Getty Images (US), Inc. and its subsidiary, Istockphoto LP v. Ryan G Foo / PPA Media Services
Claim Number: FA1312001535953
Complainant is Getty Images (US), Inc. and its subsidiary, Istockphoto LP (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <isstockphoto.com>, <istickphoto.com>, and <istockpohoto.com>, registered with Internet.Bs Corp.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2013; the National Arbitration Forum received payment on December 23, 2013.
On January 2, 2014 Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <isstockphoto.com>, <istickphoto.com>, and <istockpohoto.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 January 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 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@gettiyimages.com, postmaster@gettyinages.com, postmaster@guettyimages.com, postmaster@isstockphoto.com, postmaster@istickphoto.com, postmaster@istockpohoto.com. Also on January 21, 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 February 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants: Istockphoto LP and Getty Images. 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.”
According to the Complaint, Istockphoto LP is a subsidiary of Getty Images, and together the two entities specialize in the marketing of multiple and varied online photographic services. Complainant cites prior UDRP decisions wherein previous panels deemed the two entities to be one complainant for the purposes of the UDRP. 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 Oct. 26, 2012). 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.”).
As 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, the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants. Therefore, the Panel treats them all as a single entity in this proceeding. Throughout the below decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
1. Policy ¶ 4(a)(i)
a. Founded in 1995, Complainant 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. Complainant serves business customers in more than 100 countries and is currently the world’s largest stock photo company. See Complainant’s Exhibit G.
b. Complainant owns rights in the GETTY IMAGES and ISTOCKPHOTO marks, used in connection with online digital photo and imaging services.
i. Complainant has registered the GETTY IMAGES mark with the United States Patent and Trademark Office (“USPTO) (e.g., Reg. No. 2,656,652 registered December 3, 2002).
ii. Complainant has registered the ISTOCKPHOTO mark with the USPTO (Reg. No. 3,440,599 filed April 18, 2005; registered June 3, 2008) and the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA660331 filed October 19, 2004; registered March 7, 2006).
c. Respondent’s <gettiyimages.com>, <gettyinages.com>, and <guettyimages.com> domain names are confusingly similar to Complainant’s GETTY IMAGES mark.
d. Respondent’s <isstockphoto.com>, <istickphoto.com>, and <istockpohoto.com> domain names are confusingly similar to Complainant’s ISTOCKPHOTO mark.
2. Policy ¶ 4(a)(ii)
a. Respondent has not been commonly known by the disputed domain names.
i. Complainant has not given Respondent permission to use Complainant's marks in domain names.
ii. The WHOIS information suggests Respondent is known as an entity other than the trademarks associated with Complainant.
b. Respondent is not using the disputed domain names to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii).
i. Respondent is using the <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <istickphoto.com>, and <istockpohoto.com> domains to redirect unsuspecting Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant's business. See Complainant’s Exhibit H. Presumably, Respondent receives pay-per-click fees from these linked websites.
ii. Respondent is using the <isstockphoto.com> domain name to redirect Internet users to Complainant's own website through Complainant's affiliate program, which is in direct violation of the affiliate agreement which governs Respondent's relationship as an affiliate of Complainant.
3. Policy ¶ 4(a)(iii)
a. Respondent is a recalcitrant, serial cybersquatter, and has engaged in an ongoing pattern of such behavior. See Gamestop, Inc. v. PPA Media Servs. / Ryan G Foo, FA 1515572 (Nat. Arb. Forum Oct. 15, 2013); see also Radisson Hotels Int’l, Inc. v. PPA Media Servs. / Ryan G Foo, FA 1528486 (Nat. Arb. Forum Dec. 19, 2013); see also Yahoo! Inc. v. PPA Media Servs. / Ryan G Foo, FA 1526653 (Nat. Arb. Forum Dec. 4, 2013)
b. Respondent has registered and used the contested domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by advertising pay-per-click links on the resolving websites that promote products that compete with Complainant. These links divert potential customers away from Complainant to competing third-party websites, which disrupts Complainant’s business in bad faith.
c. Respondent has registered and used the contested domain names in bad faith pursuant to Policy ¶ 4(b)(iv) by using the domains to attract and mislead consumers for Respondent’s own profit. Respondent takes advantages of Complainant's registered trademarks to achieve a wrongful competitive advantage and commercial gain by using the resolving websites to provide links to services and products that compete with those offered by Complainant.
d. Respondent's registration and use of the <isstockphoto.com> domain name while a member of Complainant's affiliate program constitutes additional evidence of bad faith under Policy 4(a)(iii).
e. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the at-issue marks.
i. Respondent incorporated common misspellings of Complainant’s trademarks in multiple domain names.
ii. Respondent was a member of Complainant’s affiliate program and thus must have known of Complainant and its trademarks before it registered the domain names.
f. Respondent has exhibited typosquatting behavior which is, in and of itself, evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain names on the following dates:
a. <gettiyimages.com> on September 26, 2004;
b. <gettyinages.com> on November 8, 2007;
c. <guettyimages.com> on October 28, 2004;
d. <isstockphoto.com> on September 25, 2005;
e. <istickphoto.com> on June 21, 2005; and
f. <istockpohoto.com> on July 18, 2007.
Complainant established that it had rights in the marks contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected marks.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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 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.”).
Founded in 1995, Complainant claims to be 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. Complainant adds that it serves business customers in more than 100 countries and is currently the world’s largest stock photo company. See Complainant’s Exhibit G. Complainant claims rights in the GETTY IMAGES and ISTOCKPHOTO marks, used in connection with online digital photo and imaging services. Complainant provides evidence of its registration of the GETTY IMAGES mark with the USPTO (e.g., Reg. No. 2,656,652 filed August 30, 2001; registered December 3, 2002) and the ISTOCKPHOTO mark with the USPTO (Reg. No. 3,440,599 filed April 18, 2005; registered June 3, 2008) and the CIPO (Reg. No. TMA660331 filed October 19, 2004; registered March 7, 2006). See Complainant’s Exhibit E. Past panels have recognized rights where a mark is registered with a federal trademark authority, regardless of the location of the respondent. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also 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). Moreover, panels have held that rights in registered marks date back to the date of filing. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights dates back to the application’s filing date). As such, the Panel concludes that Complainant has established, pursuant to Policy ¶ 4(a)(i), rights in the GETTY IMAGES mark dating back to August 30, 2001 and rights in the ISTOCKPHOTO mark dating back to October 19, 2004.
Complainant first argues that Respondent’s <gettiyimages.com>, <gettyinages.com>, and <guettyimages.com> domain names are confusingly similar to Complainant’s GETTY IMAGES mark. The Panel notes that each disputed domain removes the space between words in Complainant’s mark while affixing the generic top-level domain (“gTLD”) “.com.” Previous panels have found such changes to be insignificant with near-unanimity. See, e.g., Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel further notes that the <gettiyimages.com> and <guettyimages.com> domain names each add an extra letter to Complainant’s GETTY IMAGES mark, while the <gettyinages.com> domain name replaces the letter “m” in Complainant’s mark with the letter “n.” As the Panel agrees that neither the addition of a single letter to Complainant’s mark nor the replacement of one letter with another is sufficient to defeat a claim of confusing similarity, the Panel holds Respondent’s <gettiyimages.com>, <gettyinages.com>, and <guettyimages.com> domain names confusingly similar to Complainant’s GETTY IMAGES mark for the purposes of Policy ¶ 4(a)(i). See, e.g., Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Complainant next argues that Respondent’s <isstockphoto.com>, <istickphoto.com>, and <istockpohoto.com> domain names are confusingly similar to Complainant’s ISTOCKPHOTO mark. Preliminarily, the Panel again notes that each domain affixes the “.com” gTLD to a variation of Complainant’s mark. The Panel finds this augmentation irrelevant to its Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel further notes that the <isstockphoto.com> and <istockpohoto.com> domain names each add an extra letter to Complainant’s ISTOCKPHOTO mark, while the <istickphoto.com> domain name replaces the first instance of the letter “o” in Complainant’s mark with the letter “i.” In Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), the panel explained that “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).” Moreover, the panel in Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) reasoned that the <belken.com> domain name was 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.” In light of the foregoing, the Panel agrees that Respondent’s <isstockphoto.com>, <istickphoto.com>, and <istockpohoto.com> domain names are in fact confusingly similar to Complainant’s ISTOCKPHOTO mark within the meaning of Policy ¶ 4(a)(i).
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.”).
According to Complainant, Respondent has not been commonly known by the disputed domain names. Complainant states that it has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's mark, and argues that the WHOIS information on file for each domain suggests that Respondent is known as an entity other than the trademarks associated with Complainant. The Panel notes that the relevant WHOIS information identifies Respondent as “Ryan G Foo / PPA Media Services.” The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) held that a respondent is not commonly known by disputed domain names where the WHOIS information, as well as all other information in the record, gives no indication that the respondent is commonly known by the domain names, and where the complainant has not authorized the respondent to register a domain name containing its registered mark. This Panel notes a dearth of evidence rebutting Complainant’s contentions in the instant case, as Respondent has failed to satisfy its burden of responding to this proceeding. In view of the evidence presented in the record, coupled with Respondent’s failure to plead any facts to the contrary, the Panel concludes that Respondent is not commonly known by <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <isstockphoto.com>, <istickphoto.com>, or <istockpohoto.com> for the purposes of Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is not using the disputed domain names to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii). Complainant asserts that Respondent uses the <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <istickphoto.com>, and <istockpohoto.com> domains to redirect unsuspecting Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant's business. See Complainant’s Exhibit H. Complainant urges the Panel to presume that Respondent receives pay-per-click fees from these linked websites. Past panels have declined to recognize rights or legitimate interests where a respondent uses a confusingly similar domain to host competing hyperlinks from which respondent collects revenues. See, e.g., 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). The instant Panel similarly reasons that Respondent’s use of the <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <istickphoto.com>, and <istockpohoto.com> domains to redirect consumers searching for Complainant online to Respondent’s site, where Respondent collects pay-per-click fees from generic links, represents neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant also contends that Respondent uses the <isstockphoto.com> domain name in discord with Policy ¶ 4(a)(ii). According to Complainant, Respondent is merely using this domain to redirect Internet users to Complainant's own website through Complainant's affiliate program, which is in direct violation of the affiliate agreement which governs Respondent's relationship as an affiliate of Complainant. See Complainant’s Exhibit M, a copy of the alleged affiliate agreement between Complainant and Respondent; see also Complainant’s Exhibit H, which purports to show a screenshot of the website reachable through Respondent’s <isstockphoto.com> domain name. As the Panel accepts that there is indeed an affiliate agreement in place between Complainant and Respondent, and that Respondent has used the disputed domain in contravention of that agreement, the Panel rules that Respondent’s use of the <isstockphoto.com> domain name corresponds with neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant alleges that Respondent is a recalcitrant, serial cybersquatter, and has engaged in an ongoing pattern of such behavior. Complainant asserts that Respondent has been a party to numerous adverse UDRP decisions in which Respondent was determined to have registered domain names in bad faith. See Gamestop, Inc. v. PPA Media Servs. / Ryan G Foo, FA 1515572 (Nat. Arb. Forum Oct. 15, 2013); see also Radisson Hotels Int’l, Inc. v. PPA Media Servs. / Ryan G Foo, FA 1528486 (Nat. Arb. Forum Dec. 19, 2013); see also Yahoo! Inc. v. PPA Media Servs. / Ryan G Foo, FA 1526653 (Nat. Arb. Forum Dec. 4, 2013). Previous panels have reasoned that a pattern of bad faith registration can be extrapolated forward to apply to the case at hand, suggesting that the domain currently at issue was registered in bad faith as well. See, e.g., 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). As the Panel accepts this line of reasoning, the Panel considers Respondent’s history of adverse UDRP proceedings as establishing a pattern of bad faith. Given this pattern, the Panel infers that Respondent registered the <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <isstockphoto.com>, <istickphoto.com>, and <istockpohoto.com> domain names in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant next charges that Respondent registered and uses the <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <istickphoto.com>, and <istockpohoto.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by advertising pay-per-click links on the resolving websites that promote products that compete with Complainant. See Complainant’s Exhibit H. Complainant avers that these links divert potential customers away from Complainant to competing third-party websites, which disrupts Complainant’s business in bad faith. UDRP precedent supports the assertion that use of a contested domain name to redirect Internet users seeking information about a complainant’s business to competing websites suggests bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). As the Panel agrees that the competing links featured on Respondent’s websites were likely intended to disrupt Complainant’s business under the GETTY IMAGES and ISTOCKPHOTO marks, the Panel holds that Respondent exhibits bad faith pursuant to Policy ¶ 4(b)(iii) with respect to its registration and use of the <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <istickphoto.com>, and <istockpohoto.com> domain names.
Complainant also urges that Respondent has registered and used <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <istickphoto.com>, and <istockpohoto.com> in bad faith pursuant to Policy ¶ 4(b)(iv) by using the domains to attract and mislead consumers for Respondent’s own profit. According to Complainant, Respondent seeks to take advantage of Complainant's registered trademarks to achieve a wrongful competitive advantage and commercial gain by using websites resolving from these domains to provide links to services and products that compete with those offered by Complainant. The Panel reasons that Respondent intentionally choose domain names similar to Complainant’s mark in order to create confusion with Complainant in the minds of consumers in the hope that this would increase Internet traffic to Respondent’s websites. As the Panel further reasons that Respondent generates a pecuniary gain from the operation of its websites, and that Respondent sought to compound this gain through registration and use of these confusingly similar domain names, the Panel opines that Respondent registered and uses the <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <istickphoto.com>, and <istockpohoto.com> domain names in bad faith within the meaning of 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.’”).
Complainant contends that Respondent’s registration and use of the <isstockphoto.com> domain name while a member of Complainant's affiliate program constitutes additional evidence of bad faith with respect to that domain name. The Panel recalls Complainant’s earlier accusation that Respondent is using <isstockphoto.com> to redirect Internet users to Complainant's own website through Complainant's affiliate program, in direct contravention of the affiliate agreement in place in between the Parties. See Complainant’s Exhibit M, a copy of the alleged affiliate agreement between Complainant and Respondent; see also Complainant’s Exhibit H, which purports to show a screenshot of the website reachable through Respondent’s <isstockphoto.com> domain name. As the Panel accepts that Respondent improperly registered the confusingly similar <isstockphoto.com> domain name for the purpose of pointing the domain to Complainant’s own website in order to collect affiliate fees from Complainant, the Panel finds that Respondent has registered and used this domain name in bad faith according to Policy ¶ 4(a)(iii). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program).
According to Complainant, Respondent’s bad faith is further evidenced by the likelihood that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the at-issue marks. Complainant points to the fact that Respondent was a member of Complainant’s affiliate program as proof that Respondent must have known of Complainant and its trademarks before registering the domain names. The Panel also notes that each disputed domain name appears to incorporate a common misspelling of Complainant’s GETTY IMAGES or ISTOCKPHOTO mark. In light of this evidence, coupled with the degree of fame that Complainant and its marks had achieved by the time Respondent registered each of the <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <isstockphoto.com>, <istickphoto.com>, and <istockpohoto.com> domain names, the Panel concludes that Respondent registered the domains with actual knowledge of Complainant and its rights in the GETTY IMAGES and ISTOCKPHOTO marks. See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that “[i]n light of the notoriety of Complainant’s famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time [Respondent] registered the disputed domain name.”). The panel in Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) articulated that a respondent registers a domain name in bad faith under Policy ¶ 4(a)(iii) where the respondent has "actual knowledge of [c]omplainant's mark when registering the disputed domain name." As the Panel agrees that actual knowledge is sufficient to support a finding of bad faith, the Panel finds that Respondent registered the <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <isstockphoto.com>, <istickphoto.com>, and <istockpohoto.com> domain names in bad faith given Respondent’s actual knowledge of Complainant and its marks.
Finally, Complainant claims that Respondent has engaged in typosquatting through its registration of confusingly similar domain names, and that behavior evidence of bad faith in and of itself. In Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), the panel explained typosquatting as an “inherently parasitic” practice involving the registration of a domain name incorporating “the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on internauts who make common typing errors.” The Panel notes that the second-level portion of each of the <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <isstockphoto.com>, <istickphoto.com>, and <istockpohoto.com> domain names appears to represent a misspelling of the terms comprising Complainant’s GETTY IMAGES or ISTOCKPHOTO mark. As the Panel determines that Respondent’s registration of these names constitutes typosquatting of Complainant’s marks, and as the Panel agrees that typosquatting alone can compel a finding of bad faith, the Panel holds that Respondent has registered the disputed domain names in bad faith on the basis of typosquatting. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to 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 <gettiyimages.com>, <gettyinages.com>, <guettyimages.com>, <isstockphoto.com>, <istickphoto.com>, and <istockpohoto.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 24, 2014
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