WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shutterstock, Inc. v. Mehdi Rahimi, Afarinesh

Case No. DIR2019-0008

1. The Parties

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

The Respondent is Mehdi Rahimi, Afarinesh, Iran (Islamic Republic of).

2. The Domain Name and Registrar

The disputed domain name <shutterstockfa.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2019, and in hardcopy on July 31, 2019. On July 3, 2019, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On July 6, 2019, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The amended Complaint was received on July 31, 2019, and in harcopy on August 7, 2019.

The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 August 13, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2019. On September 8, 2019, the Center notified the Respondent’s default.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on September 13, 2019. 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 the owner of the United States registration No. 4,286,055 for the trademark SHUTTERSTOCK, registered on February 5, 2013, and United States registration No. 3,084,900, registered on April 25, 2019 amongst other registrations in the United States and International Registrations. The Complainant has registered domain names that include the trademark SHUTTERSTOCK.

The Respondent has registered the disputed domain name on May 30, 2015, and resolves to an active website which advertises the Complainant’s content for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant is the owner of the mark SHUTTERSTOCK. The Complainant has registered and used the mark SHUTTERSTOCK since 2004 with respect to licensing of imagery, video, and music. The Complainant’s mark has become well known within the relevant industry. The disputed domain name consists of the Complainant’s mark SHUTTERSTOCK adding to it the letters “fa”, which is an abbreviation of the Farsi language and does not eliminate confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not use the disputed domain name with respect to a bona fide offering of goods or services. The disputed domain name resolves to a website which uses, without authorization, the Complainant’s mark and offers to sell reproductions of Complainant’s content. Internet users can place orders through the URL “parsdream.com”. The Complainant never authorized Respondent to use its mark nor licensed the Respondent or its website “Parsdream.com”.

The Complainant contends that the disputed domain name is registered and is being used in bad faith. The Respondent attempts to attract for commercial gain Internet users by creating the likelihood of confusion. The Respondent displays the trademark SHUTTERSTOCK to advertise the Complainant’s content for sale. The Respondent gives the impression that it is a legitimate provider of the Complainant’s content.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant holds a number of trademark registrations for the trademark SHUTTERSTOCK. The Panel is satisfied that the Complainant has established its ownership of the trademark SHUTTERSTOCK.

The disputed domain name <shutterstockfa.ir> comprises the Complainant’s trademark SHUTTERSTOCK. Adding the letters “fa” does not eliminate confusing similarity (given that it is an abbreviation of Farsi and the disputed domain name actually targets users of the Farsi language). Therefore, it may reinforce the impression that the disputed domain name belongs to the Complainant and is created for the purpose of servicing the Iranian market. The country-code Top-Level Domain (“ccTLD”) “.ir” may typically be ignored when assessing confusing similarity as held by prior panels.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that the Complainant never authorized the Respondent to use its trademark as part of the disputed domain name.

The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered or Used in Bad Faith

The Respondent clearly knew of the Complainant, its trademarks and activity. The Respondent’s knowledge can be evidenced by the fact that the disputed domain name resolves to a website which offers the Complainant’s content for sale. Also, the Respondent uses on its website the Complainant’s trademark. All of the above is an indication of bad faith registration.

The provision of services identical to those provided by the Complainant and providing content belonging to the Complainant is bad faith use. It is clear that the Respondent is trying to confuse Internet users by creating a likelihood of confusion with the Complainant and its products. The Respondent is clearly attempting to attract Internet traffic to its website for the purpose of commercial gain.

Therefore, the Panel concludes that the disputed domain name is registered and is being used in bad faith. Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <shutterstockfa.ir> be cancelled.

Nayiri Boghossian
Sole Panelist
Date: September 23, 2019