• IP Industry Summary: Typosquatter Uses Famous Mark to Direct Business to His Pornography Sites; Southern District of California Shuts Him Down
  • February 6, 2015
  • Law Firm: Kilpatrick Townsend Stockton LLP - Atlanta Office
  • Shutterstock, Inc. v. Pikulski, No. 14cv0869 WQH (NLS), 2014 WL 6612054 (S.D. Cal. Nov. 19, 2014)

    Shutterstock Inc. has received a default judgment against Norbert Pikulski in the Southern District of California, including an award of $23,500 in statutory damages, transfer of Pikulski’s infringing typosquatting domain names, and attorneys’ fees and costs in the amount of $14,392, for Pikulski’s infringement of Shutterstock’s trademarks through typosquatting domain names.

    Shutterstock is a well-known professional image and video provider. The company owns federally and internationally registered marks for SHUTTERSTOCK. It also owns several domain names using the word “shutterstock,” including shutterstock.com.

    In March 2014, Shutterstock learned of Pikulski’s registration of the domain name shutterstpck.com. Shutterstock contacted Pikulski on March 12, 2014, demanding that he transfer the shutterstpck.com domain to Shutterstock. Pikulski did not respond, but that same day, he registered shutterst0ck.com. Over the course of the next week, Pikulski also registered shutterst9ck.com, ehutterstock.com, sh7tterstock.com, and shjtterstock.com.

    Pursuant to the Uniform Domain Name Dispute Resolution Policy, Shutterstock filed a complaint on March 21, 2014, with the National Arbitration Forum regarding Pikulski’s registrations for shutterstpck.com and shutterst0ck.com. That same day, Pikulski responded with an explicit message for Shutterstock on his Twitter account. Pikulski then registered whutterstock.com and zhutterstock.com on March 23, 2014. Most of Pikulski’s typosquatting domain names redirect to pornographic websites that he owns. One of the domain names “displays a title for ‘Image Categories’ against a nude picture and references the ‘Stock images and networking platform SYMBIOSTOCK.’” This site originally redirected to one of Pikulski’s pornographic websites, as well.

    Shutterstock filed suit in the Southern District of California on April 11, 2014. Pikulski failed to answer or otherwise defend the suit. Shutterstock filed a request for entry of default in June 2014 and, after the request was granted, a motion for entry of default judgment in July 2014. The Court determined that Shutterstock was entitled to default judgment for all of the federal and state trademark infringement and state unfair competition claims alleged in its complaint.

    Shutterstock requested maximum statutory damages ($100,000 for each of Pikulski’s registered domain names), transfer of the infringing domain names, permanent injunctive relief, and attorneys’ fees and costs. The Court found that Shutterstock was not entitled to maximum statutory damages but was entitled to increased damages for infringing domain names registered later in the timeline of events. The Court awarded Shutterstock $1000 per domain name for the domain names registered prior to its first attempt to contact Pikulski; $2500 per domain name for domain names registered after Shutterstock’s first attempted contact and before initiation of the National Arbitration Forum action; and $5000 per domain name for domain names registered after the NAF action. The Court considered Pikulski’s status as a serial typosquatter—Pikulski owns 128 domain names, “many of which ‘appear to typosquat on other well-known trademarks’”—in determining the award. It also considered Pikulski’s Twitter post to Shutterstock as evidence of his bad faith intent.

    Further, the Court found that Shutterstock was entitled to all of its requested attorneys’ fees and costs and a transfer of all of the infringing domain names. Shutterstock was not entitled, however, to a permanent injunction because it had not established that it would suffer irreparable injury without entry of such an injunction. In light of Pikulski’s blatant disregard for Shutterstock’s rights and the court proceedings, this likely will not be the last Shutterstock hears of him.