SPTC, Inc, and Sotheby's v. Juliana
Claim Number: FA0706001000082
Complainant is SPTC, Inc. and Sotheby's (collectively “Complainant”), represented by Sujata
Chaudhri, of Cowan, Liebowitz & Latman, P.C., 1133
Avenue of the Americas, New York, NY 10036-6799. Respondent is Juliana (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <sothebyskorea.com> and <sothebykorea.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 11, 2007.
On June 7, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <sothebyskorea.com> and <sothebykorea.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 3, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sothebyskorea.com and postmaster@sothebykorea.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 9, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sothebyskorea.com> and <sothebykorea.com> domain names are confusingly similar to Complainant’s SOTHEBYS mark.
2. Respondent does not have any rights or legitimate interests in the <sothebyskorea.com> and <sothebykorea.com> domain names.
3. Respondent registered and used the <sothebyskorea.com> and <sothebykorea.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
SPTC, Inc. and Sotheby’s (collectively “Complainant”) are
wholly-owned and under common control of the same parent company: Sotheby’s, a
Respondent, Juliana, registered the <sothebyskorea.com> and <sothebykorea.com> domain names on March 31, 2007. Respondent is using the disputed domain names to display a list of hyperlinks, some of which lead to the websites of Complainant’s competitors.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant successfully registered the SOTHEBYS mark with the USPTO on February 13, 2001. Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark. Therefore, the Panel finds that Complainant has established rights in the SOTHEBYS mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).
The Panel concludes that Respondent’s <sothebyskorea.com> and <sothebykorea.com>
domain names are confusingly similar to Complainant’s SOTHEBYS mark pursuant to
Policy ¶ 4(a)(i).
The <sothebyskorea.com> domain name contains
Complainant’s mark in its entirety, which is the dominant portion of the domain
name. The <sothebykorea.com> domain name
removes the “s” from the SOTHEBYS mark, but this slight alteration does not
change the overall impression of the mark under an analysis of Policy ¶ 4(a)(i). See Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the
letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change
the overall impression of the mark and thus made the disputed domain name
confusingly similar to it). Furthermore,
the addition of the geographic indicator “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <sothebyskorea.com> and <sothebykorea.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent does not engage in
business or commerce under the <sothebyskorea.com> and <sothebykorea.com>
domain names, and is not commonly known by the domain names. Complainant noted that WHOIS information
identifies Respondent as “Juliana,” and Complainant has asserted that
Respondent is not licensed or authorized to register or use the disputed domain
names. The Panel can find no other
evidence in the record indicating that Respondent is commonly known by the
disputed domain names. Therefore, the
Panel concludes that Respondent is not commonly known by the <sothebyskorea.com> and <sothebykorea.com>
domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum
July 7, 2006) (concluding that the respondent was not commonly known by the
disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
Respondent is using the <sothebyskorea.com> and <sothebykorea.com>
domain names to display a list of hyperlinks, some of which lead to the
websites of Complainant’s competitors. Respondent
is using Complainant’s mark in the disputed domain names, without
authorization, for Respondent’s own benefit, and such use does not constitute a
bona fide offering of goods or
services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary
use of the complainant’s marks to send Internet users to a website which
displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services); see also Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet
users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <sothebyskorea.com> and <sothebykorea.com>
domain names display a list of hyperlinks, some of which lead to the websites
of Complainant’s competitors. In
Customers may also become confused as to the affiliation, endorsement, or sponsorship of the auction services advertised on Respondent’s website, which resolves from the disputed domain names that are confusingly similar to Complainant’s SOTHEBYS mark. Complainant has alleged that Respondent presumably receives click-through fees for each misdirected Internet user, and is therefore attempting to profit from this likelihood of confusion. Respondent is attempting to use Complainant’s SOTHEBYS mark in the disputed domain names for its own personal gain. Therefore, the Panel concludes that Respondent registered and is using the <sothebyskorea.com> and <sothebykorea.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothebyskorea.com> and <sothebykorea.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 17, 2007
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