United Press International, Inc. v. United Photographers Internationals
Claim Number: FA1304001492678
Complainant is United Press International, Inc. (“Complainant”), represented by David M. Abrahams of Webster, Chamberlain & Bean, LLP, District of Columbia, USA. Respondent is United Photographers Internationals (“Respondent”), Greece.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <upiphoto.com>, registered with Wild West Domains, LLC.
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 April 2, 2013; the National Arbitration Forum received payment on April 2, 2013.
On April 3, 2013, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <upiphoto.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 April 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@upiphoto.com. Also on April 4, 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 1, 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 name be transferred from Respondent to Complainant.
A. Complainant
UPI® U.S. Reg. No. 697,920 registered May 17, 1960 for “collection and distribution of news-dispatches and newspictures of world and local news, writings of columnists and feature writers, [weather maps,] reports and information to newspapers, radio and television stations; the photographing and distribution of motion picture films of news events and personalities to television stations; the collection and distribution of news and pictures to businesses and other persons,” in International Class 38; and
UPI in Stylized Form® U.S. Reg. No. 1,261,962 registered December 20, 1983 for “collection, editing, storage, and distribution, including delivery by satellite transmission, of news-dispatches and newspictures of world and local news, writings of columnists and feature writers, weather maps, reports, charts, tables, graphs and other graphic material, and information to newspapers, radio and television stations, and cable television distributors; the photographing and distribution of motion picture films and videotapes of news events and personalities to television stations and cable television distributors; the collection, editing, storage, and distribution of news, pictures, and other information to business and other persons,” in International Class 38; and
UPI® U.S. Reg. No. 3,361,193 registered January 1, 2008 for “pre-recorded videos and tapes featuring news; films on the topic of news,” in International Class 9; “news bulletins; photographs,” in International Class 16; “news clipping services; licensing of film and photographs; licensing of news articles; promotion of the books of other news topics and news gathering,” in International Class 35; “transmission of news in audio, video, fixed photo and text formats in multiple languages and via the Internet, mobile phones, radio, and TV,” in International Class 38; “news agencies, namely, gathering and dissemination of news; news analysis and features distribution; news syndication for broadcasting industry; news syndication reporting; custom writing services; providing information and news all in the field of current events and news in the nature of current event reporting via the Internet; video tape and disc production for others; photography services; news reporting services featuring interviews; providing online publications in the nature of news bulletins in the field of current events,” in International Class 41 and “stock photography services, namely, leasing reproduction rights of photographs and transparencies to others,” in International Class 42; and
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
Complainant United Press International (“UPI” or “Complainant”) is major international news agency, providing newswires, photographs and photo services to its clients throughout the world. Since 1907, UPI has been a leading provider of critical information to media outlets, businesses, governments and researchers worldwide. Headquartered in Washington D.C., UPI is a global operation with offices in Beirut, London, and Santiago. Those who have worked for UPI at one time in their career include such notable reporters as Walter Cronkite, David Brinkley, Edwin Newman, Eric Severeid and Helen Thomas and notable photographers such as Hubert van Es (Saigon evacuation photographer), and Pulitzer Prize winning White House photographer David Hume Kennerly. As a leading and trusted source for news, analysis and insight for readers around the world, UPI publishes its news, pictorial and video content on UPI.COM, which reaches up to six (6) million visitors each month. Complainant offers an entire array of content goods and services to print outlets, online media, institutions and the public, including its UPI Newspictures service, which generates significant revenue for Complainant. Through this service, Complainant produces photographs through its photographers around the world, and licenses these photographs to media outlets, online sources, institutions and the general public. In addition, Complainant maintains a searchable online photo archive dating back to 1995 and exhibits and displays its photographs via indexed “Photo Collections.” Complainant conducts business throughout the United States and worldwide and utilizes the marks “UPI,” and “UNITED PRESS INTERNATIONAL” as trademarks and service marks. Complainant has expended considerable effort and expense in offering quality goods and services under these marks and is promoting these goods and services via the Internet via the UPI.COM web site, which is accessed through the domain name <upi.com>, and which has been registered to the Complainant since April 19, 1995. At least as early as May 31, 1958, Complainant first began using the “UPI,” and “UNITED PRESS INTERNATIONAL” marks generally and in interstate commerce in connection with an entire host of goods and services, including “the collection and distribution of news and pictures to businesses and other persons,” “photographs,” “licensing of film and photographs,” “photography services,” and “stock photography services, namely leasing reproduction rights of photographs and transparencies to others.”
Respondent is an international photographic organization. Respondent conducts various activities including workshops, organizing events and exhibitions where its member’s photography is displayed. Like Complainant, Respondent maintains an online photo archive of pictures taken by its members, which it organizes into various categories including “Photojournalism”. According to Respondent’s web site, Respondent facilitates the sale of photographs to the general public (“the best images will be available for sale to the general public as “greeting cards” bringing recognition to both the photographer and UPI.”) Respondent uses the <upiphoto.com> domain name for its web site, which Respondent registered on December 16, 2008 (well after Complainant’s UPI marks and <upi.com> domain name were registered). Complainant’s web site at <upiphoto.com>, prominently displays confusingly similar “UPI” and “UNITED PHOTOGRAPHERS INTERNATIONAL” trademarks. Complainant attempted on a couple of occasions to contact Respondent to bring their attention to the confusingly similar marks and <upiphoto.com> domain name only to be ignored. On November 27, 2012, Complainant, through local counsel in Greece, sent to Respondent through its President (Mr. Emmanouel Metzakis) and Secretary General (Mr. Polichronis Nikiforakis) an official cease and desist letter served by court bailiff demanding that their infringing activities immediately cease. In keeping with its past practices, Respondent ignored this demand.
[a.] Manner in Which the Domain Name is Confusingly Similar Complainants’ Service Mark. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
Complainant has been using the mark UPI since May 1958 and is the owner of several United States trademark registrations for various marks and logos all of which predate Respondent’s December 16, 2008 registration of the <upiphoto.com> domain name. The domain name complained of wholly incorporates Complainant’s UPI mark. Respondent’s mere addition of the generic term “PHOTO” does very little to vary the impression of the dominant feature of the URL, i.e. “UPI.” As such, the domain name is virtually identical and confusingly similar to Complainant’s mark and its <upi.com> (used to access Complainant’s web site) domain name. Those searching for Complainant on the Internet could reasonably enter the domain name <upiphoto.com> in trying to access Complainant’s web site looking to purchase and/or download stock photographs to use for various purposes. The <upiphoto.com> domain name is being used in connection with a web site in which photographs (including photojournalism photographs) are being displayed and even sold. These are the same types of products and services Complainant promotes and sells on its UPI.COM web site.
[b.] Respondent Should be Considered as Having No Rights or Legitimate Interests in Respect of the Domain Name Subject to the Complaint. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
Respondent is not making a legitimate noncommercial or fair use of the <upiphoto.com> domain name. As alluded to above, Respondent is using the <upiphoto.com> domain name as more than a mere domain name, but as an indicator of source aimed at misleadingly diverting consumers to its web site. Since 1958, Complainant has been using its UPI trademark to produce photographs and license these photographs to media outlets, online sources, institutions and the general public. Complainant is a well-known worldwide news and photojournalism content provider that has been in operation since 1907 (Complainant was formally known as “United Press Association,” or “UP”). Respondent and its principals knew of or should have known of Complainant, its UPI marks and its activities (along with knowledge of Complainants’ trademark registrations). The domain name in the instant Complaint and the logo Respondent uses on its web site fully incorporates Complainant’s UPI mark. In addition, Respondent’s web site prominently displays the mark “UNITED PHOTOGRAPHERS INTERNATIONAL” which is a close facsimile of Complainant’s “UNITED PRESS INTERNATIONAL” mark. The similarities between Complainant’s marks and Respondent’s marks are too numerous to be mere coincidence. Respondent uses the “UPI” and confusingly similar “UNITED PHOTOGRAPHERS INTERNATIONAL” marks on its web site to archive, exhibit, display and sell photographs. Complainant also displays, exhibits, licenses and sells photographic content. Respondent is using the <upiphoto.com> and the associated web site to conduct activities that are closely related to Complainant’s.
Respondent cannot be said to have a legitimate interest in the <upiphoto.com> domain name as its only purpose is to direct traffic that should be going to Complainant’s site to Respondent’s web site so that Respondent can obtain photographer members, promote its photo exhibitions and market and sell the photographs taken by Respondent’s members. Respondent’s intent is solely for commercial gain, to create a likelihood of confusion and to deceive. Respondent does not have any legitimate right in and to the trademarks “UPI” or “UNITED PHOTOGRAPHERS INTERNATIONAL.” It has not registered these marks in the United States Patent and Trademark Office, nor made any attempt, to Complainant’s belief and knowledge, to register these marks in any other regulatory body responsible for the registration of intellectual property. Those visiting Respondent’s website would thereby believe they are visiting Complainant’s web site, when in reality, they have located Respondent’s website.
[c.] The <upiphoto.com> Domain Name was Registered and is Being Used in Bad Faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
Respondent is showing bad faith in the registration of the <upiphoto.com> domain name because it was registered to “intentionally attempt[] to attract, for commercial gain, Internet users to [Respondent’s] web site and other on-line locations, by creating a likelihood of confusion with the Complainant’s mark[s] as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.” Uniform Policy ¶4.b(iv). As mentioned above, upon typing in the URL <upiphoto.com>, the user is directed to the Respondent’s web site which: (1) prominently displays the an identical “UPI” mark and confusingly similar “UNITED PHOTOGRAPHERS INTERNATIONAL” marks; and (2) promotes photography and photojournalism by displaying, indexing and selling photographs (including photographs in the field of photojournalism) to the general public, which are activities that are closely related to Complainant’s.
The wholesale incorporation of Complainant’s UPI mark into the domain name and the use of confusingly similar service marks on the associated web site creates a likelihood of confusion as to the source of the services and activities promoted on the Respondents’ web site, or at the very least, a presumption that the Respondent and its activities are endorsed or sponsored by Complainant. After all, an endorsement by one of the oldest and established international photo content and news providers would only serve to generate increased sales for the endorsed party. Respondent’s use of the <upiphoto.com> domain name perpetuates the false assumption that Respondent is somehow affiliated with Complainant, when this is clearly not the case. Respondent’s intent to create a likelihood of confusion and the appearance of Complainant’s sponsorship, affiliation, or endorsement of Respondent’s activities and goods is further bolstered by Respondent’s attempt to promote its’ photography related services and activities on the web site associated with <upiphoto.com> using virtually identical marks to those of Complainant’s. Accordingly, there is a strong inference that Respondent is deliberately attempting to attract and siphon Internet users who should rightly be visiting Complainant’s web site, for commercial gain.
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 rights or legitimate interests in respect of the domain name; and
(3) the domain name has not been registered and 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 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.”).
Complainant United Press International, Inc. is a major international news agency, providing newswires, photographs, and photo services to its clients throughout the world. Complainant claims to be a leading provider of critical information to media outlets, businesses, governments, and researchers worldwide and this Panel agrees. Complainant is the owner of trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the UPI mark (e.g., Reg. No. 697,920, registered May 17, 1960). Complainant does not have to register its mark in Greece (although it did), Respondent’s country, to prove its rights under Policy ¶4(a)(i). 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). Complainant’s registration of the UPI mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶4(a)(i).”).
Complainant claims Respondent’s <upiphoto.com> domain name is confusingly similar to Complainant’s service mark as the addition of the generic term “photo” does very little to vary the impression of the dominant feature of the URL. The addition of a generic term does not adequately differentiate Respondent’s domain name from Complainant’s mark under Policy ¶4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)). The generic top-level domain (“gTLD”) “.com” must be disregarded when comparing the domain name to Complainant’s mark 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”). Therefore, the Panel concludes Respondent’s <upiphoto.com> domain name is confusingly similar to Complainant’s UPI service mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant has not adequately established its case Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name). Complainant has not claimed Respondent is a sham organization. Respondent has apparently been using the disputed domain name to sell/license photographs since 2008 without complaint…for more than four full years. During that time, Respondent has undoubtedly acquired rights to the disputed domain name. Complainant’s late claim is barred by laches.
Has Respondent infringed upon Complainant’s trademark? Quite possibly, but that is not the standard for prevailing in a UDRP proceeding.
The Panel finds Policy ¶4(a)(ii) not satisfied.
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent has rights or legitimate interests in the <upiphoto.com> domain name pursuant to Policy ¶4(a)(ii) so the Panel concludes Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent has apparently not violated any of the factors listed in Policy ¶4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶4(a)(iii)).
Did Respondent originally choose its name in 2008 to take advantage of possible confusion with Complainant’s mark? Quite possibly. But that is not the standard for proving this element in an UDRP proceeding.
The Panel finds Policy ¶4(a)(iii) not satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <upiphoto.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, May 7, 2013
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