WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shutterstock, Inc. v. Domain Administrator, See PrivacyGuardian.org / Samir Basmir

Case No. D2020-2565

1. The Parties

The Complainant is Shutterstock, Inc., United States of America (“United States”), represented internally.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Samir Basmir, Morocco.

2. The Domain Name and Registrar

The disputed domain name <shutterstock-downloader.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2020. On October 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and the contact information comprised in the Complaint. The Center sent an email communication to the Complainant on October 7, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 10, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on October 20, 2020. In accordance with the Rules, paragraph 5, the due date for the submission of the Response was November 9, 2020. The Respondent did not submit any Response. Accordingly, the Center notified to the Parties the Respondent’s default on November 22, 2020.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on December 15, 2020. 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 Shutterstock, Inc., a company that provides a platform that allows independent photographers, videographers, designers and other artists or contributors to license their works globally and receive royalty payments.

The Complainant owns, among others, the following trademark registrations:

Mark

Registration Number

Registration Date

Class

Jurisdiction

SHUTTERSTOCK & Device

4286055

February 5, 2013

45

United States

SHUTTERSTOCK & Device

4286040

February 5, 2013

45

United States

SHUTTERSTOCK

3084900

April 25, 2006

35

United States

SHUTTERSTOCK

934079

June 22, 2007

45

International Trademark designating among others: Australia, Colombia, Belarus, Croatia, Egypt, Iceland, Kazakhstan, New Zealand, Norway, Mexico, Poland, Republic of South Korea, Singapore, Switzerland, Turkey, Ukraine

SHUTTERSTOCK

1172147

March 21, 2013

45

International Trademark designating among others: China, Russian Federation

SHUTTERSTOCK

1190084

November 27, 2014

45

Philippines

SHUTTERSTOCK & Device

1243504

November 13, 2014

45

Australia, Switzerland, Colombia, Japan, Republic of South Korea, Kazakhstan, New Zealand, Philippines, Russian Federation, Ukraine

SHUTTERSTOCK & Device

14580137

July 7, 2015

45

China

The Complainant is the holder of various domain names that incorporate the trademark SHUTTERSTOCK, such as <shutterstock.com>, <shutterstock.de>, and <shutterstock.fr>.

The disputed domain name was registered on October 4, 2017. At the time the Complaint was filed, the disputed domain name resolved to a web site where content related to SHUTTERSTOCK was made available at full resolution and with no watermark, for free.

5. Parties’ Contentions

A. Complainant

The Complainant asserted the following:

That it is a United States corporation that provides a platform for independent photographers, videographers, designers, and other artists to license their works worldwide and receive royalty payments, since as early as 2004.

That it owns several registrations for the mark SHUTTERSTOCK in a variety of countries, which cover the licensing of high quality stock images, videos, and music, among other services.

That it owns and operates domain names worldwide, which incorporate the SHUTTERSTOCK brand, such as <shutterstock.com>, <shutterstock.de>, and <shutterstock.fr>.

That it has prominently and extensively used, promoted, and advertised the SHUTTERSTOCK brand and the SHUTTERSTOCK domains for over 12 years.

That the SHUTTERSTOCK trademarks are world famous and known to artists, photographers, designers, producers, editors, creators, and consumers of images and film clips.

That it has invested substantial sums of money and resources to develop the SHUTTERSTOCK brand.

That the Respondent’s website uses the Complainant’s trademarks in the disputed domain name as well as multiple times on the site itself.

That the generic term “downloader” has no distinguishing attributes that are identified with the Respondent, and that it does nothing to obviate the confusing similarity between the disputed domain name and the SHUTTERSTOCK trademarks.

That nothing suggests that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services or for a legitimate noncommercial use.

That the Respondent has not been granted any license or authorization to use the SHUTTERSTOCK trademarks.

That the Respondent is using the website related to the disputed domain name with profit intents, as it requests donations and website promotion from site visitors, via social media.

That given the uniqueness and fame associated with the SHUTTERSTOCK mark, it is unlikely that the Respondent registered the disputed domain name with a legitimate business purpose.

That the purpose of the Respondent’s website is to unlawfully circumvent and download genuine SHUTTERSTOCK content at full resolution, with no watermark, and for free.

That customers are misled into thinking that the Respondent’s website is in some way related or affiliated to, or endorsed by the Complainant.

That the Respondent purposely monetizes the disputed domain name through Search Engine Optimization (SEO) by driving traffic to the website to which the disputed domain name resolves.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:

(i) the disputed 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 with respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

In view of the Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw the inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see General Mills, Inc., v. Velgut Group Business and Intl Commerce, S.A. de C.V., WIPO Case No. DMX2012-0013; and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Identical or Confusingly Similar

The Complainant has submitted evidence showing that it owns registrations for the SHUTTERSTOCK mark in various jurisdictions and classes, to cover services related to the licensing of digital data and the publishing of images since 2007.

The disputed domain name is confusingly similar to the Complainant’s SHUTTERSTOCK mark, as it incorporates it in its entirety.

As the trademark SHUTTERSTOCK is recognizable in the disputed domain name, the inclusion of the generic term “downloader” as a suffix to the Complainant’s SHUTTERSTOCK mark in said disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark, thus not preventing a risk of confusion under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also F. Hoffmann-La Roche AG v. n/a, Whois Privacy Protection Service, WIPO Case No. D2013-0599, <buy-xenical-onlinestore.com>; Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080, <swarovskionlinestore.com>; Hermes International v. Fuzhoudongchen Tech Inc, WIPO Case No. D2011-0542, <hermes-online-store.com> and <hermesonlinestore.com>).

The addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain name is a technical requirement of the Domain Name System (DNS), and therefore has no legal significance (see section 1.11. of the WIPO Overview 3.0; see also Facebook, Inc. v. Super Privacy Service LTD c/o Dynadot / Xiamen Tianmu zhuangshi sheji youxian gongsi, WIPO Case No. D2020-0885).

In light of the above, the first element of the Policy has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it did no acquire trademark or service mark rights; or

(iii) the respondent is 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.

The Complainant alleges that the Respondent has not proven to have used or to have made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services. The Complainant has based this assertion on the fact that the Respondent lacks any right to, or legitimate interest in the disputed domain name as the Complainant has not granted him any license or authorization to use the SHUTTERSTOCK mark. These allegations have not been challenged by the Respondent.

The Respondent has also not refuted the Complainant’s allegations that the Respondent used the website to which the disputed domain name resolved, to make available content associated with the Complainant, in exchange for optional payment and/or promotion of the Respondent in social media.

Similarly, the Respondent has not filed any evidence showing that it has been commonly known by the disputed domain name.

The fact that the Respondent added the term “downloader” to the Complainant’s trademark in the disputed domain name, and used the disputed domain name to resolve to a website where photographs, images and other works were made available without authorization from the Complainant, shows that the Respondent has targeted the Complainant and the disputed domain name carries a risk of implied affiliation with the Complainant. Thus, the Respondent has impersonated the Complainant. This conduct cannot be considered as use of the disputed domain name in connection with a bona fide offering of goods or services, nor as a legitimate noncommercial or fair use (see section 2.5.1 of the WIPO Overview 3.0; see also FIL Limited v. Alexander Smith, WIPO Case No. D2020-0227; Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034, Allianz SE v. Paul Umeadi, Softcode Microsystems, WIPO Case No. D2019-1407).

The consensus view among panels appointed under the Policy is that the use of a domain name for illegal activity, such as impersonation or passing off, cannot confer rights or legitimate interests in a domain name (see section 2.13 of the WIPO Overview 3.0; see also Self-Portrait IP Limited v. Franklin Kelly, WIPO Case No. D2019-0283).

In light of the above, the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled.

C. Registered and Used in Bad Faith

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.

The Complainant has sufficiently proven that it owns various registrations that cover the mark SHUTTERSTOCK in different jurisdictions.

The disputed domain name not only reproduces the Complainant’s trademark in its entirety, but it also incorporates the term “downloader” which induces Internet users to err as to the source of the website to which the disputed domain name has resolved and the works made available therein.

Taking this into account, as well as the fact that the Respondent has targeted the Complainant, its platform, and its potential clients, it’s clear that the Respondent knew about the Complainant and its trademark SHUTTERSTOCK when he registered the disputed domain name. This conduct constitutes opportunistic bad faith registration under the Policy (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980).

The evidence submitted by the Complainant shows that the Respondent has attempted to attract Internet users to his website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, which constitutes bad faith under paragraph 4(b)(iv) of the Policy (see 1IQ PTY LTD v. 1337 Services LLC, WIPO Case No. D2017-2156; Facebook, Inc., WhatsApp Inc. v. Wisdom King, Wizindo, WIPO Case No. D2019-2517).

The Panel finds that the Respondent’s impersonation of the Complainant constitutes bad faith use under the Policy (see Self-Portrait IP Limited v. Franklin Kelly, WIPO Case No. D2019-0283).

Furthermore, in order to have been able to make available the works of artists and authors associated with the Complainant’s platform, the Respondent appears to have circumvented the Technological Protection Measures (TPMs) that guarded said works (and which are made available by the Complainant in said platform). Such acts of circumvention support a finding of bad faith in this case.

In light of the above, the third element 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 disputed domain name <shutterstock-downloader.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: December 29, 2020