The Complainant is Shutterstock, Inc. of New York, United States of America (“US”), internally represented.
The Respondent is MajidReza Jalaie of Parand, 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 12, 2016. On August 12, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On August 14, 2016, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on August 16, 2016.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “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 the Respondent of the Complaint, and the proceedings commenced on August 18, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2016. On September 9, 2016, the Center notified the Respondent’s default.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on September 15, 2016. 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
The Complainant is, according to the submitted evidence, the owner of a number of trademark registrations, including the following non-exhaustive list:
US trademark SHUTTERSTOCK (word) with registration number 3,084,900, registration date April 25, 2006 and in use since February 14, 2004;
US trademark SHUTTERSTOCK (device) with registration number 4,286,055 and registration date February 5, 2013;
US trademark SHUTTERSTOCK (device) with registration number 4,286,040 and registration date February 5, 2013;
International trademarks SHUTTERSTOCK (word) with registration numbers 934079, 1172147 and 1190084;
International trademarks SHUTTERSTOCK (device) with registration numbers 1243504 and 14580137.
The services for which the Complainant’s trademarks are used include licensing of, inter alia, high quality stock imagery, videos and music.
The disputed domain name was registered by the Respondent on July 12, 2016. 5. Parties’ Contentions A. Complainant
The Complainant has offered services under the SHUTTERSTOCK trademark since at least as early as February 14, 2004. The Complainant operates through domain names such as , and . The Complainant has promoted and advertised the SHUTTERSTOCK trademark for over ten years and today the trademark is well recognized by consumers and known to artists, photographers, designers, producers, editors and other creators and consumers of images and film clips throughout the world.
The disputed domain name incorporates the Complainant’s registered trademark with the addition of the generic and descriptive word “shop”. The inclusion of the generic word “shop” in the disputed domain name, which incorporates the Complainant’s registered trademark, does not eliminate the identity or at least the confusing similarity between the Complainant’s trademark and the disputed domain name. The addition of the word “shop” is likely to result in confusion among customers who expect to arrive the trademark holder’s website.
The Respondent does not use, nor intend to use, the disputed domain name in connection with a bona fide offering of goods or services. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name resolves to a Farsi website which features a number of unauthorized displays of the Complainant’s trademarks, as well as unauthorized offers to sell reproductions of the Complainant’s copyrighted content created by numerous artists. Specifically, the website invites potential customers to place orders for copies of the Complainants protected material on DVDs and hard drives. The Respondent is not a licensee of the Complainant and not authorized to use the Complainants trademark or copyrighted material for any purpose.
The Respondent’s activities in connection with the disputed domain name demonstrate egregious bad faith. Since the website to which the disputed domain name resolves incorporates numerous displays of the Complainant’s trademarks for the purpose of selling the Complainant’s material, the Respondent is creating a likelihood of confusion among consumers in order to intentionally attract users for the Respondent’s own commercial gain. Through an investigation of the Respondent’s website, the Complainant completed a purchase of one of the advertised hard drives and received a drive filled with almost two terabytes of the Complainant’s protected material. The result of this investigation confirms that the Respondent has, in fact, registered and is, in fact, using the disputed domain name in bad faith, namely to infringe on the Complainant’s trademarks and profit from unauthorized sales of the Complainant’s material, to the detriment of both the Complainant and the artists who created the content.
In addition to the demonstrations of bad faith, the Respondent has not only ignored cease and desist correspondence from the Complainant, but has also changed hosting companies for the disputed domain name, in order to avoid the consequences of notice and takedown correspondence sent by the Complainant to the hosting companies. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the irDRP, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark SHUTTERSTOCK. The disputed domain name incorporates the Complainant’s trademark in its entirety with the addition of the generic and descriptive term “shop”. The addition of the descriptive term “shop” in the disputed domain name makes little, if any, difference in the confusing similarity and identity analysis.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark SHUTTERSTOCK and that the Complainant has proved the requirement under paragraph 4(a)(i) of the irDRP. B. Rights or Legitimate Interests
The Complainant must show, at least prima facie, that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the irDRP any of the following:
(i) that it has used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or
(iii) that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark SHUTTERSTOCK in connection with the disputed domain name which is confusingly similar to the Complainant’s trademark.
From the evidence in the case, it is clear that the Respondent’s commercial website, to which the disputed domain name resolves, contains direct references to the Complainant’s SHUTTERSTOCK trademark. Furthermore, the submitted evidence indicates that the Respondent is using the disputed domain name to market and sell copyrighted material belonging to the Complainant without identifying the relationship with the Complainant, thus misleading Internet users. Accordingly, the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.
By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the irDRP, any rights or legitimate interests in respect of the disputed domain name. Based on the available record, the Panel does not see an indication of any circumstances that may refute the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the irDRP. C. Registered or Used in Bad Faith
Under paragraph 4(b) of the irDRP, evidence of bad faith registration and use include:
(i) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented
out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Complainant has submitted evidence demonstrating that the website, to which the disputed domain name resolves, displays the Complainant’s trademarks for the purpose of offering the Complainant’s copyrighted material for sale without permission or authorization from the concerned right holders, and confusing consumers as discussed above.
Considering that the Respondent is not only reproducing the Complainant’s trademark but also offering unauthorized copies of the Complainant’s copyrighted material for sale, the Panel finds, in the absence of contrary evidence, that the Respondent knew or should have known of the Complainant’s trademark at the time the Respondent registered the disputed domain name.
Furthermore, the evidence in the case before the Panel indicates that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
There is no evidence in the case that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the irDRP and that the disputed domain name has been registered and used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the irDRP and 15 of the Rules, the Panel orders that the disputed domain name shall be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: September 22, 2016
Full & Egal Universal Law Academy