Shutterfly, Inc. v. COMDOT INTERNET SERVICES PRIVATE LIMITED.
Claim Number: FA1208001460919
Complainant is Shutterfly, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is COMDOT INTERNET SERVICES PRIVATE LIMITED. (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shuuterfly.com> and <shutterflay.com>, registered with Pdr Ltd. d/b/a Publicdomainregistry.Com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2012; the National Arbitration Forum received payment on August 31, 2012.
On September 5, 2012, Pdr Ltd. d/b/a Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <shuuterfly.com> and <shutterflay.com> domain names are registered with Pdr Ltd. d/b/a Publicdomainregistry.Com and that Respondent is the current registrant of the names. Pdr Ltd. d/b/a Publicdomainregistry.Com has verified that Respondent is bound by the Pdr Ltd. d/b/a Publicdomainregistry.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 September 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2012 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@shuuterfly.com, and postmaster@shutterflay.com. Also on September 28, 2012, 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 October 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shuuterfly.com> and <shutterflay.com> domain names are confusingly similar to Complainant’s SHUTTERFLY mark.
2. Respondent does not have any rights or legitimate interests in the <shuuterfly.com> and <shutterflay.com> domain names.
3. Respondent registered and used the <shuuterfly.com> and <shutterflay.com> domain names in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant holds trademark registrations for its SHUTTERFLY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,520,840 registered December 18, 2001).
Respondent registered the <shuuterfly.com> and <shutterflay.com> domain names on October 4, 2007. The disputed domain names each resolve to generic websites that display hyperlinks for third-party websites,
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 Panel finds that Complainant has successfully established rights in its SHUTTERFLY mark through its USPTO registration for the purposes of 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). Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country of Respondent’s residence. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <shuuterfly.com> and <shutterflay.com> domain names are confusingly similar to Complainant’s SHUTTERFLY mark. Each domain name includes an extra character or removes a character, and includes the generic top-level domain (“gTLD”) “.com.” These changes do not distinguish the disputed domain names from Complainant’s mark. See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant alleges that Respondent is not commonly known by either the <shuuterfly.com> or the <shutterflay.com> domain names. The WHOIS record identifies the registrant of both disputed domain names as “COMDOT INTERNET SERVICES PRIVATE LIMITED.” In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel stated that the respondent was not commonly known by the disputed domain name, based on the WHOIS information on record. The Panel finds that Respondent is not commonly known by either of the <shuuterfly.com> or <shutterflay.com> domain names pursuant to Policy ¶ 4(c)(ii), as shown by the WHOIS information associated with the domain names.
Complainant argues that Respondent’s use of the <shuuterfly.com> and <shutterflay.com> domain names does not constitute a bona fide offering of goods or services because each domain name links to a generic webpage that offers hyperlinks to various third-party websites, several of which are competitors of Complainant’s business. Complainant asserts that Respondent receives a fee in exchange for hosting the hyperlinks at its website. The Panel finds that this use does not constitute 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). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant asserts that Respondent’s registration of the <shuuterfly.com> and <shutterflay.com> domain names is an example of typosquatting, which demonstrates that Respondent does not have rights or legitimate interests in the disputed domain names. The Panel finds that Respondent’s typosquatting is evidence that it lacks of rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and uses the <shuuterfly.com> and <shutterflay.com> domain names in bad faith, as shown by Respondent’s history of registering domain names containing trademarks belonging to other entities. Respondent has had several UDRP decisions against it, transferring the disputed domain names to the holder of the mark. See Hot Topic, Inc. v. Comdot Internet Servs. Private Ltd., FA 1303837 (Nat. Arb. Forum Mar. 5, 2010); see also Charlotte Russe Merchandising, Inc. v. COMDOT INTERNET SERVS. PRIVATE LTD. The Panel finds that the multiple adverse UDRP decisions against Respondent are evidence that Respondent registered and uses the <shuuterfly.com> and <shutterflay.com> domain names in bad faith pursuant to 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 disrupts its Complainant’s business by linking consumers to websites that promote products that compete with Complainant and drawing customers away from Complainant’s website. In Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), the panel held that the respondent’s use of the resolving website to mislead Internet traffic to the complainant’s competitors demonstrated bad faith registration and use. The Panel finds that by diverting visitors to competing websites via the hyperlinks displayed at the resolving webpages, Respondent disrupts Complainant’s business, showing bad faith registration and use under Policy ¶ 4(b)(iii).
Respondent’s use of a “click-through” website at the <shuuterfly.com> and <shutterflay.com> domain names to generate revenue shows Respondent’s bad faith registration and use. The Panel finds Respondent’s use of the domain names to confuse Internet users as to the affiliation of Complainant’s business with the disputed domain names, in order to attract traffic and make a commercial profit, constitutes bad faith registration and use 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).”).
Respondent has also purposely misspelled the <shuuterfly.com> and <shutterflay.com> domain names to confuse consumers. The panel in Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), concluded that the respondent’s registration of the disputed domain name in order to take advantage of Internet users’ typographical errors was considered typosquatting, and concluded that the respondent registered and used the domain name in bad faith. The Panel finds that Respondent’s typosquatting is evidence of Respondent’s bad faith registration and use.
The Panel finds that 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 <shuuterfly.com> and <shutterflay.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 2, 2012
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