The Complainant is Shutterstock, Inc. of New York, New York, United States of America (“United States”), represented by Heidi Garfield, United States.
The Respondent is Whois Privacy Corp. of Nassau, Bahamas.
The disputed domain name, <shopdiz.biz> (the “Domain Name”), is registered with Internet Domain Service BS Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2017. On July 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 1, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Restrictions Dispute Resolution Policy, adopted by NeuLevel, Inc. (the “Policy” or “RDRP”), the Supplemental Rules for Restrictions Dispute Resolution Policy (the “Supplemental RDRP Rules”), 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 August 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2017.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 25, 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.
The Complainant’s business commenced in early 2004 under the “Shutterstock” name. The Complainant provides a platform for independent photographers, videographers, designers and other artists to license their works and receive royalties.
The Complainant is the registered proprietor of a number of word marks and device marks comprising the name “Shutterstock”. The Complainant highlights its United States Registration No. 3,084,900 SHUTTERSTOCK (word) registered April 25, 2006 (application filed February 8, 2005) in class 35 for various services including the licensing of images.
The Domain Name was created on August 25, 2011 and, on the unchallenged evidence of the Complainant, appears to have been transferred to the Respondent on April 2, 2016.
The Domain Name is connected to a website offering for sale copies of images and videos of the Complainant and a number of other organisations.
On April 1, 2016 the Complainant’s attorneys sent a cease-and-desist letter addressed to […]@shopdiz.biz and […]@yahoo.com. Where those addresses came from is not known to the Panel. The contact email address appearing on the ICANN WhoIs search result annexed to the Complaint is very different.
The Complainant’s case is very simple. It contends that the Domain Name should be transferred to it on the basis that in breach of paragraph 3 of the Supplemental RDRP Rules the Domain Name “is not being currently and will not be used primarily for a bona fide commercial use under RDRP Policy para. 4(b)”. The Respondent’s use of the Domain Name is not a bona fide commercial use because, amongst other things, it pirates the Complainant’s services.
The Complainant’s case in relation to the Respondent’s use of the Domain Name is encapsulated in the following passage from the Complaint:
“Complainant’s business model is based on licensing Shutterstock Content to its users for a fee, allowing both the Complainant and its contributors to benefit from the copyright protections on the works. Conversely, Respondent does not have any permission to license any Shutterstock content, and therefore Respondent’s website essentially offers nothing but pirated content, which is not a bona fide business purpose. The web site does not sell any unique content of its own, but only creates a way for customers to circumvent Complainant’s copyright protections. In this manner, the Respondent is not using the domain name for any unique business purpose of its own, but simply to pirate the Complainant’s services.”
The Respondent did not reply to the Complainant’s contentions.
What significance (if any) should be attached to the fact that the Respondent has failed to respond to the Complaint? The matter is dealt with in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). For this purpose the UDRP Rules are the Rules applicable to proceedings such as this one under the RDRP. Section 4.3 of WIPO Overview 3.0 commences:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
However, paragraph 14(b) of the Rules permits the Panel, in the absence of exceptional circumstances, to draw such inferences as it considers appropriate from a party’s failure to comply with a time period established by the Rules. In this case, as indicated, the Respondent failed to comply with the prescribed time for the filing of a Response.
According to paragraph 4(a) of the Policy, a domain name registrant in the “.biz” Top-Level Domain must submit to a mandatory administrative proceeding in the event that a complainant asserts to a provider (in this case, the Center) that the registrant’s domain name is not being or will not be used primarily for a bona fide business or commercial purpose. Paragraphs 4(b) and 4(c) of the Policy give guidance as to what does and what does not constitute a bona fide business or commercial use for this purpose.
Paragraph 3 of the Supplemental RDRP Rules provides that a complaint under the Policy shall describe, in accordance with paragraphs 4(a)-(c), the grounds upon which the complaint is made including, in particular, the extent to which the domain name in dispute is not being or will not be used primarily for a bona fide business or commercial purpose.
Thus, unlike complainants in proceedings under the UDRP, a complainant under the RDRP is not required to prove that the disputed domain name is identical or confusingly similar to a trade mark in which the complainant has rights. On the face of it, therefore, a successful complainant under the RDRP can obtain transfer of the disputed domain name even though the complainant has no relevant trade mark rights, but simply on the basis that the respondent is not making a bona fide business or commercial use of the disputed domain name.
The Panel returns to this issue in 6D below.
The Panel is satisfied on the evidence supplied to the Panel (and in the absence of any explanation from the Respondent) that the Respondent’s use of the Domain Name as quoted in 5A above is piratical and damaging to the Complainant’s legitimate interests and cannot on any basis be regarded as a bona fide business or commercial use.
The inference that the Panel draws from the Respondent’s failure to respond to the Complaint is that the Respondent has no answer to the Complaint.
The remedy sought by the Complainant is transfer of the Domain Name, but the Complainant has no rights of any kind to the name present in the Domain Name (“shopdiz”) or any name remotely similar to it.
This Panel was faced with a similar problem in Braunstone Community Association v. Alan Davie, WIPO Case No. D2005-1279 (“Braunstone”), a case involving the domain name <braunstone.biz>. That was a case under the RDRP in which the Complainant had not sought to prove rights in the name “Braunstone”, yet sought transfer of the domain name. In that case this Panel stated:
“The Complainant seeks transfer of the Domain Name. This concerned the Panel because the Complainant has made no attempt to demonstrate that it has rights to the Domain Name sufficient to justify the Panel directing transfer. However, the Panel has read the decisions of the Panels in ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034 (“ISL”) and Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (“Educational Testing”) and in particular the following passage from the former case (quoting in part from the latter) commenting upon whether in circumstances such as those in the present case transfer is an appropriate remedy:
‘By requesting transfer of the domain name to itself, Complainant has effectively requested registration of the <toefl.com> domain name. Although there might be other legitimate users of the domain name that would seek registration subsequent to a cancellation of Respondent’s registration, Complainant’s request for registration should reasonably take precedence under a general first-in-time principle applicable to legitimate requests for registration.
This Administrative Panel agrees with that statement of principle. Further, a decision of an Administrative Panel under the Uniform Policy to transfer a disputed domain name to a Complainant does not mean that the Complainant obtains an invulnerable domain name registration. It remains open to any party to bring an action against a former Complainant’s holding of a domain name. Thus, an order of transfer should not prejudice the position of a third party who wishes to impugn the holding of a domain name registration obtained by way of an Administrative Panel’s order of transfer.’”
However, that case and the two cases cited in the above passage can be distinguished from this one. In Braunstone the domain name formed the most prominent feature of the complainant’s name and in ISL and Educational Testing both complainants had proved relevant trade mark rights, the only issue being that other traders might have had legitimate interests in the domain names (or some of them) in issue.
In this case ordering transfer would involve ordering transfer to an entity with no demonstrated rights to the name as such, the basis for the Complaint being restricted to the use to which it is being put. In these circumstances the Panel believes cancellation to be the appropriate remedy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <shopdiz.biz>, be cancelled.
Tony Willoughby
Sole Panelist
Date: October 18, 2017