Getty Images (US), Inc. and its subsidiary, Istockphoto LP v. Niche Domain Proxy Manager / Domains By Proxy - NA Proxy Account
Claim Number: FA1407001570062
Complainant is Getty Images (US), Inc. and its subsidiary, Istockphoto LP (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Niche Domain Proxy Manager / Domains By Proxy - NA Proxy Account (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <istockphoo.com>, registered with DomainSite, Inc.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2014; the National Arbitration Forum received payment on July 16, 2014.
On July 16, 2014, DomainSite, Inc. confirmed by e-mail to the National Arbitration Forum that the <istockphoo.com> domain name is registered with DomainSite, Inc. and that Respondent is the current registrant of the name. DomainSite, Inc. has verified that Respondent is bound by the DomainSite, Inc. 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 July 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@istockphoo.com. Also on July 17, 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 August 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant has rights in the ISTOCKPHOTO mark under Policy ¶ 4(a)(i).
a. 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.
b. Complainant owns registrations 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) as well as with various countries around the world.
c. Respondent’s <istockphoo.com> domain name is confusingly similar to Complainant’s ISTOCKPHOTO mark, simply removing the second letter “t” from Complainant’s mark.
2. Respondent has no rights or legitimate interests in the <istockphoo.com> domain name.
a. Respondent is not commonly known by the disputed domain name as evidenced by the WHOIS record. Respondent registered the disputed domain name on May 19, 2006. Complainant further asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
b. Respondent uses the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives a financial profit from the pay-per-click links displayed on the resolving website.
3. Respondent registered and is using the <istockphoo.com> domain name in bad faith.
a. Respondent’s resolving website advertises and promotes products that compete with Complainant. Respondent’s use of the disputed domain name diverts potential customers away from Complainant to third-party websites, thereby disrupting Complainant’s business.
b. Respondent uses the disputed domain name to take advantage of Complainant’s well-known mark to achieve a wrongful competitive advantage and commercial gain through the presence of click through links.
c. Respondent’s registration and use of the <istockphoo.com> domain name indicates typosquatting behavior.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that the WHOIS information for Respondent’s <istockphoo.com> domain name indicates that “Niche Domain Proxy Manager” is the registrant of the domain name.
The Panel further notes that the domain name was registered May 19, 2006.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. 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.” There are two Complainants in this matter: Istockphoto LP and Getty Images. Complainant asserts that Istockphoto LP is a subsidiary of Getty Images, and together they specialize in the marketing of online photographic services. The Panel notes that there have been prior UDRP decisions wherein previous panels deemed these two complainants to be one. See, e.g., Getty Images (US), Inc. and its subsidiary, iStockPhoto LP v. RespectedResponse.org, FA 1570144 (Nat. Arb. Forum April 25, 2014).
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.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and will treat them as a single entity in this proceeding.
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.”).
Complainant asserts that it 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 owns registrations for the ISTOCKPHOTO mark with the USPTO (Reg. No. 3,440,599 registered June 3, 2008, filed April 18, 2005) as well as with various countries around the world. Complainant has rights in the ISTOCKPHOTO mark under Policy ¶ 4(a)(i). 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). The Panel also determines that the USPTO trademark is sufficient to establish rights under Policy ¶ 4(a)(i) even though Respondent is located in Chile 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). The Panel further agrees that the rights date back to the 2005 filing date, not merely the 2008 registration date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant argues that Respondent’s <istockphoo.com> domain name is confusingly similar to Complainant’s ISTOCKPHOTO mark because the domain name is a misspelled version of Complainant’s ISTOCKPHOTO mark. Complainant contends that Respondent simply removes the second letter “t” from Complainant’s mark. The Panel concludes that this minor misspelling does not differentiate the disputed domain name from the mark, and thus determines that the disputed <istockphoo.com> domain name is confusingly similar to the ISTOCKPHOTO mark under Policy ¶ 4(a)(i).
Complainant claims Respondent has no rights or legitimate interests in the <istockphoo.com> domain name under Policy ¶ 4(c)(ii). Complainant asserts that Respondent is not commonly known by the disputed domain name as evidenced by the WHOIS record. The Panel notes that the WHOIS information for Respondent’s <istockphoo.com> domain name indicates that “Niche Domain Proxy Manager” is the registrant of the domain name. Complainant further asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. 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).
Complainant contends that Respondent uses the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant alleges that Respondent presumably receives a financial profit from the pay-per-click links displayed on the resolving website. The Panel notes that Respondent’s disputed domain name resolves to a website displaying links including, “Free Stock Photos,” “Photo Library,” “Download Image,” “Asian Women Seeking Love,” and “20% Off: Getty Images.” Previous panels have found that resolving websites that promote links to the complainant and its competitors does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). The Panel therefore finds that Respondent is not using the <istockphoo.com> domain name to provide 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) since it is causing the disputed domain name to resolve to a webpage promoting Complainant’s own website, as well as websites belonging to competitors.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the <istockphoo.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant states that Respondent’s resolving website advertises and promotes products that compete with Complainant. Additionally, Complainant claims that Respondent’s use of the disputed domain name diverts potential customers away from Complainant to third-party websites, thereby disrupting Complainant’s business. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name. 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 therefore finds evidence of bad faith registration and use of the <istockphoo.com> domain name under Policy ¶ 4(b)(iii) because Complainant has provided the Panel with evidence showing Respondent provides links to Complainant’s competitors.
Complainant further asserts that Respondent uses the disputed domain name to take advantage of Complainant’s well-known mark in order to achieve a wrongful competitive advantage and commercial gain through the presence of click through links. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel wrote, “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 present case is comparable, and the Panel finds evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because the domain name’s resolving page provides links to Complainant’s competitors offering products users likely associate with Complainant, and Respondent likely generates click-through fees from the linked websites.
Complainant argues that Respondent’s registration and use of the <istockphoo.com> domain name indicates bad faith typosquatting behavior. The Panel notes that previous panels have traditionally found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark. 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).”). The Panel therefore concludes that Respondent’s registration and use of the confusingly similar <istockphoo.com> domain name is evidence of Respondent’s typosquatting behavior and bad faith registration and use of the domain name.
Thus, Complainant has also satisfied 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 <istockphoo.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: August 28, 2014
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