Getty Images (US), Inc. and its subsidiary, Istockphoto LP v. 21562719 Ont Ltd
Claim Number: FA1309001521952
Complainant is Getty Images (US), Inc. and its subsidiary, Istockphoto LP (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is 21562719 Ont Ltd (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwistockphoto.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 30, 2013; the National Arbitration Forum received payment September 30, 2013.
On September 30, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <wwwistockphoto.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. verified that Respondent is bound by the FABULOUS.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 October 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@wwwistockphoto.com. Also on October 1, 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 October 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
1. Complainant is a lead creator and distributor of still imagery, video and multimedia products.
2. Complainant provides a searchable online database of digital photographs, illustrations, audio, video, fonts, code snippets and other design elements, which allow for the sale of free giveaway and downloads of digital material.
3. Complainant is the world’s largest stock photo company operating some of the most internationally famous and popular stock photography websites.
4. Complainant operates two websites under the domain names <gettyimages.com> and <istockphoto.com>.
5. Complainant has rights in the ISTOCKPHOTO mark through its registrations with the United States Patent and Trademark Office (“USPTO”) as well as with the Canadian Intellectual Property Office (“CIPO”).
a. USPTO (Reg. No. 3,440,599 filed April 18, 2005; registered June 3, 2008).
b. CIPO (Reg. No. 660,331 filed October 19, 2004; registered March 7, 2006).
6. Complainant’s first use of the ISTOCKPHOTO mark occurred April 7, 2000.
7. Complainant has common law rights in the ISTOCKPHOTO mark.
8. Respondent created the disputed <wwwistockphoto.com> domain name July 26, 2004.
9. Respondent’s <wwwistockphoto.com> domain name is confusingly similar to Complainant’s ISTOCKPHOTO mark.
a. Respondent omits the punctuation after the “www” in the disputed domain name.
b. Respondent’s disputed domain name features Complainant’s ISTOCKPHOTO mark in its entirety.
c. Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s registered mark.
10. Respondent has no rights to or legitimate interests in the <wwwistockphoto.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
b. Respondent is not sponsored by or affiliated with Complainant.
c. Respondent has not been given permission by Complainant to use its mark.
d. Respondent uses the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which compete with Complainant’s business.
e. Respondent receives pay-per-click fees from the links displayed on Respondent’s resolving website.
11. Respondent registered and is using the <wwwistockphoto.com> domain name in bad faith.
a. Respondent is a recalcitrant, serial typosquatter.
b. The links present on respondent’s resolving website compete with Complainant, thereby disrupting Complainant’s business.
c. Respondent uses the disputed domain name to resolve to a website featuring click-through links from which it likely receives revenue.
d. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
e. Respondent had actual knowledge of Complainant’s rights in the ISTOCKPHOTO mark.
i. Respondent was a member of Complainant’s affiliate program.
1. The Panel notes that the WHOIS information for Respondent’s <wwwistockphoto.com> domain name lists “21562719 Ont Ltd’ as Registrant.
Preliminary Issue: Multiple Complainants
In the instant proceeding, two Complainants are shown. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two Complainants here: Getty Images and Istockphoto LP. Assert that Istockphoto LP is a subsidiary of Getty Images, that they work together to market the company’s multiple and varied online photographic services and that Complainant acquired Istockphoto February 9, 2006. Further, they assert revenue of $71.9 million in 2007. The Company founded as Istock International, Inc. in 2000 changed its name to Istockphoto LP in October of 2008.
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 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 also treated 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.”).
This Panel accepts the evidence in the Complaint and finds it sufficient to establish a nexus or link between the Complainants that meets the required test. Therefore, the Panel elects to treat Complainants as a single entity in this proceeding. The Panel needs no additional documentation from the parties before making its determination pursuant to ICANN Rule 12. Throughout the below Decision, Complainants will be collectively referred to as “Complainant.”
Complainant established legal and common law rights in the mark contained in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected marks.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant states that it founded its business in 1995 and is now one of the world’s leading creators and distributors of still imagery, video and multimedia products. Complainant states that it serves more than 100 countries. Complainant claims that it is the world’s largest stock photo company. Complainant contends that it has rights in the ISTOCKPHOTO mark through its registration with the USPTO and CIPO, as follows:
USPTO (Reg. No. 3,440,599 filed April 18, 2004; registered June 3, 2008).
CIPO (Reg. No. 660,331 filed October 19, 2004; registered March 7, 2006).
Evidence of a registration for a mark with a recognized trademark authority is sufficient to establish rights in a given mark under the policy. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO). The Panel finds that Complainant has rights in the ISTOCKPHOTO mark under Policy ¶ 4(a)(i).
Complainant alleges that it has common law rights in the United States in its ISTOCKPHOTO mark through continuous, widespread use of the mark since its first use in commerce on April 7, 2000. See Exhibit E. Complainant also provides Exhibit G, displaying Complainant’s media and press recognition. The Panel notes an article in Exhibit G entitled: “How istockhoto.com Sells $4,000,000 Photo Downloads Per Year at $1 Each.” The Panel notes that this article is dated April 26, 2004, which is prior to Respondent’s creation date for the <wwwistockphoto.com> domain name on July 26, 2004. Based on the evidence provided, the Panel finds that Complainant has common law rights in the ISTOCKPHOTO mark under Policy ¶ 4(a)(i) dating back to Complainant’s first use in 2000. See Bob Jones Univ. v. Kane, FA 324692 (Nat. Arb. Forum Oct. 21, 2004) (finding that the complainant’s listing of first use of the BOB JONES UNIVERSITY mark on its USPTO registration information establishes that the complainant had used the mark continuously and extensively since the time of first use, thereby establishing rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <wwwistockphoto.com> domain name is confusingly similar to Complainant’s ISTOCKPHOTO mark under Policy ¶ 4(a)(i). Complainant argues that Respondent omits the punctuation after the “www” in the <wwwistockphoto.com> domain name. Complainant also claims that Respondent features the entire ISTOCKPHOTO mark in the disputed domain name with the addition of the gTLD “.com.” Previous panels have routinely found that variations such as eliminating punctuation, and adding gTLDs, do not differentiate a disputed domain name from a given mark. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). The Panel finds that Respondent’s <wwwistockphoto.com> domain name is confusingly similar to Complainant’s ISTOCKPHOTO mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights to or legitimate interests in the <wwwistockphoto.com> domain name because it is not commonly known by it under Policy ¶ 4(c)(ii). Complainant claims that Respondent has no intellectual property rights in the <wwwistockphoto.com> domain name. Complainant further argues that it has not sponsored or given Respondent permission to use Complainant’s ISTOCKPHOTO mark. The Panel notes that the WHOIS information lists “21562719 Ont Ltd” as Registrant of the disputed domain name. A respondent is not commonly known by a domain name where no indication on the record suggests such, including WHOIS information that might suggest that respondent was commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel therefore finds that Respondent has no rights to or legitimate interests in the <wwwistockphoto.com> domain name because it is not commonly known by it under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent has no rights to or legitimate interests in the <wwwistockphoto.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant contends that Respondent uses the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant. Complainant also claims that Respondent receives pay-per-click revenue from the links present on Respondent’s website. The Panel notes that Exhibit H depicts the website resolving from the <wwwistockphoto.com> domain name. The Panel notes as well that this website features links such as “Digital Photo Printing,” “Looking For Digital Photo Printing,” “Online Stock Trading,” “Istock Photo,” “Stock Photos,” and “Stock Photography.” Using a confusingly similar domain name to resolve to a website featuring links that compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent has no rights or legitimate interests in the <wwwistockphoto.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant urges that Respondent has a pattern of bad faith use and registration under Policy ¶ 4(b)(ii). Complainant provides evidence of prior UDRP cases in which Respondent was ordered to transfer various disputed domain names. The Panel notes that Exhibit N provides cases involving Respondent’s past mandated transfers. See AOL Inc. v. 21562719 Ont Ltd, FA 1402476 (Nat. Arb. Forum September 8, 2011); see also Fandango, LLC v. 21562719 Ont Ltd, FA 1464081 (Nat. Arb. Forum November 2, 2012); see also Universal Protein Supplements Corporation d/b/a Universal Nutrition v. 21562719 Ont Ltd, FA 1483550 (Nat. Arb. Forum March 12, 2013). Evidence of UDRP cases ordering a respondent to transfer a disputed domain name indicates bad faith use and registration under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). The Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith under a Policy ¶ 4(b)(ii) analysis.
Complainant argues that Respondent registered and is using the <wwwistockphoto.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant alleges that the links featured on the website resolving from Respondent’s <wwwistockphoto.com> domain name are pay-per-click links that compete with Complainant. Complainant argues that Respondent’s use of the disputed domain name diverts Complainant’s potential customers away from Complainant’s business and to third-party websites, thus disrupting Complainant’s business. Using a confusingly similar domain name to divert Internet users to competitors of a complainant indicates bad faith use and registration. 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).”). The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant asserts as well that Respondent registered and is using the <wwwistockphoto.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent features competing links on the website resolving from the confusingly similar disputed domain name in order to mislead Internet users and financially profit from their confusion. The Panel notes Exhibit H shows the website resolving from the disputed domain name. Complainant claims that Respondent displays Complainant’s ISTOCKPHOTO mark spelled correctly on the resolving website, which, Complainant claims, further indicates Respondent’s intent to confuse Internet users. When a respondent uses a confusingly similar domain name to provide links that compete with a complainant’s business and commercially benefit respondent does so in bad faith. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also urges that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith under Policy ¶ 4(a)(iii). The Panel notes Complainant’s arguments under Policy ¶ 4(a)(i) when making a bad faith argument based on typosquatting. The Panel recalls that the differences between the disputed domain name and Complainant’s ISTOCKPHOTO mark involved eliminating a period between the “www” and Complainant’s mark and adding the gTLD “.com.” The Panel finds that these variations are minute enough for a finding of bad faith typosquatting behavior. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith; see also 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).”). The Panel finds that Respondent’s typosquatting behavior indicates bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Complainant further alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the ISTOCKPHOTO mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. Complainant asserts that Respondent’s incorporation of a common variation of Complainant’s ISTOCKPHOTO mark in the disputed domain name is further evidence that Respondent was aware of Complainant and its mark. Complainant further argues that Respondent was aware of Complainant and the ISTOCKPHOTO mark because Respondent was a member of Complainant’s affiliate program. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <wwwistockphoto.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 12, 2013.
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