WIPO issued a UDRP decision confirming that the unauthorised use of a registered trade mark on a website or in a domain name can substantiate an allegation of bad faith in a domain name action. Shutterstock Inc., the owner of several registrations for the SHUTTERSTOCK mark, filed a UDRP complaint against the owner of the Iranian domain name shutterstock.ir. The contested domain name routed to a website that displayed a version of the SHUTTERSTOCK mark and several images that were similar to those used on Shutterstock’s own website. Shutterstock contended, among other claims, that the domain owner had adopted the shutterstock.ir domain name in bad faith, having had full prior knowledge of Shutterstock’s commercial online presence. The WIPO Arbitration Panel agreed with Shutterstock Inc. and held that infringing website content can amount to evidence of both bad faith registration and bad faith use of a domain name. In particular, the following unauthorised acts were highlighted as relevant evidence: use of a domain name consisting of a registered trade mark to promote and commercialise products that are similar to those of the trade mark owner; the deliberate adoption of a domain name containing a registered mark for the purpose of creating confusion and attracting online users to a website for commercial gain; and web content bearing the registered mark, including as a watermark. The Panel ruled in the complainant’s favour and ordered transfer of the shutterstock.ir domain name to Shutterstock Inc. (wipo.int; Case no. DIR2014-0004, 17 October 2014)
