Getty Images (US), Inc. v. xu shuaiwei
Claim Number: FA1407001570053
Complainant is Getty Images (US), Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is xu shuaiwei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gttyimages.com>, registered with GODADDY.COM, LLC.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2014; the National Arbitration Forum received payment on July 16, 2014.
On July 16, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <gttyimages.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@gttyimages.com. Also on July 17, 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 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
i. Complainant, Getty Images (US), has been using the GETTY IMAGES mark in commerce since 1997 in connection with the electronic delivery of images, illustrations, film footage, etc.
ii. Complainant has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the GETTY IMAGES mark (Reg. No. 2656652, registered December 3, 2002).
iii. The disputed domain name is confusingly similar to the mark in which Complainant has rights.
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which compete directly with Complainant.
i. Respondent’s use of the disputed domain name is disrupting Complainant’s business.
ii. Respondent is using the disputed domain name for commercial gain through reliance on mistake or confusion by linking potential Complainant customers to products sold by direct competitors of Complainant.
iii. Respondent’s typosquatting behavior is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the electronic delivery of images, illustrations, film footage and related activities.
2. Complainant has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the GETTY IMAGES mark (Reg. No. 2656652, registered December 3, 2002).
3. Respondent registered the domain name <gttyimages.com> on August 15, 2012.
4. Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which compete directly with 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.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant alleges that it has been using the GETTY IMAGES mark in commerce since 1997 in connection with the electronic delivery of images, illustrations, film footage, etc. Complainant asserts that it has a valid registration with the USPTO for the GETTY IMAGES mark (Reg. No. 2,656,652, registered December 3, 2002). See Compl. Attached Ex. E. The Panel notes that although respondent resides in China, it is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register its mark in the country that 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). The Panel holds that Complainant’s registration of the GETTY IMAGES 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 second issue that arises is whether the disputed <gttyimages.com> domain name is identical or confusingly similar to Complainant’s GETTY IMAGES mark. Complainant contends that the disputed domain name <gttyimages.com> is confusingly similar to the GETTY IMAGES mark in which Complainant has rights. The Panel notes that the disputed domain name is identical to the GETTY IMAGES mark, with the mere elimination of one letter and the addition of a generic top-level domain (“gTLD”) “.com.” The Panel notes that the elimination of a letter from a mark does not adequately distinguish the disputed domain name from the mark in question. See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”). The Panel also notes that the addition of a gTLD to a mark does not defeat a finding of confusing similarity. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Accordingly, the Panel determines that the disputed domain name <gttyimages.com> is confusingly similar to the GETTY IMAGES mark in which Complainant has rights under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’ GETTY IMAGES mark and to use it in its domain name, making only a minor spelling alteration;
(b) Respondent registered the disputed <gttyimages.com> domain name on August 15, 2012;
(c) Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which compete directly with Complainant;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant argues that Respondent is not commonly known by the disputed domain name. The Panel notes that the registrant of the disputed domain name is listed as “xu shuaiwei” in the WHOIS report provided in the Annex. 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. The circumstances at present are comparable as the only information available to the Panel is that listed in the WHOIS due to Respondent’s default. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name <gttyimages.com> under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is using the disputed domain name to redirect Internet users to products sold by direct competitors of Complainant. The Panel notes that the disputed domain name resolves to a webpage that features links that lead consumers to products of Complainant’s competitors. See Compl. Attached Ex. H. The Panel notes that the featured links include “100% Royalty Free Photos”, “Stock Photos and Images”, and “HD Video Stock Footage”. See id. The Panel holds that Respondent is not using the disputed domain name <gttyimages.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 disputed domain name leads to a website that redirects Internet users to direct competitors of Complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent’s use of the disputed domain name is disrupting the business of Complainant. Complainant asserts that Respondent is using the disputed domain name to link it’s potential customers to its own direct competitors. See Compl., at Attached Ex. H. The Panel recalls that the links featured on the webpage resolved to by the disputed domain name contain generically phrased advertisements to stock photos and footage. See id. As the Panel agrees that Respondent is using the disputed domain name to link consumers to direct competitors of Complainant, then the Panel determines that Respondent has registered and is using the disputed domain name 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).”).
Secondly, Complainant urges that Respondent is using the disputed domain name for commercial gain through reliance on mistake or confusion by linking potential Complainant customers to products sold by direct competitors of Complainant. The Panel recalls that the disputed domain name leads to a web page that links Internet users to competitors of Complainant. See Compl. Attached Ex. H. Complainant presumes that Respondent receives compensation for promoting the links to its competitors. The Panel determines 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 finds evidence of bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Thirdly, Complainant claims that Respondent’s bad faith can be traceable to typosquatting behavior. As the Panel agrees that typosquatting is evident in the disputed domain name, then the 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’”).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <gttyimages.com> domain name using the GETTY IMAGES mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gttyimages.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 16, 2014
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