Complainant Shutterstock, Inc. of New York, New York, United States of America, represented internally.
Respondent is Rahele Mahdavi of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2014. On August 12, 2014, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On August 13, 2014, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on August 11, 2014.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2014. On September 5, 2014, the Center notified Respondent’s default.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on September 18, 2014. 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 is owner of several registrations worldwide for its SHUTTERSTOCK trademarks, including, for example, United States Trademark Registration No. 3,084,900 in International Class 35, registered on April 25, 2006. Complainant, on its websites, offers licenses of digital material to the public under Complainant’s SHUTTERSTOCK trademarks.
The disputed domain name was registered May 4, 2009 and routes to a website in the Persian language that offers for download various photographic images and media materials. Some of Respondent’s images appear to be the same as those offered on Complainant’s websites. Some of Respondent’s images also display the same watermark (a version of the SHUTTERSTOCK trademark) that appears on content samples displayed on Complainant’s websites. 5. Parties’ Contentions A. Complainant
Complainant avers that it uses the SHUTTERSTOCK mark to commercially offer various forms of graphic images and other digital content for licensed download. Complainant avers that Respondent is using Complainant’s trademarks commercially to offer images for download, using a website that employs Complainant’s design elements, techniques and tools without permission.
Summarizing its basic legal contentions, Complainant alleges that (1) the disputed domain name is identical or confusingly similar to Complainant’s trademarks, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.
On this basis, Complainant seeks transfer. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to Complainant’s SHUTTERSTOCK trademarks.
Panels commonly disregard domain name suffixes in determining whether a disputed domain name is identical or similar to a complainant’s marks. See, e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
Without the “.ir” country code Top-Level Domain (the “ccTLD”) suffix, the disputed domain name is identical to Complainant’s SHUTTERSTOCK trademark.
The requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
The Panel accepts Complainant’s undisputed allegation that Respondent has no authorization or license to use its trademark in the disputed domain name.
The website to which the disputed domain name routes displays links commercializing products similar to those of Complainant. The Panel finds therefore that Respondent has been using Complainant’s marks for its own commercial purposes and not for a noncommercial purpose.
Although Complainant does not address this point, it does not appear on the record that Respondent is commonly known by the disputed domain name. The Panel agrees with Complainant that by offering commercial products on the website, Respondent is seeking to attract Internet users through Complainant’s marks for Respondent’s own commercial purposes. The Panel accepts Complainant’s credible allegation that Respondent is simply posting material copied from Complainant’s website without permission; the Panel finds that such use of the disputed domain name cannot constitute a bona fide offering.
The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the domain name. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784. The Panel also finds that the Complaint makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of “rights or legitimate interests” in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered or Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration or bad faith use, is also established, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and bad faith use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623.
Examining the circumstances in this case, the Panel finds that Respondent was undoubtedly aware of Complainant’s SHUTTERSTOCK mark, which Respondent deliberately added to the .ir ccTLD to create confusion and attract Internet users to its website for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith.
Respondent’s website shows that the disputed domain name is used to promote and commercialize products similar to those sold by Complainant. The Panel concludes that this activity evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (citing Google, Inc. v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. LaPorte Holdings, Inc.,WIPO Case No. D2005-0070, (citing Royal Bank of Canada v. Henry Chan,WIPO Case No. D2003-0031).
Were this not by itself sufficient, the Panel notes that Respondent also offers for download a number of images bearing Complainant’s trademark as a watermark. Engaging in such conduct without authorization of Complainant under the circumstances clearly shows bad faith.
The Panel further finds that Respondent’s failure to reply to the Complaint is cumulative evidence of use in bad faith.
The Panel concludes that the record establishes both the elements of bad faith registration and bad faith use by Respondent. Either of these elements alone is sufficient under the irDRP.
Consequently, the Panel concludes that the requirements of the third element of Policy paragraph 4(a) are fulfilled. 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 disputed domain name be transferred to Complainant.
Nasser A. Khasawneh
Sole Panelist
Date: October 17, 2014
Full & Egal Universal Law Academy