WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Corbis Corporation v. RegisterFly.com/Whois Protection Service/surf advertising company/ Joseph, Graham
Case No. D2006-0546
1. The Parties
The Complainant is Corbis Corporation, Seattle, Washington, United States of America, represented by Preston Gates & Ellis, LLP, United States of America.
The Respondent is RegisterFly.com/Whois Protection Service/ surf advertising Company/ Joseph, Graham, Panama City, Panama.
2. The Domain Names and Registrar
The disputed domain names <corbisclicks.com>, <corbisexchange.com>, <corbistalk.com> and <corbistrust.com> are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2006. On May 1, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On May 3, 2006, eNom confirmed that the registrant was RegisterFly.com, Whois Protection Service, ProtectFly.com, Margaretville, New York, United States of America. On May 12, 2006, following a new request for confirmation from the Center, eNom informed the Center that the Whois contact details for the registrant of the domain names are presently listed as follows: surf advertising company, Joseph, Graham, Panama City, Panama.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 23, 2006. The Center verified that the Complaint together with its amendment satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2006. The Panel notes that such notification was sent to the Respondent using the contact details provided by eNom in its email of May 3, 2006 (“surf advertising Company”) and in its email of May 12, 2006, (“Whois Protection Service, ProtectFly.com”). In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2006.
The Center appointed Roberto Bianchi as the sole panelist in this matter on July 3, 2006. 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 Corbis Corporation is a well-known provider of images, footage and connected services. Corbis is headquartered in Seattle, and has offices in New York, Los Angeles, Chicago, London, Paris, Düsseldorf, Vienna, Hong Kong, Kuala Lumpur and Tokyo.
Complainant owns the trademark “CORBIS”, having obtained registrations for that mark in the United States on July 30, 1996, (U.S. Reg. No. 1990414) in International Class 9 for “interactive multimedia products …”, and on December 17, 1996, (U.S. Reg. No. 2024391) in International Class 35 for “licensing of digital data … for use in electronic and print publishing …”, and International Class 42 “providing access to an online database of still images, moving images …”. Complainant also owns and operates the “www.corbis.com website”. Most of Complainant’s annual revenues of $200 million come directly from Internet commerce activity at the “www.corbis.com” website. That website receives about six hundred million hits yearly.
On October 23, 2005, Respondent registered the domain names <corbistrust.com>, <corbisclicks.com> and <corbisexchange.com>. On October 26, 2005, Respondent registered the domain name <corbistalk.com>.
5. Parties’ Contentions
Complainant contends the following:
- The CORBIS mark is arbitrary or fanciful, and has widespread customer recognition. Therefore it is entitled to broad protection. As compound derivatives of the Complainant’s mark, the subject domain names are highly similar variants of the Complainant’s trademark, and are likely to cause confusion in the marketplace. The subject domain names have been used to sell competing, as well as unrelated, goods and services, and this enhances the potential for a likelihood of confusion. Respondent is improperly “typosquatting” on Complainant’s trademark.
- Respondent has neither used nor has made demonstrable preparations to use the subject domain names before notice of the dispute in connection with a bona fide offering of goods or services. Respondent is not commonly known by the subject domain names.
- The subject domain names were registered and are being used in bad faith. Respondent’s registration of variants of the Complainant’s mark prevents Complainant from expressing its mark in these additional four domain names. Therefore, Respondent registered the subject domain names in bad faith. The fact that Respondent has registered four of these domains evidences a pattern of bad faith conduct. Furthermore Respondent has published a portal website, which advertised, among other things, stock photography services. These are Corbis Corporation’s competitors. Therefore, Respondent’s use of the domain names in this manner trades upon the goodwill of Complainant by creating a likelihood of confusion with the Complainant’s mark CORBIS as to the source, sponsorship, affiliation, or endorsement of the Website or location. Respondent’s actions also have the potential to tarnish Complainant’s reputation. A search for the <corbisexchange.com> website points visitors to a “Whois Source” site featuring availability of numerous other sites including “sexchange” in their URLs. Some of these then point to sites of prurient interest.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Policy paragraph 4(a), in order to obtain transfer of a disputed domain name a complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is not disputed that Complainant has rights in the CORBIS mark, and that Complainant’s trademark registrations predate the registration of the disputed domain names by Respondent. See section 4 above.
Each of the disputed domain names fully incorporates the CORBIS trademark, with the addition of a generic word (“ clicks”, “exchange”, “talk” and “trust”, respectively) to the mark. Given the CORBIS mark for the provision of images and footage, none of the additions is apt to distinguish the resulting domain name from the mark. See ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215, where the disputed domain name consisted of the ABB trademark to which the general term “control” was added, a relatively neutral addition with limited ability to distinguish the disputed domain name from the trademark. In that decision reference was made to America Online, Inc. v. Viper, WIPO Case No. D2000-1198 (<aolgirls.com> found confusingly similar to the trademark AOL), America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661 (<aolwomen.com> found confusingly similar to the AOL trademark), WIPO Case No. D2000-0102 (<nokiagirls.com> found confusingly similar to NOKIA mark), and Red Bull GmbH v. Craig Jackson, WIPO Case No. D2002-0068 (<redbullradio.com> found confusingly similar to REDBULL).
The addition of the “.com” gTLD cannot distinguish the domain names at issue from the mark. See, among many other decisions, Boehringer Ingelheim Pharma GmbH & Co. KG v. Reps, Inc., WIPO Case No. D2006-0459 (the addition of the “.com” gTLD has no legal significance in comparing the Domain names and the Complainant’s trademark).
The Panel concludes that each of the disputed domain names is confusingly similar to Complainant’s CORBIS mark.
B. Rights or Legitimate Interests
It is a consensus view of WIPO panels that while the burden of proof generally rests with the complainant this could result in proving a negative, requiring information that is usually known by the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions; section 2.1., at http://www.wipo.int/amc/en/domains/search/overview/index.html.
By arguing inter alia that Respondent has neither used nor made demonstrable preparations to use the subject domain names before notice of the dispute in connection with a bona fide offering of goods or services (Policy paragraph 4(c)(i), and that Respondent is not commonly known by the subject domain names (Policy paragraph 4(c)(ii), the Panel is satisfied that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the domain names.
Considering that on the evidence before the Panel Respondent is using the websites under the disputed domain names do appear to have been used to divert Internet users to the websites of Complainant’s competitors, probably with the intention of obtaining “click-through” revenue (see subsection “C” below), Respondent does not appear to be making “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”, pursuant to Policy paragraph 4(c)(iii). The Panel notes in addition that the disputed domain names currently appear to be inactive, which further supports this conclusion.
In absence of any submission in Respondent’s favor, the Panel finds that the Respondent lacks rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
Given that at the time of the registration of the disputed domain names, each comprised the addition of a generic word to “CORBIS”, Respondent was most likely aware of the Complainant’s trademark. This suggests that the registration was in bad faith. See Sanofi-aventis v. Daichi Hoang, WIPO Case No. D2006-0363. (Respondent’s awareness of complainant’s mark “can inter alia be deducted from the construction of the domain names, consisting of the trademark ACOMPLIA and the generic words “discount”, “order” and “rimonabant”. It seems unlikely that the Respondent should have used the trademark ACOMPLIA by chance when he registered the disputed domain names. Further, the registration of multiple domain names containing the Complainant’s trademark suggests of bad faith.” See also Banca Intesa S.p.A., v. Fahri Dogan Bato, WIPO Case No. D2006-0509 (“Registration of a well known trademark of which the Respondent must have been aware is of itself sufficient to amount to bad faith (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849).”
The Panel’s impression that the domain name registrations were in bad faith is reinforced by the fact that the courier was unable to deliver the Center’s notifications to Respondent’s address in Panama because the address furnished by Respondent was incorrect or false. Providing false and misleading information in connection with the registration of the domain name has been found to be a circumstance of registration in bad faith. See Lincoln Property Company v. LPC, WIPO Case No. D2001-0238, citing Home Director, Inc. v. HomeDirector, WIPO Case D2000-0111 (finding bad faith use and registration where Respondent used “false and misleading information in connection with the registration of the Domain Name”).
Complainant submitted printouts showing that the websites under the disputed domain names, provided by the domain parking service of “www.oingo.com”, have on occasion led to the ShutterStock and the Getty Image Bank websites. ShutterStock offers advertising stock photography services on its website at http://www.shutterstock.com. Exhibit “F” to the Complaint.
It is a consensus view of WIPO panels that a panel may visit the Internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. A panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions at 4.1 available at http://www.wipo.int/amc/en/domains/search/overview/index.html. The Panel’s research indicates that ShutterStock and Getty Image Bank do appear to be competitors to Complainant.
It appears that Respondent’s purpose in using its domain names to divert Internet users to links of Complainant’s competitors was most likely obtaining “click-through” revenues. This is a use in bad faith as it free rides on Complainant’s mark and goodwill. See Nintendo of America, Inc. v. Pokemonplanet.net, Jerry Radl, and Fusion Media Solutions, Inc., WIPO Case No. D2001-1020 (“The format of the site (and the <pokemonplanet.com> site) strongly suggests that they obtained “click-through” revenues from the site, […] another improper use of the Complainant’s mark for commercial purposes. See Policy, paragraph 4(b)(iv).” “A website owner is paid click-through advertising revenues from having visitors to a website subsequently click on a link or banner advertisement which leads the visitor to a second website. Shields v. Zuccarini, 89 F. Supp. 2d 634, 640 (E.D. Pa. 2000) (the latter reference includes the court’s observation that use of a famous mark for click-through revenue is “exactly the type of conduct the [Anticybersquatting Consumer Protection Act] is designed to prevent”); see also Nokia Corp. v. Nokiagirls.com, WIPO Case No. D2000-0102 (click-through scheme described as a “free ride” on Complainant’s marks”).
In sum, the Panel believes that on balance Respondent has intentionally attempted to attract, for commercial gain (seeking “click-through” revenue), Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s well known CORBIS mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, a circumstance of bad faith registration and use pursuant to Policy, paragraph 4(b)(iv). The Panel notes in addition that the subsequent apparent inactivity of the disputed domain names might constitute evidence of bad faith on the basis of passive holding. However, it is not necessary to delve further into this given the discussion above.
The Panel finds that the Respondent has registered and used the disputed domain names in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <corbisclicks.com>, <corbisexchange.com>, <corbistalk.com> and <corbistrust.com> be transferred to the Complainant.
Roberto A. Bianchi
Dated: July 14, 2006