Shutterstock Images LLC v. Hoa Thi
Claim Number: FA0904001258992
Complainant is Shutterstock
Images LLC (“Complainant”), represented by Michael C. Lesser,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <freeshutterstock.com>, registered with Uk2 Group Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 29, 2009.
On April 23, 2009, Uk2 Group Ltd. confirmed by e-mail to the National Arbitration Forum that the <freeshutterstock.com> domain name is registered with Uk2 Group Ltd. and that Respondent is the current registrant of the name. Uk2 Group Ltd. has verified that Respondent is bound by the Uk2 Group Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 28, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@freeshutterstock.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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." 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 makes the following assertions:
1. Respondent’s <freeshutterstock.com> domain name is confusingly similar to Complainant’s SHUTTERSTOCK mark.
2. Respondent does not have any rights or legitimate interests in the <freeshutterstock.com> domain name.
3. Respondent registered and used the <freeshutterstock.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shutterstock Images LLC, is the owner of the SHUTTERSTOCK mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,084,900 issued April 25, 2006). The SHUTTERSTOCK mark is used in connection with the marketing and publishing of digital data and graphic design.
Respondent registered the <freeshutterstock.com> domain name on January 5, 2009. Respondent is using the disputed domain name to resolve to a website distributing images and digital files obtained from Complainant’s <shutterstock.com> website and Complainant’s competitors, in which Respondent had no rights.
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."
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.”).
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.
The Panel finds that Complainant has established its rights in the SHUTTERSTOCK mark sufficient to satisfy Policy ¶ 4(a)(i) based on its registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant alleges that Respondent’s <freeshutterstock.com> domain name is confusingly similar to its SHUTTERSTOCK mark. The disputed domain name incorporates Complainant’s SHUTTERSTOCK mark in its entirety with the addition of the generic term “free” preceding it, and the affixation of the generic top-level domain name “.com.” The Panel finds that the addition of the generic term “free” to Complainant’s SHUTTERSTOCK mark fails to alleviate the confusing similarity between Complainant’s mark and Respondent’s <freeshutterstock.com> domain name. The word “free” simply describes Respondent’s use of the disputed domain name to distribute Complainant’s digital data at no cost. Additionally, the Panel concludes that the addition of the generic top-level domain “.com” is insufficient to distinguish the disputed domain name from Complainant’s mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). Therefore, the Panel finds that Complainant’s SHUTTERSTOCK mark and Respondent’s <freeshutterstock.com> domain name are confusingly similar under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must establish a prima facie case to support these contentions, and the Panel finds Complainant has done so in these proceedings. Once Complainant has produced a sufficient prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interest in the disputed domain name under Policy ¶ 4(c). Respondent failed to submit a response in these proceedings, thus the Panel may infer that Respondent lacks rights and legitimate interests in the disputed domain name. However, the Panel will review to record to determine whether Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant asserts that Respondent is not authorized to use Complainant’s SHUTTERSTOCK mark or distribute its intellectual property. Additionally, the WHOIS information lists Respondent as “Hoa Thi” which fails to suggest that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Thus, the Panel finds that Respondent is not commonly known by the <freeshutterstock.com> domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
The disputed domain name resolves to a website that
distributes intellectual property owned by Complainant and Complainant’s
competitors, in which Respondent has no rights.
Respondent is not an authorized distributor of Complainant’s digital
data, and is attempting to divert Internet users seeking Complainant’s
services, to Respondent’s <freeshutterstock.com> domain name. The Panel presumes that Respondent is
profiting from such use. Therefore,
Respondent has failed to make a bona fide
offering of goods or services or a legitimate noncommercial or fair use under
Policy ¶¶ 4(c)(i) or (iii). See K&N Eng’g, Inc. v. Weinberger, FA 114414 (Nat. Arb.
Forum July 25, 2002) (holding that the respondent, who was not an authorized
distributor of the complainant’s products, lacked rights or legitimate
interests in a domain name incorporating the complainant’s mark); see also Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet
users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is engaging in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) because the confusingly similar disputed domain name is being used to divert Internet users to Respondent’s <freeshutterstock.com> domain name, distributing Complainant and Complainant’s competitors’ digital data without authorization. Such use presumably disrupts Complainant’s business. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Respondent’s use of a confusingly similar domain name, intentionally attempting to attract Internet users to Respondent’s website while presumably generating revenue, constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freeshutterstock.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: June 15, 2009
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