WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shutterstock, Inc. v. GiHwan Oh / Oh Gi Hwan

Case No. D2017-1444

1. The Parties

The Complainant is Shutterstock, Inc. of New York, New York, United States of America (“U.S.” or “United States”), represented internally.

The Respondent is GiHwan Oh / Oh Gi Hwan of Anyang, Republic of Korea, self-represented.

2. The Domain Name and Registrar

The disputed domain name <shutterstocks.com> (“Disputed Domain Name”) is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 31, 2017, the Registrar transmitted by email to the Center its verification response indicating that the language of the registration agreement is Korean, confirming that the Respondent is listed as the registrant, and providing the Respondent’s contact details.

On August 1, 2017, the Center notified the Parties in both English and Korean that the language of the registration agreement for the Disputed Domain Name is Korean. On August 3, 2017, the Complainant filed an amended Complaint and requested for English to be the language of the proceeding. On August 5, 2017, the Respondent requested for Korean to be the language of the proceeding.

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 UDRP (the “Rules”), and the WIPO Supplemental Rules for UDRP (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and Korean, and the proceeding commenced on August 7, 2017. In accordance with the Rules, paragraph 5, the due date for filing a Response was August 27, 2017. The Response was filed in Korean with the Center on August 24, 2017. The Respondent filed an amended Response on August 30, 2017.

The Center appointed Young Kim as the sole panelist in this matter on September 5, 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.

Pursuant to paragraph 11(a) of the Rules, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the administrative panel (once appointed) to determine otherwise. As discussed below, the Panel has determined that the language of this administrative proceeding is English.

4. Factual Background

The Complainant is a United States stock photography company. The Complainant has registered the following trademarks (collectively, the “SHUTTERSTOCK Marks”) in the United States and many other countries including the Republic of Korea:

Among the SHUTTERSTOCK Marks, the word mark SHUTTERSTOCK was filed and registered under Reg. No. 3,084,900 in the United States on February 8, 2005 and April 25, 2006, respectively. According to the Register of the United States Patent and Trademark Office, the word mark SHUTTERSTOCK was first used in commerce on February 14, 2004.

The Disputed Domain Name <shutterstocks.com> was registered on August 10, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the word mark SHUTTERSTOCK (U.S. Reg. No. 3,084,900) has been in use since at least as early as February 14, 2004; that the services with which the SHUTTERSTOCK Marks are used include licensing of, inter alia, high quality stock imagery, videos and music; that the Complainant provides a platform for independent photographers, videographers, designers and other artists to license their works worldwide and receive royalty payments; and that the Complainant has offered the services under the SHUTTERSTOCK Marks since at least as early as February 14, 2004, and offers such services under the SHUTTERSTOCK Marks worldwide.

The Complainant also alleges that it owns and operates domain names worldwide incorporating the SHUTTERSTOCK Marks, including by way of example only and not limitation: <shutterstock.com>, <shutterstock.de> and <shutterstock.fr> (the “Complainant’s Domain Names”), through which the services are offered.

The Complainant alleges that it has prominently and extensively used, promoted and advertised the SHUTTERSTOCK Marks and the Complainant’s Domain Names for over 12 years; and that by virtue of these efforts, the SHUTTERSTOCK Marks and the Complainant’s Domain Names have become well recognized by consumers as designating the Complainant as the source of the goods so marked.

The Complainant contends that the Disputed Domain Name <shutterstocks.com> simply adds the letter “s” to the Complainant’s SHUTTERSTOCK mark. The Complainant argues that the letter “s” has no distinguishing attributes that are identified with the Respondent and thus the Disputed Domain Name is confusingly similar to the SHUTTERSTOCK Marks.

Further, the Complainant contends that since the Respondent is using the website associated with the Disputed Domain Name for a commercial purpose, as the site is a host for links, this is not a bona fide offering of services, as the site is used only as a host for sponsored links, which take advantage of the fact that users have arrived at the site due to confusion associated with the SHUTTERSTOCK Marks. Thus, the Complainant argues that the Respondent does not have a legitimate interest in the Disputed Domain Name, and is only using it in order to create revenue.

The Complainant also contends that given the uniqueness and fame associated with the SHUTTERSTOCK Marks, it is unlikely that the Respondent decided to register the Disputed Domain Name with a legitimate business purpose separate from the Complainant in mind.

The Complainant further contends that the Respondent was not a licensee or otherwise authorized by the Complainant to use the SHUTTERSTOCK Marks.

Further, the Complainant alleges that the Respondent contacted the Complainant by email and offered to sell the Disputed Domain Name to the Complainant for USD 10,000 plus an additional escrow fee. The Complainant also alleges that the Respondent stated in these emails that at the time of purchase, the Disputed Domain Name cost USD 3,000 plus escrow fees. The Complainant argues that the Respondent was clearly attempting to acquire consideration far greater than the out-of-pocket costs for the registration of the Disputed Domain Name. Thus, the Complainant argues that this act is sufficient to show the Respondent’s bad faith in registering and holding the Disputed Domain Name.

The Complaint also alleges that the Respondent has also demonstrated use in bad faith through the placement of “pay-per-click” links on the website associated with the Disputed Domain Name. The Complainant contends that although the website associated with the Disputed Domain Name is currently a static list of links to different websites, “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept” (citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Complainant argues that the links on the website associated with the Disputed Domain Name are related to the business that the Complainant engages in and that this further serves to show that the links are targeting confusion among customers. In this regard, the Complainant alleges that the links point to “stock photos and images”; the type of content that the Complainant’s users are generally looking for and that this makes a user more likely to click on the link, resulting in revenue for the Respondent. The Complainant also alleges that in the Respondent’s email correspondence with the Complainant, the Respondent stated that “stocks especially mean shares in Korea”; and that despite the Respondent’s statements, the Disputed Domain Name is not being used in relation to market stocks, as all of the content on the website relates to stock imagery. The Complainant thus argues that this further shows the Respondent’s bad faith in the use of the Disputed Domain Name.

B. Respondent

The Respondent alleges that the Disputed Domain Name <shutterstocks.com> is made by combining a common noun “shutter” with “stocks”, which is the plural form of another common noun “stock”, and thus is essentially a combination of common nouns. Thus, the Respondent argues that such common nouns or a combination thereof cannot be exclusively owned and that even though the Complainant owned the trademark rights for SHUTTERSTOCK, it will be proper to consider that the use of such word by others with respect to other classes of goods listed in the trademark registrations is allowed.

The Respondent further alleges that since trademark registration was allowed for common nouns, it should be very strictly determined whether such trademarks are the same or similar to other terms. The Respondent argues that the Disputed Domain Name <shutterstocks.com> is not identical to the Complainant’s domain name <shutterstock.com>. Further, the Respondent argues that although the two domain names are similar, such similarity is only due to the fact that they are composed of common nouns.

Further, the Respondent alleges that the Respondent is operating a business of selling domain names and that his business has been registered before the National Tax Service in the Republic of Korea and thus he has paid income taxes for his business. The Respondent also alleges that since he began such business in October 2004, the Respondent has been in the domain name sales business. Thus, the Respondent argues that the Respondent has legitimate interests in registration and sale of domain names.

The Respondent further alleges that when registering the Disputed Domain Name, he considered two potential purchasers, persons or companies running stock-related businesses and persons or companies running the sale or construction of shutters.

The Respondent alleges that the Complainant’s trademarks were registered in the Republic of Korea in 2014, nine years after the Disputed Domain Name was registered. The Respondent also alleges that although the Complainant asserts its rights in the SHUTTERSTOCK word mark registered in the United States in 2004, he was not aware of such fact and such assertion based on the trademark under the United States law clearly lacks reasonableness.

Further, the Respondent argues that registering a domain name for the purpose of sale, not for the purpose of running a business, does not mean that there is no right or legitimate interest in the domain name. The Respondent alleges that if such a registration of a domain name (i.e., for sale of the domain name) is held not to be a legitimate interest, then sales of numerous domain names occurring worldwide would completely lose their legitimate interests, and thus such a holding would be unreasonable.

The Respondent also alleges that although the Complainant argues that its marks became very famous due to their long-term efforts, the Complainant’s SHUTTERSTOCK Marks were not famous and almost unknown in the Republic of Korea when the Disputed Domain Name was registered. The Respondent particularly alleges that considering the fact that the domain name of the Complainant was registered in 2003 and the Disputed Domain Name was registered in 2005, it can be easily assumed that the Disputed Domain Name was registered not in bad faith to sell it to the Complainant, but to sell it to general and potential business operators.

The Respondent argues that unlike the Complainant’s assertion, the price of USD 10,000 of the Disputed Domain Name is not especially high, considering the fact that persons or companies running stocks or shutter businesses would have the ability to pay a high cost to some extent in view of the market size and general business size in said business areas. The Respondent also argues that if he truly intended to sell the Disputed Domain Name to the Complainant, it would be rather unreasonable to demand USD 10,000, which is relatively small in view of the business size of the Complainant who runs such a large business worldwide as asserted by the Complainant.

The Respondent also argues that although the Complainant argues that he had bad faith based on the fact that he raised the price from USD 3,000 to USD 10,000, this comes from misunderstanding of his business model. Specifically, the Respondent alleges that only less than one to five percent of domain names are actually sold in a year; that thus, people in the domain name sale business need to seek profits as well as costs for registration and maintenance of domain names from selling some domain names; and that accordingly, these domain name sale business people need to change domain name prices depending on various business situations. The Respondent further alleges that although he had once set the price of the Disputed Domain Name as USD 3,000 because he had hoped to sell it in a short period of time, the Disputed Domain Name was not sold, and as a result, he has been possessing it for more than 10 years. As such, the Respondent argues that this cannot be evidence showing that he tried to obtain improper profits by selling the Disputed Domain Name to the Complainant.

Further, the Respondent contends that in view of the fact that the Complainant already owns and operates the domain name <shutterstock.com>, which is shorter than the Disputed Domain Name and is identical to the Complainant’s trademarks, it is unreasonable to assume that he has retained the Disputed Domain Name for more than 10 years to interfere with the Complainant’s use of its domain name or to sell the Disputed Domain Name to the Complainant at a high price.

The Respondent further argues that the Complainant misunderstood the fact that the Disputed Domain Name was placed on the parking website for purpose of advertising the Disputed Domain Name for sale. The Respondent alleges that in accordance with a typical business model, he has parked the Disputed Domain Name so as to contact with potential buyers efficiently, and that all Internet parking companies currently place such advertisements which is not selective as long as it is parked on these sites.

In this regard, the Respondent argues that the Complainant’s allegation that he had an intention to seek improper profits is malicious since the Complainant, a large company which can be seen as a large-scale advertiser, should know that they can take actions to major platform providers such as Google so as not to place advertisements on the Respondent’s Disputed Domain Name. The Respondent further argues that nonetheless, the Complainant did not take any action, which could easily solve the problem regardless of the opinions of the Respondent or the domain name parking company, and then blamed the Respondent who parked the Disputed Domain Name with a parking company for the efficacy of selling the domain name in accordance with a general practice in this business field.

Further, as to the Complainant’s allegation that the Respondent has threatened it by saying that any legal action would make the Complainant incur even more expense and has even threatened to commence a suit in the Republic of Korea, the Respondent argues that this was a self-preserving reaction under the circumstance where the Complainant demanded the sale of the Disputed Domain Name at a cheap price relying on the trademark rights. The Respondent further argues that it takes a lot of time and money if someone is sued even if the person is not guilty; and that even in responding to the present proceeding, the Respondent had to spend large costs and time to translate the documents and seek advice from professionals to prepare a response to the Complaint. As such, the Respondent argues that he only wished to make a minimum self-defense by indicating a strong will to defend against the Complainant, who tried to take the Disputed Domain Name at a low price relying on its trademark rights. The Respondent also points out that he did not contact the Complainant to offer the sale of the Disputed Domain Name and thus did not first mention any dispute or litigation. Thus, the Respondent argues that such statements cannot be regarded as evidence proving his bad faith.

6.1. Preliminary Issue: Language of the Proceeding

According to paragraph 11(a) of the Rules, in the absence of any agreement between the parties, or unless otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement subject to the authority of the panel to determine otherwise.

The Panel notes that the language of the proceeding for this case would be Korean as it is the language of the relevant Registration Agreement in the absence of any express agreement to the contrary by the Parties. Under paragraph 11(a) of the Rules, however, the Panel has the authority to determine the language of the proceeding, having regard to the circumstances of the administrative proceeding.

The Complainant has submitted a request that English be the language of the proceeding. The Respondent has argued that the language of the proceeding in this case should be Korean. The Panel notes that the Respondent communicated with the Complainant in English.

The Panel has considered the particular circumstances of this carefully as well as the discretion provided under paragraph 11(a) of the Rules. Noting that the Response addresses the contentions of the Complainant, indicating that the Respondent has understood the Complaint, the Panel finds that to order translation of the Complaint would only delay these proceedings. The Panel accepts the Complaint as filed in English and the Response as filed in Korean, and will proceed in its discretion to render its decision in English.

6.2. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the SHUTTERSTOCK Marks in light of their registration and use by the Complainant.

The Panel agrees with the Complainant that the Disputed Domain Name <shutterstocks.com> is confusingly similar to the Complainant’s SHUTTERSTOCK Marks. The Panel also agrees with the Complainant that the letter “s” has no distinguishing attributes that are identified with the Respondent. The Panel disregards the generic Top-Level Domain (“gTLD”) “.com” in determining the identity or confusing similarity of the Disputed Domain Name with the Complainant’s trademarks.

The Respondent argues that since “shutterstocks” in the Disputed Domain Name is a combination of a common noun “shutter” and the plural form of another common noun “stock”, it cannot be exclusively owned and even though the Complainant owns the trademark rights for SHUTTERSTOCK, the use of such word by others with respect to other classes of goods listed in the trademark registration should be allowed. The Respondent also argues that since trademark registration was allowed for common nouns, whether such trademarks are the same or similar should be very strictly determined.

While the words “shutter” and “stock” are dictionary words, the Panel does not consider the Respondent’s arguments to be particularly persuasive or relevant under this element, noting the Complainant’s trademark rights in the coined term “shutterstock”, which is clearly recognizable in the Disputed Domain Name. Moreover, the first element serves primarily as a standing requirement, that is, a straightforward, side-by-side comparison between the Complainant’s trademark and the Disputed Domain Name.

Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case showing that the Respondent does not have rights or legitimate interests in the Disputed Domain Name within the meaning of paragraph 4(a)(iii) of the Policy. The Complainant alleged that the Respondent was not a licensee or otherwise authorized by the Complainant to use the SHUTTERSTOCK Marks; and that since the Respondent is using the website associated with the Disputed Domain Name for a commercial purpose, as the site is a host for links, this is not a bona fide offering of services, as the site is used only as a host for sponsored links, which take advantage of the fact that users have arrived at the site due to confusion associated with the SHUTTERSTOCK Marks.

In response, the Respondent argued that he has legitimate interests in registration and sale of domain names including the Disputed Domain Name, since he is operating a business of domain sales which has been registered before the National Tax Service in the Republic of Korea and paying income taxes for said business. Further, the Respondent argued that registering a domain name for the purpose of sale, not for the purpose of running business, does not mean that there is no right or legitimate interest in the domain name, and that if such a registration of a domain name for sale of the domain name is held not to be for a legitimate interest, then sales of numerous domain names occurring worldwide would completely lose their legitimate interests, and thus such holding loses its reasonableness.

Further, the Respondent alleged that when registering the Disputed Domain Name, he considered two potential purchasers, persons or companies running stock-related businesses and persons or companies running sale or construction of shutters.

The Panel notes that registering a domain name for the purpose of sale, not for the purpose of running business, does not necessarily mean that there is no right or legitimate interest in the domain name. However, the Panel does not agree with the Respondent that he has rights or legitimate interests in registration of the Disputed Domain Name. The Panel notes that the word “shutterstocks” is a coined word. The Panel does not consider it credible that the Respondent selected the Disputed Domain Name, considering two potential purchasers who run stock and shutter businesses since it is difficult to find any rational relationship between the two businesses. Further, the Panel does not agree with the Respondent that the fact that he is in the business of trading in domain names does not render his use of the Disputed Domain Name “in connection with a bona fide offering of goods or services” under the meaning of the Policy. See Intocable, Ltd. V. Paytotake LLC., WIPO Case No. D2016-1048; Yumiko, LLC v. Domain Hostmaster. Customer ID:44519875664713, Whois Privacy Services Pty Ltd/Stanley Pace, WIPO Case No. D2015-1669.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Policy states in paragraph 4(b)(i) that bad faith may be found where there are “circumstances indicating that [the holder 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 [the holder’s] documented out-of-pocket costs directly related to the domain name.”

The Complainant alleged that not only were the SHUTTERSTOCK Marks first established over 10 years ago, but also, the Complainant operates worldwide, suggesting that the SHUTTERSTOCK Marks are very widely known. As such, the Complainant argued that it is unlikely that the Respondent was unaware of the SHUTTERSTOCK Marks before registering the Disputed Domain Name. The Complainant also argued that “shutterstock” is an invented or coined word and is unlikely to be chosen by the Respondent innocently as having any connection with the Respondent or a business with which the Respondent has a legitimate interest; and that it is unlikely that the Respondent decided to register the Disputed Domain Name with a legitimate business purpose separate from the Complainant in mind.

In response, the Respondent alleged that the Complainant’s trademarks were registered in the Republic of Korea in 2014, nine years after the Disputed Domain Name was registered. The Respondent also alleged that although the Complainant asserts its rights in the SHUTTERSTOCK word mark registered in the United States in 2004, the Respondent was not aware of such fact and such assertion based on the trademark under the law of the United States clearly lacks reasonableness. The Respondent also alleged that the Complainant’s SHUTTERSTOCK Marks were not famous and almost unknown in the Republic of Korea when the Disputed Domain Name was registered. The Respondent particularly alleged that considering the fact that the domain name of the Complainant was registered in 2003 and the Disputed Domain Name was registered in 2005, it can be easily assumed that the Disputed Domain Name was registered not in bad faith to sell it to the Complainant, but to sell it to general and potential business operators.

The Panel finds that the Respondent registered the Disputed Domain Name in bad faith for several reasons. First, the term “shutterstock” is a coined word. The Respondent’s above reasons for adopting “shutterstocks” in the Disputed Domain Name are not reasonable or persuasive. Thus, the Respondent fails to provide credible rationale that would demonstrate that the Disputed Domain Name was not registered in bad faith.

Although the Respondent asserted that he was not aware of the Complainant’s trademarks when he registered the Disputed Domain Name, noting the near instantaneous and global reach of the Internet and search engines, the Respondent, as a domain name business operator, should have known the Complainant’s trademark or domain name. In this regard, the Panel notes cases where UDRP panels have imposed higher obligation to the respondents who are in the business of trading in domain names to avoid the registration of trademark-abusive domain names. See Intocable, Ltd. v. Paytotake LLC, WIPO Case No. D2016-1048; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.

Further, the Panel finds that the Respondent used the Disputed Domain Name in bad faith.

The Complainant alleged that the Respondent contacted the Complainant by email and offered to sell the Disputed Domain Name to the Complainant for USD 10,000 plus an additional escrow fee. The Complainant also alleged that the Respondent stated in these emails that at the time of purchase, the Disputed Domain Name cost USD 3,000 plus escrow fees. The Complainant argued that the Respondent was clearly attempting to acquire consideration far greater than the out-of-pocket costs for the registration of the Disputed Domain Name.

In response, the Respondent alleged that the price of USD 10,000 of the Disputed Domain Name is not especially high, considering the fact that persons or companies running stocks or shutter businesses would have the ability of paying high costs to some extent in view of the market size and general business size in said business areas. The Respondent also argued that if he truly intended to sell the Disputed Domain Name to the Complainant, it would be rather unreasonable to demand USD 10,000, which is relatively small in view of the business size of the Complainant who runs such a large business worldwide as asserted by the Complainant. The Respondent also argued that although the Complainant argues that the Respondent had bad faith based on the fact that the Respondent raised the price from USD 3,000 to USD 10,000, this comes from a misunderstanding of his business model. Specifically, the Respondent alleged that fewer than one to five percent of domain names are actually sold in a year; that thus, people in the domain name sale business have to seek profits as well as costs for registration and maintenance of domain names by selling some domain names; and that accordingly, domain name sale business people actually need to change domain name prices depending on various business situations. The Respondent further alleged that although he had once determined the price of the Disputed Domain Name as USD 3,000, because he hoped to sell it in a short time, the Disputed Domain Name was not sold, and as a result, the Respondent has been possessing it for more than 10 years. As such, the Respondent argued that this cannot be regarded as evidence showing that he tried to obtain improper profits by selling the Disputed Domain Name to the Complainant. Further, the Respondent contended that in view of the fact that the Complainant already owns and operates the domain name <shutterstock.com>, which is shorter than the Disputed Domain Name and is identical to the Complainant’s trademarks, it is unreasonable to assume that the Respondent has retained the Disputed Domain Name for more than 10 years to interfere with the Complainant’s use of its domain name or to sell the Disputed Domain Name to the Complainant at a high price.

However, despite the Respondent’s above allegations, the Panel finds that the Disputed Domain Name has been used in bad faith. Although the Respondent did not contact the Complainant first as asserted by the Complainant, the Panel finds that the price offered by the Respondent, USD 10,000 plus an additional escrow fee, is higher than reasonable out-of-pocket expenses in relation to the acquisition of the Disputed Domain Name. See Mou Limited v. IT Manager, Jack Zhang, WIPO Case No. D2016-2130; SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. In this case, the Disputed Domain Name (which is comprised of a coined word) was registered in bad faith, and the Panel finds that it was also used in bad faith by the Respondent in demanding more than reasonable out-of-pocket expenses in relation to the sale of the Disputed Domain Name to the Complainant.

Thus, the Panel concludes that paragraph 4(a)(iii) of the Policy is satisfied.

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 <shutterstocks.com> be transferred to the Complainant.

Young Kim
Sole Panelist
Date: October 13, 2017