed or authorized Respondent to use the GETTY IMAGES mark in any way.
b. Respondent uses the disputed domain name to redirect Internet users to Complainant’s own website.
3. Respondent registered and is using the <ettyimages.com> domain name in bad faith.
a. Respondent has listed the disputed domain name for sale.
b. Respondent has a pattern of bad faith registrations. See Complainant’s Exhibit N.
c. Respondent uses the disputed domain name to redirect Internet users to Complainant’s owns website through Complainant’s affiliate program, which is in direct violate of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant.
d. Respondent’s disputed domain name is a typosquatted version of Complainant’s registered mark.
e. Respondent had actual knowledge of Complainant’s mark when Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. 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.” Prior 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. 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. The Panel here finds the evidence presented in the pleadings establishes a sufficient nexus or link between the Complainants, and thus treats them as a single entity in this proceeding.
Preliminary Issue: Redaction of Respondent’s Identity
The FORUM received an e-mail from Respondent in which Respondent claimed he/they never registered the domain name at issue and that the wrong e-mail address must have been used. The Panel notes that the WHOIS record lists the same e-mail address as the contact for the registrant at issue. The Panel further notes that while Respondent’s assertions claim that the Complaint is misdirected the Respondent stopped short of claiming to be a victim of identity theft. Furthermore there are numerous UDRP decisions in which the Respondent has been named. The Panel here chooses not to redact Respondent’s personal information from the decision. The Panel finds there is insufficient evidence to support an assertion of any victimization of Respondent(s), therefore the decision should be published in its normal manner. According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” The instant proceeding is not an exceptional case.
Complainant is Getty Images (US), Inc. and its subsidiary, Istockphoto LP of Seattle, WA, USA. Complainant is the owner of numerous domestic and international registrations for the mark GETTY IMAGES which it has used continuously since at least as early as 2001 in connection with its provision of electronic and digital multimedia goods and services.
Respondent is Callum Macgregor / General Delivery of Isle of Skye, Scotland, United Kingdom. Respondent’s registrar’s address is listed as Shanghai, China.
Respondent registered the <ettyimages.com> domain name on or about November 14, 2005.
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 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 demonstrates that it owns numerous registrations for the GETTY IMAGES mark (e.g., Reg. No. 2,656,652 filed Aug. 30, 2001; registered Dec. 3, 2002) with the USPTO. The Panel finds that, despite the location of Respondent in the United Kingdom, Complainant’s registration of the GETTY IMAGES mark with the UPSTO satisfies the required showing of rights under Policy ¶ 4(a)(i). 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 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 argues that Respondent’s <ettyimages.com> domain name is confusingly similar to Complainant’s GETTY IMAGES mark. Complainant contends that Respondent merely removes the letter “g” in GETTY, removes the space in Complainant’s mark, and adds the gTLD “.com.” Complainant correctly 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. Prior panels have found that 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.”). Prior panels have also held that 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). The Panel here finds that Respondent’s <ettyimages.com> domain name is confusingly similar to Complainant’s GETTY IMAGES mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant argues that Respondent does not possess rights or legitimate interests in the <ettyimages.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant further states it has not given Respondent authorization to use the GETTY IMAGES mark, and the WHOIS record demonstrates that Respondent is not known as GETTY IMAGES or by the <ettyimages.com> domain name. Complainant asserts that the WHOIS information for the disputed domain name lists “Callum Macgregor” as registrant. 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).
Complainant next claims that Respondent uses the disputed domain name to redirect Internet users to Complainant’s own website. Respondent’s <ettyimages.com> domain name redirects to <www.gettyimages.com>, Complainant’s own website. Prior panels have concluded that a respondent’s use of a domain name to resolve to complainant’s own website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). The Panel here finds that Respondent’s use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent registered and is using the <ettyimages.com> domain name in bad faith under Policy ¶ 4(b)(i). Complainant contends that Respondent has listed the disputed domain name for sale. The Panel notes that Respondent lists the <ettyimages.com> domain name for sale, at a price of $4,750. In World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) the panel found that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs. The Panel here finds that Respondent offers to sell the <ettyimages.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent has a pattern of bad faith registrations under Policy 4(b)(ii). The Panel notes that Respondent was previously involved in the following cases; Citigroup Inc. v. Callum Macgregor, FA 1381321 (Nat. Arb. Forum May 2, 2011); State Farm Mut. Auto. Ins. Co. v. Callum Macgregor, FA 1345375 (Nat. Arb. Forum Oct. 20, 2010); Baylor University v. Callum Macgregor, FA 1340159 (Nat. Arb. Forum Sept. 23, 2010). Prior panels have found that a respondent’s involvement in prior UDRP cases decided in the complainant’s favor, indicates a respondent’s bad faith pattern of registrations. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). The Panel here finds the prior decisions noted above support a finding of bad faith against the Respondent in this proceeding under Policy ¶ 4(b)(ii).
Complainant states that Respondent’s disputed domain name is a typosquatted version of Complainant’s registered mark. The Panel notes that previous panels have found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel here finds that Respondent is attempting to capitalize on the typographical error in Respondent’s disputed domain name, by eliminating the letter “g” and thus Respondent’s actions constitute typosquatting behavior in bad faith.
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ettyimages.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 5, 2014
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