Getty Images (US), Inc. v. Above.com Domain Privacy
Claim Number: FA1203001432745
Complainant is Getty Images (US), Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <istockpghoto.com>, <istpockphoto.com>, <iastockphoto.com>, <istkockphoto.com>, <istoxckphoto.com>, <istockphotolcom.com>, <istockphorto.com>, <iustockphoto.com>, <istockphoeo.com>, <istoclkphoto.com>, <wwwwistockphoto.com>, <istockphototo.com>, <istockphyoto.com>, <i9stockphoto.com>, <istockphgoto.com>, <istocvkphoto.com>, <isdtockphoto.com>, <istockphotow.com>, <isetockphoto.com>, <istockphohto.com>, <istockphoyto.com>, <uistockphoto.com>, <isatockphoto.com>, <istockjphoto.com>, <istockphoito.com>, <istockphotyo.com>, <ystockphoto.com>, <iftockphoto.com>, <iostockphoto.com>, <iqstockphoto.com>, <ishtockphoto.com>, <isrtockphoto.com>, <istocjkphoto.com>, <istockphioto.com>, <istockphjoto.com>, <istockphotoi.com>, <istockphotpo.com>, <istockphotro.com>, <istockphozo.com>, <istockpkoto.com>, <istockpthoto.com>, <istocokphoto.com>, <istocxkphoto.com>, <isyockphoto.com>, <pstockphoto.com>, <wistockphoto.com>, <wistockphotos.com>, and <islockphoto.com>, registered with Above.Com Pty Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2012; the National Arbitration Forum received payment on March 2, 2012.
On March 6, 2012, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <istockpghoto.com>, <istpockphoto.com>, <iastockphoto.com>, <istkockphoto.com>, <istoxckphoto.com>, <istockphotolcom.com>, <istockphorto.com>, <iustockphoto.com>, <istockphoeo.com>, <istoclkphoto.com>, <wwwwistockphoto.com>, <istockphototo.com>, <istockphyoto.com>, <i9stockphoto.com>, <istockphgoto.com>, <istocvkphoto.com>, <isdtockphoto.com>, <istockphotow.com>, <isetockphoto.com>, <istockphohto.com>, <istockphoyto.com>, <uistockphoto.com>, <isatockphoto.com>, <istockjphoto.com>, <istockphoito.com>, <istockphotyo.com>, <ystockphoto.com>, <iftockphoto.com>, <iostockphoto.com>, <iqstockphoto.com>, <ishtockphoto.com>, <isrtockphoto.com>, <istocjkphoto.com>, <istockphioto.com>, <istockphjoto.com>, <istockphotoi.com>, <istockphotpo.com>, <istockphotro.com>, <istockphozo.com>, <istockpkoto.com>, <istockpthoto.com>, <istocokphoto.com>, <istocxkphoto.com>, <isyockphoto.com>, <pstockphoto.com>, <wistockphoto.com>, <wistockphotos.com>, and <islockphoto.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 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@istockpghoto.com, postmaster@istpockphoto.com, postmaster@iastockphoto.com, postmaster@istkockphoto.com, postmaster@istoxckphoto.com, postmaster@istockphotolcom.com, postmaster@istockphorto.com, postmaster@iustockphoto.com, postmaster@istockphoeo.com, postmaster@istoclkphoto.com, postmaster@wwwwistockphoto.com, postmaster@istockphototo.com, postmaster@istockphyoto.com, postmaster@i9stockphoto.com, postmaster@istockphgoto.com, postmaster@istocvkphoto.com, postmaster@isdtockphoto.com, postmaster@istockphotow.com, postmaster@isetockphoto.com, postmaster@istockphohto.com, postmaster@istockphoyto.com, postmaster@uistockphoto.com, postmaster@isatockphoto.com, postmaster@istockjphoto.com, postmaster@istockphoito.com, postmaster@istockphotyo.com, postmaster@ystockphoto.com, postmaster@iftockphoto.com, postmaster@iostockphoto.com, postmaster@iqstockphoto.com, postmaster@ishtockphoto.com, postmaster@isrtockphoto.com, postmaster@istocjkphoto.com, postmaster@istockphioto.com, postmaster@istockphjoto.com, postmaster@istockphotoi.com, postmaster@istockphotpo.com, postmaster@istockphotro.com, postmaster@istockphozo.com, postmaster@istockpkoto.com, postmaster@istockpthoto.com, postmaster@istocokphoto.com, postmaster@istocxkphoto.com, postmaster@isyockphoto.com, postmaster@pstockphoto.com, postmaster@wistockphoto.com, postmaster@wistockphotos.com, and postmaster@islockphoto.com. Also on April 4, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 April 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions.
1. iStockPhoto is an online, royalty free, international microstock photography provider founded in May 2000.
2. Complainant acquired iStockPhoto on February 9, 2006.
3. Complainant owns a trademark registration for the ISTOCKPHOTO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,440,599 filed April 18, 2005, registered June 3, 2008).
4. Complainant has operated a website at the <istockphoto.com> domain name since 2000.
5. The disputed domain names are confusingly similar to Complainant’s mark because they are simply misspellings and typographical errors of Complainant’s mark.
6. The disputed domain names are an example of typosquatting.
7. Respondent has not been commonly known by the disputed domain name.
8. Respondent uses some or all of the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business, presumably in exchange for pay-per-click fees.
9. Respondent uses some or all of the disputed domain names to redirect Internet users to a website operated by Complainant’s competitors, presumably receiving consideration from those companies for the diverted traffic.
10. Respondent registered the disputed domain names no earlier than October 14, 2007, which is significantly after Complainant’s first use of the mark in commerce on April 4, 2000 and after the registration of its own domain name on January 6, 2000.
11. Respondent’s use of the disputed domain names for a click-through website to take advantage of Complainant’s mark for commercial gain shows bad faith registration and use.
12. Respondent’s typosquatting of Complainant’s mark indicates bad faith registration.
13. Respondent uses some or all of the disputed domain names to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, which is a violation of the affiliation agreement and evidence of bad faith.
14. Respondent was aware of Complainant and its rights in the ISTOCKPHOTO mark when Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant operates a business named iStockPhoto which is an online, royalty free, international microstock photography provider founded in May 2000. Complainant acquired iStockPhoto on February 9, 2006.
2. Complainant owns a trademark registration for the ISTOCKPHOTO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,440,599 filed April 18, 2005, registered June 3, 2008).
3. The iStockPhoto business has operated the website to which the <istockphoto.com> domain name resolves and has done so since 2000.
4. Respondent registered the disputed domain names no earlier than October 14, 2007 and uses the disputed domain names variously to redirect Internet users to websites featuring generic links to third-party websites, to redirect Internet users to websites operated by Complainant’s competitors and to redirect Internet users to Complainant’s own website through Complainant’s affiliate program.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant alleges that it has rights in the ISTOCKPHOTO mark and provides evidence of its trademark registration for the mark with the USPTO (Reg. No. 3,440,599 filed April 18, 2005, registered June 3, 2008). The Panel agrees with Complainant’s argument that, by virtue of its federal trademark registration, Complainant is the owner of the ISTOCKPHOTO mark pursuant to Policy ¶ 4(a) (i). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority). The Panel also determines that the USPTO trademark is sufficient to establish rights under Policy ¶ 4(a) (i) even though Respondent is located in Australia and not the U.S. 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 then argues that the disputed domain names are confusingly similar to Complainant’s ISTOCKPHOTO mark because the domain names are misspelled versions or typographical errors of Complainant’s mark. The Panel agrees and finds that the disputed domain names all consist of Complainant’s mark with one or more of the following changes: the addition of one or more letters, the deletion of a letter, the transposition of two letters, the addition of the term “com” before the generic top-level domain (“gTLD”), the addition of the “www” prefix without the standard separating period, and/or the attachment of the gTLD “.com.” The Panel concludes that these minor spelling changes and typographical errors do not differentiate the disputed domain names from the mark and thus determines that the disputed domain names are confusingly similar to the ISTOCKPHOTO mark under Policy ¶ 4(a) (i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also 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”); see also 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”); Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also AOL Inc. v. Shrikhande, FA 1311484 (Nat. Arb. Forum April 28, 2010) (finding the <icq-com.com> domain name confusingly similar to the ICQ mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Accordingly, Complainant has made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case and that it arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ISTOCKPHOTO mark and to use it in its domain names, making only minor spelling changes, thus retaining the confusing similarity that arises between the domain names and the trademark.
(b)Respondent has then decided to use the domain names variously to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business, presumably in exchange for pay-per-click fees, to redirect Internet users to a website operated by Complainant’s competitors, presumably receiving consideration from those companies for the diverted traffic and to redirect Internet users to Complainant’s own website through Complainant’s affiliate program.
(c) Respondent has engaged in these activities without the consent or approval of Complainant.
(d) Complainant also argues that Respondent has not been commonly known by the disputed domain names. Complainant argues that Respondent is not sponsored by or legitimately affiliated with Complainant and has not received permission to use the mark in any way. The Panel notes that the WHOIS information identifies the registrant of the disputed domain names as “Above.com Domain Privacy.” Based on Complainant’s allegations and the WHOIS information, the Panel holds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c) (ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
(e) Complainant also contends that some of the disputed domain names redirect Internet users to websites featuring generic links to third-party websites, including some which directly compete with Complainant’s business. According to the screenshots submitted by Complainant, the Panel finds that the following domain names resolve to pay-per-click link websites: <istockpghoto.com>, <istpockphoto.com>, <istkockphoto.com>, <istockphotolcom.com>, <istockphorto.com>, <iustockphoto.com>, <istockphoeo.com>, <istoclkphoto.com>, <wwwwistockphoto.com>, <istockphyoto.com>, <istockphgoto.com>, <isetockphoto.com>, <istockphohto.com>, <istockphoyto.com>, <isatockphoto.com>, <istockjphoto.com>, <istockphoito.com>, <istockphotyo.com>, <ystockphoto.com>, <iqstockphoto.com>, <ishtockphoto.com>, <isrtockphoto.com>, <istockphioto.com>, <istockphjoto.com>, <istockphotro.com>, <istockpkoto.com>, <istockpthoto.com>, <istocokphoto.com>, <istocxkphoto.com>, <pstockphoto.com>, and <wistockphotos.com>. Complainant argues that Respondent presumably receives pay-per-click fees from traffic to these links. Complainant also argues that Respondent uses some of the disputed domain names to redirect Internet users to websites operated by Complainant’s competitors, for which Respondent presumably receives financial consideration. According to the screenshots submitted by Complainant, the Panel finds that the following domain names resolve to competing websites: <istoxckphoto.com>, <isdtockphoto.com>, and <istockphotow.com>. Complainant alleges that neither of these uses constitutes a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c) (i) or Policy ¶ 4(c) (iii), and the Panel agrees. See Disney Enters., Inc. v. Kimble, FA 918556 (Nat. Arab. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(I) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arab. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
(e) With respect to the remainder of the domain names, the Panel notes that the submitted screenshots reveal that the <iastockphoto.com>, <i9stockphoto.com>, <istocvkphoto.com>, and <uistockphoto.com> domain names resolve to inactive websites. The Panel finds that Respondent’s failure to use these disputed domain names actively indicates that Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
(f) The Panel notes that Complainant’s submitted screenshots also show that the <istockphototo.com>, <iftockphoto.com>, <iostockphoto.com>, <istocjkphoto.com>, <istockphotoi.com>, <istockphotpo.com>, <istockphozo.com>, <islockphoto.com>, <isyockphoto.com>, <wistockphoto.com>, and <wistockphotos.com> domain names resolve to Complainant’s own website. Complainant argues under Policy ¶ 4(a) (iii) that Respondent’s use of these domain names to resolve to Complainant’s own website through membership of Complainant’s affiliate program is in violation of the affiliate agreement. The Panel finds that Respondent’s use of these disputed domain names to resolve to Complainant’s own website in violation of the affiliate agreement does not bring it within the provisions of Policy ¶ 4(c) (i) or Policy ¶ 4(c) (iii). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arab. Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program); see also Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for the complainant’s affiliate program upon registering the domain name, which was a misspelling of the complainant’s mark, the respondent intended to use the domain name to generate profit at the complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Accordingly, Complainant has made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant relies on Policy ¶ 4(b) (iii) with respect to some of the disputed domain names. Complainant argues that the <istoxckphoto.com>, <isdtockphoto.com>, and <istockphotow.com> domain names resolve to websites operated by Complainant’s competitor. The Panel finds that directing Internet users to these websites under Complainant’s mark reveals bad faith registration and use under Policy ¶ 4(b) (iii) as it shows a primary intention to disrupt the business of a competitor; that finding is made as Respondent by its conduct has sought to become a competitor of Complainant in attracting internet traffic and this conduct clearly disrupts the business of a competitor, namely Complainant. Alternatively, the diversion of internet usres, based as it is on an improper registration and use of domain names that incorporate Complainant’s trademark, is clearly designed to damage Complainant and is thus registration and use of the three specified domain names in bad faith within the generally accepted meaning of that expression. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Secondly, Complainant relies on Policy ¶ 4(b)(iv) and argues that Respondent’s bad faith is shown by Respondent’s use of the <istockpghoto.com>, <istpockphoto.com>, <istkockphoto.com>, <istockphotolcom.com>, <istockphorto.com>, <iustockphoto.com>, <istockphoeo.com>, <istoclkphoto.com>, <wwwwistockphoto.com>, <istockphyoto.com>, <istockphgoto.com>, <isetockphoto.com>, <istockphohto.com>, <istockphoyto.com>, <isatockphoto.com>, <istockjphoto.com>, <istockphoito.com>, <istockphotyo.com>, <ystockphoto.com>, <iqstockphoto.com>, <ishtockphoto.com>, <isrtockphoto.com>, <istockphioto.com>, <istockphjoto.com>, <istockphotro.com>, <istockpkoto.com>, <istockpthoto.com>, <istocokphoto.com>, <istocxkphoto.com>, <pstockphoto.com>, and <wistockphotos.com> domain names to generate revenue as a “click through” website. For instance, the Panel has looked at the website to which the first of those domain names resolves, namely <istockpghoto.com> and finds that as well as links to real estate and property sites, the website itself carries a link to “stock photo sites”. Following that link leads to 23 websites, 22 of which are clearly stock sites that are in competition with Complainant and only one of which is www.istockphoto.com, Complainant’s site. Respondent is thus swamping the link to Complainant’s site with a mass of competing sites which must be done only with the intention to damage Complainant and divert potential business from its site. Complainant alleges that Respondent is attempting by this means to take advantage of Complainant’s well-known mark to achieve a wrongful competitive advantage and commercial gain. As the Panel finds that Respondent’s actions at the disputed domain names are intended to attract consumers and create confusion regarding Complainant’s affiliation with Respondent for Respondent’s own commercial gain, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b) (iv).”).
Thirdly, Complainant also contends that Respondent has caused the <istockphototo.com>, <iftockphoto.com>, <iostockphoto.com>, <istocjkphoto.com>, <istockphotoi.com>, <istockphotpo.com>, <istockphozo.com>, <islockphoto.com>, <isyockphoto.com>, <wistockphoto.com>, and <wistockphotos.com> domain names to resolve to Complainant’s own website through Complainant’s affiliate program, which is in direct violation of Complainant’s affiliate agreement. Complainant asserts that registering these confusingly similar domain names and causing them to resolve to Complainant’s own website while being a member of Complainant’s affiliate program is evidence of bad faith registration and use. The Panel agrees with Complainant and finds bad faith under Policy ¶ 4(a) (iii). See Expedia, Inc. v. Webpagesa2z.com, FA 610151 (Nat. Arb. Forum Jan. 30, 2006) (finding that the use of website to garner click through fees in affiliate program is registration and use in bad faith); see also 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 to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program).
Complainant also submits screenshots which show that the <iastockphoto.com>, <i9stockphoto.com>, <istocvkphoto.com>, and <uistockphoto.com> domain names resolve to inactive websites. The Panel finds that Respondent’s failure to use these disputed domain names actively is evidence of bad faith registration and use according to Policy ¶ 4(a) (iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant also alleges that Respondent’s registration of many of the disputed domain names exemplifies typosquatting, which the Panel finds is evidence in itself of bad faith registration and use. The Panel notes that the following disputed domain names differ by one letter from Complainant’s mark: <istockpghoto.com>, <istpockphoto.com>, <iastockphoto.com>, <istkockphoto.com>, <istoxckphoto.com>, <istockphorto.com>, <iustockphoto.com>, <istockphoeo.com>, <istoclkphoto.com>, <istockphototo.com>, <istockphyoto.com>, <i9stockphoto.com>, <istockphgoto.com>, <istocvkphoto.com>, <isdtockphoto.com>, <istockphotow.com>, <isetockphoto.com>, <istockphohto.com>, <istockphoyto.com>, <uistockphoto.com>, <isatockphoto.com>, <istockjphoto.com>, <istockphoito.com>, <istockphotyo.com>, <ystockphoto.com>, <iftockphoto.com>, <iostockphoto.com>, <iqstockphoto.com>, <ishtockphoto.com>, <isrtockphoto.com>, <istocjkphoto.com>, <istockphioto.com>, <istockphjoto.com>, <istockphotoi.com>, <istockphotpo.com>, <istockphotro.com>, <istockphozo.com>, <istockpkoto.com>, <istockpthoto.com>, <istocokphoto.com>, <istocxkphoto.com>, <isyockphoto.com>, <pstockphoto.com>, <wistockphoto.com>, and <islockphoto.com>. As the Panel holds that Respondent’s registration of these disputed domain names qualifies as typosquatting, it further holds that Respondent registered and uses these disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting . . . is 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. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
Complainant also argues that Respondent, as a member of Complainant’s affiliate program, had knowledge of Complainant’s rights when it registered the disputed domain names. The Panel agrees with Complainant regarding Respondent’s awareness of the mark and the Panel concludes that Respondent registered the disputed domain names in bad faith according to Policy ¶ 4(a) (iii). See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a disputed domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”); see also Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) (“That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant’s mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).”).
Moreover, as has been noted above, Policy ¶ 4(b) is not an exclusive list of examples of bad faith registration and use of a contested domain name, so that circumstances falling outside the explicit parameters of that provision of the Policy can provide persuasive evidence for a finding of bad faith registration and use to prove the element set out in Policy ¶ 4(a) (iii). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”) (emphasis in original); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the domain name in issue was registered in and is being used in bad faith.”).
Applying that principle to the present case and having regard to the submissions of Complainant and the evidence submitted on its behalf, the Panel finds that with respect to each and every of the disputed domain names and in addition to the manner in which they respectively fall within the meaning of one or more of the provisions of Policy ¶ 4(b), Respondent has registered and used them in bad faith within the generally accepted meaning of that expression.
Accordingly, Complainant has made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <istockpghoto.com>, <istpockphoto.com>, <iastockphoto.com>, <istkockphoto.com>, <istoxckphoto.com>, <istockphotolcom.com>, <istockphorto.com>, <iustockphoto.com>, <istockphoeo.com>, <istoclkphoto.com>, <wwwwistockphoto.com>, <istockphototo.com>, <istockphyoto.com>, <i9stockphoto.com>, <istockphgoto.com>, <istocvkphoto.com>, <isdtockphoto.com>, <istockphotow.com>, <isetockphoto.com>, <istockphohto.com>, <istockphoyto.com>, <uistockphoto.com>, <isatockphoto.com>, <istockjphoto.com>, <istockphoito.com>, <istockphotyo.com>, <ystockphoto.com>, <iftockphoto.com>, <iostockphoto.com>, <iqstockphoto.com>, <ishtockphoto.com>, <isrtockphoto.com>, <istocjkphoto.com>, <istockphioto.com>, <istockphjoto.com>, <istockphotoi.com>, <istockphotpo.com>, <istockphotro.com>, <istockphozo.com>, <istockpkoto.com>, <istockpthoto.com>, <istocokphoto.com>, <istocxkphoto.com>, <isyockphoto.com>, <pstockphoto.com>, <wistockphoto.com>, <wistockphotos.com>, and <islockphoto.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 30, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page