SPTC, Inc. and Sotheby’s v. Andrea Di Gregorio
Claim Number: FA2007001904707
Complainant is SPTC, Inc. and Sotheby’s (“Complainant”), represented by Lyndsey Waddington of Cowan, Liebowitz & Latman, P.C., USA. Respondent is Andrea Di Gregorio (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sothebys.store>(‘the Domain Name’), registered with OVH sas.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 17, 2020; the Forum received payment on July 17, 2020.
On July 20, 2020, OVH sas confirmed by e-mail to the Forum that the <sothebys.store> domain name is registered with OVH sas and that Respondent is the current registrant of the name. OVH sas has verified that Respondent is bound by the OVH sas registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sothebys.store. Also on July 23, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions can be summarised as follows:
Complainant and predecessors and affiliated companies of the Complainant have been engaged in the auction business since 1744. SPTC Inc. is the owner of US registrations for the SOTHERBY’S mark for auction related goods and services with first use recorded as 1980. The Complainant owns considerable goodwill in the mark which is well known. Complainant owns <sotherbys.com>.
The Domain Name, registered in 2020, is confusingly similar to the Complainant’s trade mark, omitting only the apostrophe and adding the gTLD ".store", none of which prevent such confusing similarity.
Respondent has no rights or legitimate interests relating to the Domain Name, is not commonly known by it and has not been authorised by the Complainant. The Domain Name currently redirects Internet users to a website located at https://digregorio.store/index.php that is associated with an art gallery called Di Gregorio and offers artworks and collectibles, including paintings, sketches, photographs, coins and stamps, vintage toys, books, and figurines, which are for sale online and by means of the gallery located in Rome, Italy. The text of the website is automatically displayed in Italian, although users are able to translate the content into English. The website purportedly sells items at auction and presumably enables users to submit bids on, and purchase, the products through the website, although it does not currently identify any auction listings for any items. Clearly, the website offers services intended to compete with Complainant’s business which is not a bona fide offering of goods or services or a noncommercial legitimate or fair use. This is registration and use in bad faith attracting Internet users to the Respondent’s web site for commercial gain disrupting the Complainants’ business. Respondent is intentionally passing off the Respondent’s web site as connected to the Complainant with knowledge of the Complainant’s rights and business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant and predecessors and affiliated companies of the Complainant have been engaged in the auction business since 1744. SPTC Inc. is the owner of US registrations for the SOTHERBY’S mark for auction related goods and services with first use recorded as 1980. The Complainant owns considerable goodwill in the mark which is well known. Complainant owns <sotherbys.com>.
The Domain Name registered in 2020 has been used for competing services not connected with the Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Issue: Language of the Proceedings
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Italian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Identical or Confusingly Similar
The Domain Name consists of the Complainant's SOTHEBY’S mark (which is registered, inter alia in USA for services relating to auction services and has been used since 1744) with the omission only of an apostrophe and the addition of the gTLD ".store".
The omission of an apostrophe from a trade mark will not prevent confusing similarity between the Domain Name and the Complainant’s mark. See Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”).
The gTLD .store does not serve to distinguish the Domain Name from the SOTHERBY’S mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
The Panel agrees that the omission of an apostrophe and the addition of the gTLD ".store" to the Complainant’s mark does not distinguish the Domain Name from the Complainant’s trade mark pursuant to the Policy.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Using a Domain Name for competing services not connected with the Complainants is commercial and so cannot be noncommercial legitimate fair use and is not a bona fide offering of goods or services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers auction services under a Domain Name containing a sign confusingly similar to the Complainant’s mark. The use of the Complainant's well known and distinctive word mark in relation to auction services makes it more likely than not that Respondent was aware of the Complainant and its business at the time of registration.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the web site or services on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothebys.store> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 17, 2020
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