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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shutterfly, Inc. v. Shutterfly Productions

Case No. D2008-1114

1. The Parties

Complainant is Shutterfly, Inc., of Redwood City, California, United States of America, represented by The Giga Law Firm, United States of America.

Respondent is Shutterfly Productions, of Houston, Texas, United States of America.

2. The Domain Names and Registrars

The disputed domain names <shutterflypro.com> and <shutterflyproductions.com> are registered with Tucows Inc.

The disputed domain name <shutterflyseniors.com> is registered with GoDaddy.com, Inc.

Collectively these are the “Domain Names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2008. On July 24, 2008, the Center transmitted by email to GoDaddy.com, Inc. and Tucows, Inc. a request for registrar verification in connection with the Domain Names at issue. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2008. Respondent did not submit a timely response and a Notice of Respondent Default was issued on August 20, 2008. On August 20, 2008, a communication from Respondent stated the Response was mailed to the Center on August 14, 2008. The Response was received by the Center on August 21, 2008. On August 22, 2008, Complainant submitted a Supplemental Filing with the Center.

The Center appointed Mark V.B. Partridge as the sole panelist in this matter on August 27, 2008. 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 Panel has exercised its discretion to consider Respondent’s late answer and Complainant’s Reply.

4. Factual Background

Complainant is a publicly traded company that was founded in December 1999 and is now ranked among the top 100 online retailers.

Complainant owns the following United States trademark registrations incorporating the term SHUTTERFLY:

SHUTTERFLY (Reg. No. 2,520,840) registered December 18, 2001;
SHUTTERFLY.COM (Reg. No. 2,962,700) registered June 21, 2005;
SHUTTERFLY EXPRESS (Reg. No. 2,864,567) registered July 20, 2004;
SHUTTERFLY (Reg. No. 2,604,030) registered August 6, 2002;
SHUTTERFLY (Reg. No. 3,397,397) registered March 18, 2008;
POSTCARDS BY SHUTTERFLY (Reg. No. 3,080,812) registered April 11, 2006;
SHUTTERFLY COLLECTIONS (Reg. No. 3,157,179) registered October 17, 2006;
SHUTTERFLY STUDIO (Reg. No. 3,283,893) registered August 21, 2007; and
SHUTTERFLY STUDIO (Reg. No. 3,204,112) registered January 30, 2007.

Complainant operates a website at “www.shutterfly.org” to advertise its services.

Respondent registered with the State of Texas in 2004 under the name “Shutterfly Productions.”

Respondent registered the Domain Names <shutterflypro.com> and <shutterflyproductions.com> on March 1, 2004, and the Domain Name <shutterflyseniors.com> on February 28, 2008.

5. Parties’ Contentions

A. Complainant

Complainant contends it is a leading Internet-based social expression and personal publishing service company, providing provides a full range of products and services which allow consumers to upload, edit, enhance, organize, print and preserve their digital photos.

Complainant also contends that Respondent’s Domain Names are confusingly similar to Complainant’s marks; that Respondent has no rights or legitimate interests in the Domain Names nor is Respondent making legitimate non-commercial fair use of the Domain Names; and that Respondent’s passive holding of the Domain Name <shutterflyseniors.com> is not bona fide use.

B. Respondent

Respondent contends that it is not attempting to leverage or confuse the public with the naming of the Domain Names that are commonly used vernacular; that Respondent has received approximately one phone call a year from parties mistaking the two companies and has directed those parties to Complainant’s customer support.

Respondent further contends that it registered Shutterfly Productions as a company name with the State of Texas in 2004 without knowledge of the existence of Complainant; that Respondent is known regionally as Shutterfly Productions; and that Complainant and Respondent do not provide the same services nor do they operate in the same markets.

C. Complainant’s Reply

Complainant responds that it began offering services to the professional photography market at least as early as March 3, 2003, one year before Respondent registered the Domain Names <shutterflypro.com> and <shutterflyproductions.com>, and five years before Respondent registered the Domain Name <shutterflyseniors.com>.

6. Discussion and Findings

This case involves three issues: (1) are the Domain Names confusingly similar to a trademark or service mark in which Complainant has rights; (2) does Respondent have a legitimate interest in the Domain Names; and (3) have the Domain Names been registered and used in bad faith? Complainant has the burden of proof on each of these issues.

A. Identical or Confusingly Similar

The Panel finds that Complainant possesses established legal rights in SHUTTERFLY by reason of its nine United States registrations of either SHUTTERFLY or marks consisting of the term SHUTTERFLY. Respondent’s Domain Names, <shutterflypro.com>, <shutterflyproductions.com> and <shutterflyseniors.com> are confusingly similar to Complainant’s registered marks.

Therefore, the Panel finds Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Complainant bears the burden of showing that Respondent lacks a legitimate interest in the Domain Name(s). Paragraph 4(c) of the Policy states that if the Panel, based on its evaluation of all the evidence, finds that Respondent: (i) used the Domain Name(s) in connection with a bona fide offering of goods and services; (ii) has been commonly known by the Domain Name(s); or (iii) is making a legitimate noncommercial use of the Domain Name(s), then Respondent will be found to have a legitimate interest in the Domain Name(s).

Although Respondent’s use in connection with the sale of goods or services is apparent to the Panel, our inquiry must go further since not all such use qualifies as bona fide use. “To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

To evaluate this question, we note first of all that Complainant has shown use and registration prior to Respondent’s adoption and use of “shutterfly”. Complainant obtained two trademark registrations for SHUTTERFLY (Reg. Nos. 2,520,840 and 2,64,030) prior to Respondent registering <shutterflypro.com> and <shutterflyproductions.com> covering “for photographic enlarging, electronic imaging, scanning, digitizing, alteration and/or retouching of photographic images, via a global computer network, digital imaging services via a global computer network; printing via a global computer network”.

Prior rights in the name SHUTTERFLY, however, is the not the determinative issue here. The Panel is satisfied that Respondent is engaged in providing photography services under the name SHUTTERFLY, and in particular in connections with at least two of the three Domain Names (<shutterflypro.com> and <shutterflyproductions.com>), so we need to determine if that use is bona fide or a deliberate infringement.

The evidence here indicates that Complainant provides online photo processing services. Respondent, in contrast, provides photography services. As stated by Complainant, “respondent specifically targets the wedding photography market”. Respondent claims to provide a full service photography studio to a select number of clients a year. A review of Respondent’s website indicates the company offers wedding packages ranging in price from $1,995 to $18,858.

The record presents the following evidence relevant to our decision:

- Complainant’s use and prior registration is limited to photo processing services provided to persons who take photographs.

- Respondent’s services are high priced photography services provided to person who want someone else to take photographs of their special events.

- Respondent established itself as a business in Texas in 2004.

- Respondent has provided photography services for at least four years under the SHUTTERFLY name.

- Respondent’s website appears to be a bona fide site dedicated to photography services without trading on any aspect of Complainant’s use or site.

- At least two of the three Domain Names, (<shutterflypro.com> and <shutterflyproductions.com>, are being used to resolve to Respondent’s website, and it is quite conceivable to the Panel that the third Domain Name <shutterflyseniors.com> could be used for a similar purpose. With respect to the latter Domain Name, it also appears that Respondent registered it at a time when he was known by the name SHUTTERFLY based on at least four years of business operations under that name. This fact also gives rise to the existence of a legitimate interest in the name.

We acknowledge that photography processing and photograph taking are sufficiently related to state a colorable case for trademark infringement. Garden variety trademark infringement, however, is not the issue under the Policy. Instead, we are concerned with abusive domain name registration or cybersquatting.

The record does not lead to that conclusion here. Where a domain name owner provides legitimate services under a domain name prior to an objection by Complainant, as seems to be the case here, a finding in Complainant’s favor would normally require that Complainant demonstrate that Respondent’s use was a deliberate infringement of Complainant’s rights. Here, the relevant evidence does not demonstrate a deliberate infringement. Accordingly, we find that Complainant has failed to meet its burden as to the second necessary element of its claim.

C. Registered and Used in Bad Faith

Similarly, the record does not show that Respondent registered or acquired the Domain Names for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant or a competitor; that Respondent engages in a pattern of conduct to prevent others from using registered marks as Domain Names; or that Respondent procured the Domain Names to disrupt the business of Complainant.

The question of bad faith here essentially turns on this question: is it more likely than not that Respondent registered the Domain Names for the purpose trading on Complainant’s mark. Here, it appears from the record that Respondent began using the name SHUTTERFLY for photography services because that name is aptly descriptive or suggestive of Respondent’s service as a photographer and not for the purpose of trading on Complainant’s mark for photo processing services. This conclusion applies to the Domain Names <shutterflypro.com> and <shutterflyproductions.com> which appear to be used in good faith for Respondent’s photography services.

With respect to the Domain Name <shutterflyseniors.com>, which has not been used and was apparently registered after this dispute arose, we are aware that passive holding in some circumstances has been found to be bad faith within the meaning of the Policy. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. That line of decisions does not seem applicable here where it appears more likely than not that Respondent began using SHUTTERFLY in good faith and proceeded to register Domain Names that are an apt selection for Respondent’s bona fide business. The selection of <shutterflyseniors.com> is an understandable expansion of Respondent’s business into the market for high school and college graduation photographs involving services offered on its website. Within the circumstances presented here, it appears more likely than not that the selection of that Domain Name was made in good faith. As a result, we are not persuaded that the passive holding of that Domain Name should be considered bad faith in violation of the Policy. Accordingly, we also conclude that Complainant has failed to meet its burden of proving bad faith registration and use that Domain Names.

Clearly, there is a significant disagreement between the parties as to who has rights to in the SHUTTERFLY mark; however, the purpose of UDRP procedure is not to adjudicate garden variety trademark disputes between parties, rather it “is designed for relatively straightforward cases of bad faith registrations (cybersquatting).” See, Ribbel International Limited v. Ribbel Medizinetechnik GmbH, WIPO Case No. D2005-1183. The Panel’s finding should not be read to prejudge or effect the reasoning or outcome of any future trademark dispute between the parties.

7. Decision

For the foregoing reasons, Complainant’s request for relief under the Policy is denied.

Mark V.B. Partridge
Sole Panelist

Dated: September 28, 2008