charnsitr / Shutterstock.com
US stock photo company Shutterstock has recovered a domain name at the World Intellectual Property Organization (WIPO).
The stock photo company was handed the domain, shutterstockshop.ir, on September 22. The decision was published on September 30.
Shutterstock filed its complaint on August 12, claiming that the respondent, MajidReza Jalaie, had infringed its trademarks.
The stock photo company owns a word trademark for ‘Shutterstock’ in the US and a device mark for the same name. The marks have been registered since 2006 and 2013, respectively.
Shutterstock also argued that Jalaie is not offering bona fide goods or services andthe domain is being used in bad faith.
According to Shutterstock, the disputed domain name resolves to a Farsi website which features a number of unauthorised displays of the Shutterstock’s trademarks.
It also contains unauthorised offers to sell reproductions of Shutterstock’s copyrighted content created by numerous artists, inviting potential customers to place orders for copies of the protected material on DVDs and hard drives.
Jalaie did not respond to Shutterstock’s complaint.
Johan Sjöbeck, sole panellist at WIPO’s Arbitration and Mediation Center, found that the addition of the generic term “shop“makes “little, if any, difference in the confusing similarity and identity analysis”.
Sjöbeck added that the respondent has no rights or legitimate interests in the domain as it is being used to sell copyrighted material belonging to Shutterstock and misleading internet users.
On the finding of bad faith, Sjöbeck said that the domain named had “intentionally been used in an attempt to attract, for commercial gain, internet users to the respondent’s website by creating a likelihood of confusion”.
The decision is available here.
This was first published on World IP Review.
Shutterstock, domain name, World Intellectual Property Organization, WIPO, MajidReza Jalaie, Johan Sjöbeck,