Complainant is Shutterstock, Inc. of New York, New York, United States of America ("United States"), internally represented.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama. Panama / 0ashraf ayad, Web Pioneer of Cairo, Egypt, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2017. On July 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 26, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant July 27, 2017 providing the registrant and contact information disclosed by the Registrar, and invited Complainant to submit an amendment to the Complaint. Respondent sent an email communication to the Center on July 27, 2017. Complainant filed an amended Complaint on August 1, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2017. The Center notified the Parties the commencement of the panel appointment process on August 29, 2017.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on September 5, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant isa corporation registered in the State of Delaware, with its principal place of business in New York, United States. Complainant provides a platform for independent artists to license their works worldwide and receive royalty payments.
Complainant is the owner of the following registered trade marks (collectively "Complainant's Marks"):
Trademark
Country and/or Jurisdiction
Registration Number
Registration Date
United States
4,286,055
February 5, 2013
United States
4,286,040
February 5, 2013
SHUTTERSTOCK
United States
3,084,900
April 25, 2006
SHUTTERSTOCK
International Trade mark designating, inter alia: Australia, Colombia, Belarus, Croatia, Eygpt, Iceland, Kazakhstan, New Zealand, Norway, Mexico, Poland, Republic of Korea, Singapore, Switzerland, Turkey, Ukraine
934079
June 22, 2007
SHUTTERSTOCK
International Trade mark designating, inter alia: China, Russian Federation
1172147
March 21, 2013
SHUTTERSTOCK
International Trade mark designating Philippines
1190084
November 22, 2013
International Trade mark designating, inter alia: Australia, Switzerland, Colombia, Japan, Republic of Korea, Kazakhstan, New Zealand, Philippines, Russian Federation, Ukraine
1243504
November 13, 2014
China
14580137
July 7, 2015
Complainant also owns and operates domain names worldwide incorporating Complainant's Marks, including among others: , and ("Complainant's Domain Names").
The Domain Name was registered by Respondent on June 11, 2017. In accordance with the evidence with the Complaint, the Domain Name resolved to a website in which it was shown information about how to circumvent Complainant's copyright protection mechanisms and distribute Complainant's content at no cost. 5. Parties' Contentions A. Complainant
Complainant states that it provides a platform for independent photographers, videographers, designers and other artists to license their works worldwide and receive royalty payments, pursuant to the Shutterstock Contributor Terms of Service.
Complainant further states that the worldwide services it has offered under Complainant's Marks since February 2004 include licensing of, inter alia, high quality stock imagery, videos and music (collectively, "Complainant's Content").
Complainant's Marks and Complainant's Domain Names are said to be extremely valuable to Complainant. Complainant contends that Complainant's Marks and Complainant's Domain Names have become well recognized by consumers as designating Complainant as the source of the goods so marked as they are world famous and known to artists, photographers, designers, producers, editors and other creators and consumers of images and film clips throughout the world.
Complainant asserts that the Domain Name is identical and confusingly similar to Complainant's Marks in that the word "get" has been added to Complainant's Mark. The word "get" has no distinguishing attributes that are identified with Respondent, and does nothing to obviate the confusing similarity between the Domain Name and Complainant's Mark.
Complainant submits that there is nothing to suggest that Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use, and the website currently does not have a commercial function, as it retrieves stock images from Complainant at no cost to its users. Complainant asserts that this is not a legitimatenoncommercial use, as its primary function is to facilitate copyright infringement by encouraging users to circumvent Complainant's copyright protections. Respondent is using the Domain Name's confusing similarity to Complainant's Marks in an attempt to divert web traffic to Respondent's own website, which constitutes prima facie evidence of a lack of rights or legitimate interests in the Domain Name.
Complainant submits that it is unlikely that Respondent was unaware of Complainant's Marks before registering the Domain Name, and as the word "shutterstock" is an invented or coined word which has become synonymous with Complainant's services, it is unlikely to be chosen by Respondent innocently as having a connection with the Respondent or a business with which Respondent has a legitimate interest.
Complainant alleges that Respondent's website is built around accessing Complainant's Content for free, thereby creating direct competition with Complainant and depriving Complainant and its Contributors of licensing fees by circumventing Complainant's copyright protection mechanisms and distributing Complainant's Content illicitly. The website also uses Complainant's logo in the form of a watermark to explain how the service works and display the available images.
Complainant notes that throughout the website, Respondent posts contact information, and the end of the tutorial video states that anyone looking for a web developer should contact Respondent. This web site is using Complainant's name and brand to attract would-be customers of Complainant in order to promote Respondent's own service. Complainant's name and logo appears on the site which suggests an affiliation or endorsement, which Respondent uses to offer credibility to the developing service. Complainant states that Respondent was not a licensee or otherwise authorized by Complainant to use Complainant's Marks and Respondent has no rights or legitimate interests in the Domain Name.
Complainant goes on to assert that Respondent's promotion of web design services is distinctly competitive to Complainant because the service is aimed at the same customer base as that of the Complainant. Web designers are one of Complainant's core customer markets, and frequently use Complainant's service in order to build their sites. By promoting Respondent's own services, Respondent is not only wrongfully using Complainant's content as a form of advertising, but using this web site in an attempt to siphon a key customer for Complainant's business — web designers and those who enlist their services.
Complainant also submits that Respondent has concealed its true identity, as the information on WhoIs is privacy protected, and the only information given is a P.O. Box in Panama whilst at the same time the website provides an Egyptian phone number as a contact.
Complainant adds that Respondent has ignored Complainant's cease and desist letter. B. Respondent
No formal response was received from Respondent. However, Respondent sent an email communication to the Center on July 27, 2017 with the following content:
"what u want to say is that domain "" u want to transfer it to shutterstock company or to shut it down?" 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has established that Complainant is the owner of the registered trade marks listed in the schedule above and referred to as "Complainant's Marks". Complainant provides a platform for photographers and other artists to license their works worldwide. Complainant has provided its services since 2004 under Complainant's Marks.
Complainant argues that the Domain Name is identical and confusingly similar to Complainant's Marks. That is, in so far as the word "get" does nothing to limit or obviate the confusing similarity between the Domain Name and Complainant's Mark.
There is clear merit in this argument and Respondent does not deny it. On this basis, it is found that:
a) Complainant has rights in respect of Complainant's Mark.
b) The Domain Name is not identical to, but for the reasons set out above, confusingly similar to Complainant's Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
As noted above, Complainant contends that Respondent is using the Domain Name to attract Internet users to its website. Complainant states that Respondent's website allows users to retrieve stock images from Complainant at no cost to its users and that the primary function of this is to facilitate copyright infringement, by encouraging users to circumvent Complainant's copyright protections.
By encouraging Internet users to access Complainant's content for free Respondent is, either directly or indirectly, competing with Complainant and depriving Complainant of licensing fees on its content. The Panel infers that in doing so Respondent is benefiting in some way through the revenues generated by the click-through traffic it generates.
This permits the Panel to infer that Respondent lacks rights or legitimate interests in the Domain Name. It is apparent that by virtue of Complainant's Marks and business interests in relation to its various content that an unrelated entity using a very similar domain name is likely to lead to members of the public being confused and deceived.
The Panel is of the view that the Domain Name has been employed as a means of diverting Internet users. In those circumstances, it is difficult to see how Respondent's conduct could be characterized as legitimate.
On this basis, it is found that Respondent has no rights or legitimate interests in the Domain Names.
The Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Internet users who may wish to communicate with or use Complainant's content and that these Internet users are likely to be attracted to Respondent's website or other online presence and be misled as to their origins, sponsorship or association.
The Panel also infers that Respondent must have been aware of Complainant and Complainant's Mark's at the time it registered the Domain Name, given Complainant's long-established business and goodwill and the fact that the parties appear to be operating in the same broad industry.
The Panel thus finds that the third limb of the Policy has been met. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Clive L. Elliott QC.
Sole Panelist
Date: September 22, 2017
Full & Egal Universal Law Academy