WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Getty Images (US), Inc., iStockphoto L.P. v. Nanci Nette, Name Management Group
Case No. D2017-1645
1. The Parties
Complainants are Getty Images (US), Inc. of New York, New York, United States of America ("U.S."), and iStockphoto L.P. of Calgary, Alberta, Canada, represented by CSC Digital Brand Services Group AB, Sweden. These two entities are referred to hereafter as "Complainant".
Respondent is Nanci Nette, Name Management Group of Los Angeles, California, U.S.
2. The Domain Names and Registrars
The disputed domain name <candidate-gettyimages.com> is registered with Network Solutions, LLC. The disputed domain names <istockphp.com> and <istockup.com> are registered with GoDaddy.com, LLC. Network Solutions, LLC and GoDaddy.com, LLC, are jointly referred to herein as the "Registrars", and the disputed domain names <candidate-gettyimages.com>, <istockphp.com> and <istockup.com> are collectively referred to herein as the "Disputed Domain Names".
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 24, 2017. On August 24, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On August 25 and August 29, 2017, the Registrars transmitted by email to the Center their verification responses confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 21, 2017.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 28, 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 states that iStockPhoto L.P. ("iStockPhoto") is a wholly owned subsidiary of Getty Images (US), Inc. ("Getty") and that Getty "is among the world's leading creators and distributors of award-winning still imagery, video, music and multimedia products, as well as other forms of premium digital content, available through its trusted house of brands, such as iStock." Complainant further states that Getty "was established in 1995 by Mark Getty and Jonathan Klein with the goal of turning a disjointed and fragmented stock photography market into a thriving, modernized industry able to meet the changing needs of visual communicators"; that it was "the first company to license imagery via the web, moving the entire industry online"; that it purchased iStockPhoto (which was founded in 2000) in February 2006; that it "maintains an archive of more than 90 million still images and illustrations and more than 50,000 hours of stock film footage"; and that it "represents more than 250,000 photographers and other content creators and hundreds of media and content partners, while supporting a staff of nearly 2,000 employees in more than 20 offices worldwide."
Complainant states, and provides evidence to support, that it owns a number of trademark registrations for the marks GETTY IMAGES and ISTOCK, including the following:
- U.S. Registration No. 2,656,652 for GETTY IMAGES (first used in commerce February 9, 1998; registered December 3, 2002) for use in connection with "Electronic delivery of images, photographs, art, graphic images and graphic design, clip art, news images, illustrations, digital animation, video clips, film footage and audio data via a global computer network and other computer networks."
- U.S. Registration No. 3,865,979 for ISTOCK (first used in commerce April 7, 2000; registered October 19, 2010) for use in connection with, inter alia, "Downloadable digital photographs, illustrations, [audio clips], video clips, fonts, code snippets and graphics."
These trademarks are referred to respectively herein as the "GETTY IMAGES Trademark" and the "ISTOCK Trademark".
The Disputed Domain Names were registered on July 12, 2016 (<candidate-gettyimages.com>), November 12, 2011 (<istockphp.com>), and September 30, 2010 (<istockup.com>). Complainant states, and Respondent does not dispute, that the Disputed Domain Name <candidate-gettyimages.com> "resolves to a website that attempts to infect Internet users' computers with viruses or malware" and that the Disputed Domain Names <istockphp.com> and <istockup.com> "redirect Internet users to websites featuring links to unrelated third-parties and links that directly reference Complainant but actually compete with Complainant's business."
5. Parties' Contentions
Complainant contends, in relevant part, as follows:
- The Disputed Domain Names are confusingly similar to the GETTY IMAGES Trademark and the ISTOCK Trademark because, inter alia, each of the Disputed Domain Names contain one of these trademarks in its entirety plus the words "candidate" (which is "closely linked and associated with Complainant's brands and trademarks" given that Complainant's images "include photographs of political candidates"); "php" (an acronym that describes a technical term used in connection with websites, "and many individuals upload images to their site written in 'PHP'"); and "up" (which is a "generic term"). These additional words "are closely linked and associated with Complainant's brands and trademarks only serves to underscore and increase the confusing similarity between the Disputed Domain Names and the Complainant's trademarks" and "do not negate the confusing similarity." Further, the hyphen in one of the Disputed Domain Names "does not diminish the confusing similarity" and "should be disregarded."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, "Respondent is not sponsored by or affiliated with Complainant in any way"; "Respondent is not commonly known by the Disputed Domain Names"; "use of a disputed domain name to spread malware or viruses to Internet users is not a legitimate use of a domain name"; and "[p]rior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name."
- The Disputed Domain Names were registered and are being used in bad faith because, inter alia, "[a]t the time of registration of the Disputed Domain Names, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se"; using a domain name that "resolves to a website that attempts to infect Internet users' computers with viruses or malware… is evidence of bad faith use"; "[b]y creating [a] likelihood of confusion between the Complainant's trademarks and the Disputed Domain Names, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Names, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant's trademarks in order to increase traffic to the Disputed Domain Names' websites for Respondent's own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to Respondent's websites, some of which directly reference Complainant merely to offer services by its competitors"; and "Respondent has ignored Complainant's attempts to resolve this dispute outside of this administrative proceeding."
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are 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 Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the GETTY IMAGES Trademark and the ISTOCK Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the GETTY IMAGES Trademark and the ISTOCK Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., "candidate-gettyimages," "istockphp" and "istockup") because "[t]he applicable Top Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.1.
Here, each of the Disputed Domain Names contains either the GETTY IMAGES Trademark or the ISTOCK Trademark in its entirety plus a hyphen and/or the words "candidate", "php" and "up". The Panel agrees with Complainant that these additional words and characters do nothing to distinguish the Disputed Domain Names from the relevant trademark.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, "Respondent is not sponsored by or affiliated with Complainant in any way"; "Respondent is not commonly known by the Disputed Domain Names"; "use of a disputed domain name to spread malware or viruses to Internet users is not a legitimate use of a domain name"; and "[p]rior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name."
WIPO Overview 3.0, section 2.1, states: "While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
With respect to those Disputed Domain Names that are being used in connection with monetized parking pages, that is, <istockphp.com> and <istockup.com>: Numerous UDRP panels have found the registration and use of a domain name that is confusingly similar to a complainant's trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the domain name is associated with monetized parking pages that contain links for goods or services related to the complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.
With respect to the Disputed Domain Name that "resolves to a website that attempts to infect Internet users' computers with viruses or malware", that is, <candidate-gettyimages.com>: The panel agrees with Complainant that such activity constitutes bad faith.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
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 names <candidate-gettyimages.com>, <istockphp.com>, and <istockup.com> be transferred to Complainant.
Douglas M. Isenberg
Date: October 11, 2017