Getty Images (US), Inc. and its subsidiary Istockphoto LP v. Above.com Domain Privacy
Claim Number: FA1303001489476
Complainant is Getty Images (US), Inc. and its subsidiary Istockphoto LP (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bistockphoto.com>, <gerttyimages.com>, <gettyimagas.com>, <gettyimagea.com>, <gettyimager.com>, <gettyimagescom.com>, <gettyimagess.com>, <gettyimagews.com>, <gettyimagex.com>, <gettyimagrs.com>, <gettyimajes.com>, <gettymiages.com>, <gettytimages.com>, <hgettyimages.com>, and <istiockphoto.com>, registered with Above.Com Pty Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2013; the National Arbitration Forum received payment on March 12, 2013.
On Mar 12, 2013, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <bistockphoto.com>, <gerttyimages.com>, <gettyimagas.com>, <gettyimagea.com>, <gettyimager.com>, <gettyimagescom.com>, <gettyimagess.com>, <gettyimagews.com>, <gettyimagex.com>, <gettyimagrs.com>, <gettyimajes.com>, <gettymiages.com>, <gettytimages.com>, <hgettyimages.com>, and <istiockphoto.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. 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 April 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2013 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@bistockphoto.com, postmaster@gerttyimages.com, postmaster@gettyimagas.com, postmaster@gettyimagea.com, postmaster@gettyimager.com, postmaster@gettyimagescom.com, postmaster@gettyimagess.com, postmaster@gettyimagews.com, postmaster@gettyimagex.com, postmaster@gettyimagrs.com, postmaster@gettyimajes.com, postmaster@gettymiages.com, postmaster@gettytimages.com, postmaster@hgettyimages.com, postmaster@istiockphoto.com. Also on April 18, 2013, 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 May 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
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Trademark/Service Mark Information
Complainant’s
Mark: GETTYIMAGES [i.] Electronic delivery of images, photographs, art, graphic images and graphic design, clip art, news images, illustrations, digital animation, video clips, film footage and audio data via a global computer network and other computer networks. FIRST USE: 19980209. FIRST USE IN COMMERCE: 19980209 (US Reg. No. 2656652);
[ii.] Computer software on CD-ROM disks or downloadable format for use in the field of creating and manipulating visual media, graphic images, news images, illustrations, [digital animation,] video clips, film footage and audio data; computer software on CD-ROM disks or downloadable format for desktop publishing, electronic publishing and printing of [type-faces,] clip art and photographic images, but expressly excluding book publishing; [photographic slide transparencies;] prerecorded digital CD-ROM disks featuring pictures, images, text, and sound [;interactive multimedia products, namely, Internet tools for storing, organizing, searching, downloading, licensing and managing licenses of still images, moving images, audio, video, photographs and text; computer software and CD-ROM disks for accessing, via a global computer network, still images, moving images, audio and text; file management software for searching, browsing, selecting, and retrieving files within a program and for opening and saving images to various file formats]. FIRST USE: 19971200. FIRST USE IN COMMERCE: 19971200 (US Reg. No. 2837208);
[iii.] Storage of electronic
media, namely images, photography, videos, files, documents, databases, text,
audio data and other electronic data; media management services; document
delivery. FIRST USE: 20011201. FIRST USE IN COMMERCE: 20011201 (US Reg. No.
2844647); and |
Complainant
Mark: ISTOCKPHOTO
[i.] Downloadable digital photographs, illustrations, audio clips, video
clips, fonts, code snippets and graphics; commercial administration of the
licensing of rights to download and use the digital photographs, illustrations,
audio, video, fonts, code snippets and graphics of others; providing of
information in the field of commercial administration of the licensing of
visual and audio content; providing on-line chat rooms and discussion forums
for transmission of messages among computer users concerning digital
photographs, illustrations, audio, video, fonts, code snippets, and graphics,
and providing online discussion forums and chat rooms in the field of digital
media design tools, software and hardware, creative processes and methods and
processes relating to the creation, editing, usage and licensing of visual and
audio content. Providing information in the field of digital photographs,
illustrations, audio and video, namely, providing an online searchable database
of digital photographs, illustrations, audio, namely, prerecorded music,
ring-tones, and other sounds, video, namely, prerecorded videos of still
photographs, images, and moving images; Providing information about the methods
and processes used in creating, editing and using traditional and digital
photographs, illustrations, on-line audio recordings, videos, fonts, code
snippets and graphics and other on-line design elements; providing information
about digital design tools, software and hardware; technical support services,
namely, troubleshooting of computer hardware and software problems incurred
while uploading and downloading digital photographs, illustrations, audio,
video, fonts, code snippets and other design elements via the Internet FIRST
USE: 20060407. FIRST USE IN COMMERCE: 20060407 (US Reg. No. 3440599); and
[ii.] Licensing of intellectual property; licensing of intellectual property of others; licensing of intellectual property via computer networks and global communications networks; licensing of intellectual property, namely, images, pictures, photographs, stock photographs, stock photography pictorial images, still images, moving images, film, video, graphic designs, clip art, news images, audio data, musical sound recordings, multimedia recordings, animations, illustrations, computer source code snippets, website templates, electronic mail templates, electronic templates for brochures, electronic templates for cards, and electronic templates for audio, video, multimedia, and photographic presentations in downloadable and non-downloadable form; stock photography services, namely, leasing reproduction rights of photographs, transparencies and digital content to others. FIRST USE: 20110630. FIRST USE IN COMMERCE: 20110630 (US Reg. No. 4196972).
The marks cited above are hereafter referred to as the “Complainant Mark(s)”. Complainant is the owner of trademark and/or service mark registrations cited in above for which it has obtained multiple US, community and foreign registrations. None of the referenced registrations have been abandoned, canceled or revoked with the USPTO, OHIM or the Canadian Intellectual Property Office, exhibiting clear rights to protect against any infringement of the use of their trademarked name by others.
Furthermore,
Complainant’s extensive use in commerce of the GETTYIMAGES.COM and
ISTOCKPHOTO.COM domain name(s) evidences Complainant’s ownership of rights in
the Marks. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14,
2000) (Panel found “especially pertinent” that the Complainant Yahoo! owned and
used the domain name finance.yahoo.com in holding the disputed domain name
yahooventures.com confusingly similar to the mark YAHOO).
FACTUAL AND LEGAL GROUNDS
This
Complaint is based on the following factual and legal grounds:
Founded in 1995, Getty Images (US), Inc. ("Getty Images") 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, including music. Getty Images serves business customers in more than 100 countries and is the first place creative and media professionals turn, to discover, purchase and manage images and other digital content.
On its website, GETTYIMAGES.COM, professionals and amateurs can access award-winning photography and imagery to inspire their work, much of which appears every day in the world’s most influential newspapers, magazines, advertising campaigns, films, television programs, books and websites.
Since inception, Getty Images has adopted a business model that supports aggressive acquisition and expansion. As a result, Getty Images has emerged as the world’s largest stock photo company, operating some of the most internationally famous and popular stock photography websites.
In 2006, Getty Images acquired Istockphoto. Istockphoto started as one of the first stock imagery websites, growing to produce revenue of $71.9 million UDS in 2007. Istockphoto LP is an image and design community, which enables its members to buy and sell photos, illustrations, video, audio, and Flash files online. The company was founded as Istock International, Inc. in 2000 and changed its name to Istockphoto LP in October 2008. As of February 9, 2006, Istockphoto LP was acquired as a subsidiary of Getty Images, Inc., and continues to be based in Calgary, Canada. Istockphoto’s online, royalty free, international microstock photography provides vector graphics in programs like Adobe Illustrator, Macromedia Freehand, Macromedia Flash, and Adobe Photoshop. The Istockphoto keyword searches provide multilingual searching abilities, and the website can now be viewed in English, French, Spanish, and German.
Getty Images owns the registered US Trademarks for all of the Complainant’s Mark(s) listed above, clearly evidencing Getty Images’ legitimate rights to protect against infringement of their famous GETTY IMAGES and ISTOCKPHOTO trademarks. In addition to US federal trademark registrations, Getty Images owns numerous foreign and Community trademark registrations for GETTY IMAGES and ISTOCKPHOTO. Based on these registrations, as well as their extensive use, Getty Images owns the exclusive right to use and defend the GETTY IMAGES and ISTOCKPHOTO Mark(s) in connection with online digital photo and imaging services.
Through the company’s various websites and products, Getty Images maintains a prominent presence on the Internet through Facebook, Twitter and Istockvideo on YouTube. In addition, Getty Images has spent millions of dollars in advertisement and promotion of the GETTY IMAGES and ISTOCKPHOTO Mark(s) on the Internet through their websites located at WWW.GETTYIMAGES.COM and WWW.iStockPhoto.COM. The websites have been well-received, attracting significant online visitors each month, and the company has clearly established itself in the business of digital photographic services.
In summary, Getty Images’ use, ownership and vigorous defense of their trademarks evidences the Company’s legitimate rights to protect against infringement of their well-known names.
Preliminary Issue: MULTIPLE
COMPLAINANTS
In the instant proceedings, Complainants are, in fact, one entity. 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.”
It is undisputed in the record that Istockphoto LP is a subsidiary of Getty Images, and that together they specialize in the marketing multiple and varied online photographic services. Complainant cites prior UDRP Decisions wherein the previous panels deemed this to be proven. See Getty Images (US), Inc. v Above.com Domain Privacy, FA 1432745 (Nat. Arb. Forum April 30, 2012); see also Getty Images (US), Inc. v private Registrations Aktien Gesellschaft FA 1460732 (Nat. Arb. Forum October 26, 2012).
Additionally, the Forum’s
Supplemental Rule 1(e) allows multiple parties to proceed as one party where
they can show a sufficient link to each other. See, for example, Vancouver
Organizing Comm. for the 2010 Olympic and Paralympic Games and Int’l Olympic
Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel there
concluding that “It has been accepted that it is permissible for two
complainants to submit a single complaint if they can demonstrate a link
between the two entities such as a relationship involving a license, a
partnership or an affiliation that would establish the reason for the parties
bringing the complaint as one entity.”.
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[a.] |
The Disputed Domain Name(s) are
nearly identical and confusingly similar to Complainant's Marks.
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[b.] |
Respondent has no rights or
legitimate interests in respect of the Disputed Domain Name(s) for the
following reasons:
As
pertains to Disputed Domain Name(s)
<gerttyimages.com, gettyimagas.com, gettyimagea.com, gettyimager.com,
gettyimagescom.com, gettyimagess.com, gettyimagews.com, gettyimagex.com,
gettyimagrs.com, gettyimajes.com, gettymiages.com, gettytimages.com,
hgettyimages.com>:
As pertains to Disputed Domain Name(s)<bistockphoto.com, istiockphoto.com>:
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[c.] |
The Disputed Domain Name(s)
should be considered as having been registered and being used in bad faith
for the following reasons:
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B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
There are two Complainants in this matter: Complainant contends is effectively one entity because Istockphoto LP is a subsidiary of Getty Images. Both of them market online photographic services. Complainant supports its contention with previous UDRP decisions finding both Complainants to consist of one unit for the purposes of the proceeding. See Getty Images (US), Inc. v. Above.com Domain Privacy, FA 1432745 (Nat. Arb. Forum April 30, 2012). While the rules of res judicata would apply to enforcing an adverse decision against Complainant, they do not apply in this case because Respondent must be given the opportunity to litigate this matter. However, Respondent has not taken advantage of that opportunity and Complainant has met the very low threshold of making out a prima facie case.
Previous 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. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
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. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and this Panel elects to treat them all as a single entity in this proceeding.
Complainant Getty Images (US), Inc. and its subsidiary Istockphoto claims they are 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 or premium digital content, including music. Complainant is the owner of trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the GETTY IMAGES mark (e.g., Reg. No. 2,656,652, registered December 3, 2002) and for the ISTOCKPHOTO mark (e.g., Reg. No. 3,440,599, registered June 3, 2008). Although Respondent appears to reside in Australia, Policy ¶4(a)(i) does not require that the mark be registered in the country in which Respondent operates. It is sufficient Complainant can demonstrate rights a mark in some jurisdiction. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant’s registration of the GETTY IMAGES and ISTOCKPHOTO marks with the USPTO sufficiently establishes its rights in the marks pursuant to Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)).
Complainant claims Respondent’s <bistockphoto.com>, <gerttyimages.com>, <gettyimagas.com>, <gettyimagea.com>, <gettyimager.com>, <gettyimagescom.com>, <gettyimagess.com>, <gettyimagews.com>, <gettyimagex.com>, <gettyimagrs.com>, <gettyimajes.com>, <gettymiages.com>, <gettytimages.com>, <hgettyimages.com>, <hinkstock.com>, <istiockphoto.com>, <thinksotck.com>, <thinksstock.com>, <thinkstoc.com>, <thinkstockphots.com>, <thinkstockphtos.com>, <thinkstok.com>, <thinktock.com>, <thnikstock.com>, <thnkstock.com>, and <wwwthinkstock.com> domain names are confusingly similar to Complainant’s marks because they differ by only a single character from Complainant’s marks. The <bistockphoto.com>, <gerttyimages.com>, <gettyimagess.com>, <gettyimagews.com>, <gettytimages.com>, <hgettyimages.com>, <istiockphoto.com> add the letter “b,” “r,” “s,” “w,” “t,” “h,” or “i” to the disputed domain names. The addition of a letter does not distinguish Respondent’s domain names from Complainant’s marks under Policy ¶4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). The <gettyimagas.com>, <gettyimagea.com>, <gettyimager.com>, <gettyimagex.com>, <gettyimagrs.com>, <gettyimajes.com> domain names substitute letters in Complainant’s GETTY IMAGES mark. The substitution of letters is generally inconsequential to a Policy ¶4(a)(i) analysis. 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”). The <gettyimagescom.com> mark adds a second “com” to the domain name. The addition of a second “com” does not sufficiently differentiate the disputed domain from Complainant’s mark under Policy 4(a)(i). See Borders Props., Inc. v. Hewitt, FA 114618 (Nat. Arb. Forum July 23, 2002) (“The added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term . . . [t]herefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”). The <gettymiages.com> domain name transposes the letters “i” and “m” in Complainant’s mark. The transposition of letters in a domain name does not sufficiently differentiate it under a Policy ¶4(a)(i) analysis. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). The <thinkstockphots.com>, <thinkstockphtos.com> domain names incorporate the “STOCKPHOTO” portion of Complainant’s ISTOCKPHOTO mark, but deletes the letter “o” in the “PHOTO” portion of the mark. The removal of letters in a domain name does not sufficiently differentiate a disputed domain name from Complainant’s mark in a Policy 4(a)(i) analysis. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Respondent (by necessity) adds the generic top-level domain (“gTLD”) “.com” to the disputed domain names. The addition of a gTLD (or a ccTLD) does not sufficiently distinguish Respondent’s domain names from Complainant’s marks under Policy ¶4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Respondent’s <bistockphoto.com>, <gerttyimages.com>, <gettyimagas.com>, <gettyimagea.com>, <gettyimager.com>, <gettyimagescom.com>, <gettyimagess.com>, <gettyimagews.com>, <gettyimagex.com>, <gettyimagrs.com>, <gettyimajes.com>, <gettymiages.com>, <gettytimages.com>, <hgettyimages.com>, <thinkstockphtos.com> domain names are confusingly similar to Complainant’s GETTY IMAGES and ISTOCKPHOTO marks under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has not been commonly known by the disputed domain names. The WHOIS information for the disputed domain names identifies “Above.com Domain Privacy” as the registrant. This is a domain name registration privacy service. It seems clear Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii). Respondent has not contended otherwise.
Complainant claims Respondent is not sponsored by or legitimately affiliated with Complainant in any way, except as an affiliate. Frankly, the Panel finds this bizarre. Complainant has apparently contracted with an unknown person through an entity known as LinkConnector. How this has happened is not clear to the Panel and the Panel declines to ask for further information under UDRP rule 12. Since it makes no sense, Complainant does not explain it and Complainant has not bothered to cite any applicable sections of the affiliate agreement, the Panel finds Complainant has failed to make out a prima facie case regarding the affiliate agreement. Enforcement of affiliate agreements is beyond the prevue of the UDRP, although it might have shown Respondent had some rights. Respondent has not made that claim, so the Panel likewise will not find the affiliate agreement conferred some rights on the Respondent.
Complainant claims Respondent is using the <gerttyimages.com>, <gettyimagescom.com>, <gettyimagess.com>, <gettyimagews.com>, <gettyimagex.com>, <gettyimagrs.com>, <gettyimajes.com>, <gettymiages.com>, <gettytimages.com>, <hgettyimages.com> domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Some of the disputed domain names resolve to web directories, listing competing links such as “GETTY IMAGES PHOTOS,” “FREE STOCK PHOTOS,” “Shutterstock Stock Photos,” and others. Respondent’s use of the disputed domain names to offer competing links is not a Policy ¶4(c)(i) bona fide offering of goods and services or a Policy ¶4(a)(i) legitimate noncommercial or fair use. 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).
Complainant claims Respondent is using some of the fifteen disputed domain names to redirect Internet users to Complainant’s own website through Complainant’s affiliate program (without bothering to specify which disputed domain names…other than to say “some or all”, which forces the Panel to determine there were only three out of fifteen … <gettyimagas.com>, <gettyimagea.com> and <gettyimager.com>…hardly “some or all” as claimed in the Complaint). Respondent’s use of the disputed domain names to redirect to Complainant’s website may be a legitimate noncommercial or fair use under Policy ¶4(c)(iii). For example, Respondent could have a typing problem and often makes the same typographical error. Rather than build a short cut into Respondent’s browser, it bought the disputed domain name. While this might be improbable, Complainant has not made a prima facie case it isn’t true. While courts may default a respondent for failing to respond and ipso facto find liability, Panels must still make an independent assessment on the merits based upon the information provided to them. See Office Depot, Inc. v. NA Main Street - Emile Caram Building (), FA1303001489308 (May 2, 2013).
There is a saving argument which is obvious from Complainant’s paperwork, even though Complainant does not make the argument. Respondent used a privacy service to register all of the disputed domain names. This means Respondent cannot have acquired any rights to the disputed domain names in a commercial context because it does not disclose its true identity.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant makes the usual claim “typosquatting” constitutes bad faith registration and use. The Panel notes such a claim is not persuasive under the UDRP because “typosquatting” alone does not meet the requirements for finding bad faith registration and use.
Complainant claims Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. Most of disputed domain names resolve to web directories, listing competing links such as “GETTY IMAGES PHOTOS,” “FREE STOCK PHOTOS,” “Shutterstock Stock Photos,” and others. Complainant claims these links divert potential customers away from Complainant to third-party websites. Respondent’s use of the disputed domain names in this manner disrupts Complainant’s business under Policy ¶4(b)(iii), except for the <gettyimagas.com>, <gettyimagea.com> and <gettyimager.com> domain names (which forward to Complainant’s own web site). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶4(b)(iii)).
Complainant claims Respondent has registered and used the disputed domain names in bad faith by using the disputed domain names to attract and mislead consumers for its own profit. Respondent set up a “click through” website for which it likely receives revenue for each misdirected Internet users. The disputed domain names which resolve to web directories listing competing links such as “GETTY IMAGES PHOTOS,” “FREE STOCK PHOTOS,” “Shutterstock Stock Photos,” and others were registered and are being used in bad faith. Respondent’s use of the disputed domains to attract Internet users for its own commercial gain shows bad faith use and registration under 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.’”).
Now comes the interesting issue: <gettyimagas.com>, <gettyimagea.com> and <gettyimager.com>. Complainant claims Respondent is using this disputed domain names to redirect Internet users to Complainant’s own website through Complainant’s affiliate program. Complainant has apparently been paying some unknown Respondent to direct traffic to Complainant’s own web site. How poetic. How could this possibly disrupt Complainant’s business when Complainant voluntarily elected to pay Respondent since August of 2010 (even if Complainant supposedly didn’t know what it was doing)? Complainant contends Respondent has attempted to opportunistically benefit from its registration and use of the disputed domain names through Complainant’s affiliate program. Perhaps. But who had the last opportunity to avoid this problem? Is Complainant really contending Respondent duped it for years? The Panel does not accept such a suggestion by a commercially astute Complainant. Complainant no doubt was willing to pay the referral fees (and to get the commercial benefit of the re-direction) as long as the referral fees were less than the domain name registration fees (and that isn’t much). Complainant is responsible for running its affiliate program and cannot blame Respondent for taking advantage of a commercial opportunity Complainant created.
However, these three domain names (inter alia) were registered with a privacy service. This Panel has held in the past such a registration in a commercial context raises the presumption of bad faith registration and use. This Panel elects to follow that holding in this case. Respondent has done nothing to rebut this presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <bistockphoto.com>, <gerttyimages.com>, <gettyimagas.com>, <gettyimagea.com>, <gettyimager.com>, <gettyimagescom.com>, <gettyimagess.com>, <gettyimagews.com>, <gettyimagex.com>, <gettyimagrs.com>, <gettyimajes.com>, <gettymiages.com>, <gettytimages.com>, <hgettyimages.com>, and <istiockphoto.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, May 23, 2013
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