Sotheby's v. R Silver
Claim Number: FA0804001177822
Complainant is Sotheby's (“Complainant”), represented by Sujata
Chaudhri, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <sothebysrealestate.info> and <sothebys-real-estate.info>, registered with Wild West Domains.
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 April 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 16, 2008.
On April 14, 2008, Wild West Domains confirmed by e-mail to the National Arbitration Forum that the <sothebysrealestate.info> and <sothebys-real-estate.info> domain names are registered with Wild West Domains and that Respondent is the current registrant of the names. Wild West Domains has verified that Respondent is bound by the Wild West Domains 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 April
16, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of May
6, 2008
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@sothebysrealestate.info and postmaster@sothebys-real-estate.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 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 <sothebysrealestate.info> and <sothebys-real-estate.info> domain names are confusingly similar to Complainant’s SOTHEBY’S mark.
2. Respondent does not have any rights or legitimate interests in the <sothebysrealestate.info> and <sothebys-real-estate.info> domain names.
3. Respondent registered and used the <sothebysrealestate.info> and <sothebys-real-estate.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sotheby's, is in
the business of being an auction house for the sale of jewelry, fine art and
other collectibles since 1744 as well as selling a distinct style of real
estate properties for over 25 years.
Complainant registered the SOTHEBY’S mark with
Respondent, R Silver, registered both of the <sothebysrealestate.info> and <sothebys-real-estate.info> domain names on January 30, 2008. The disputed domain names resolve to websites displaying Complainant’s SOTHEBY’S mark without the apostrophe and hyperlinks for services in direct competition with 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."
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.
The Panel finds that Complainant has established sufficient
rights in its SOTHEBY’S mark based on its registration with the Department of
Intellectual Property in
Respondent’s <sothebysrealestate.info> and <sothebys-real-estate.info>
domain names incorporate Complainant’s entire SOTHEBY’S mark without the
apostrophe with the addition of the generic phrase “real estate,” which is
obviously related to Complainant’s business of real estate services. The additions of hyphens and a generic
“.info” domain are irrelevant when evaluating if a disputed domain name is
confusingly similar to a mark.
Therefore, the Panel finds that Respondent’s <sothebysrealestate.info> and <sothebys-real-estate.info>
domain names are confusingly similar to Complainant’s SOTHEBY’S mark under
Policy ¶ 4(a)(i).
See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6,
2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered
mark is sufficient to establish identity [sic] or confusing similarity for
purposes of the Policy despite the addition of other words to such marks”); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat.
Arb. 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.”); see also Health Devices Corp.
v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Initially, Complainant must make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden of proof shifts to Respondent to establish that it has rights and legitimate interests in the disputed domain names. Respondent’s failure to respond furthers the presumption that it lacks rights and legitimate interests in the <sothebysrealestate.info> and <sothebys-real-estate.info> domain names. The Panel finds that Complainant has established a prima facie case, but chooses to further evaluate Respondent’s rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Respondent is using the <sothebysrealestate.info> and <sothebys-real-estate.info>
domain names, to display hyperlinks advertising third-party websites, some of
which are in direct competition with Complainant. The Panel infers that Respondent is using the
disputed domain names to earn click-through fees, and thus finds that
Respondent has not made 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 Wells Fargo & Co. v. Lin
Shun Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party
websites is neither a bona fide offering of goods or services under
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii) because the registrant presumably receives compensation for each
misdirected Internet user); see
also Coryn
Group, Inc. v. Media Insight, FA
198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <sothebysrealestate.info> and <sothebys-real-estate.info> domain names and there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain names. Moreover, Complainant asserts that Respondent is not licensed or authorized to use Complainant’s SOTHEBY’S mark and that Respondent is not affiliated with Complainant in any way. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) the panel found that the respondent did not have rights in a domain name when the respondent was not known by the mark. See also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s registration and use of the <sothebysrealestate.info> and <sothebys-real-estate.info> domain names to display links to Complainant’s competitors on the resolving website constitutes a disruption of Complainant’s business and qualifies as bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Moreover, based on the uncontested evidence presented by
Complainant, the Panel finds that Respondent receives click-through fees for
the hyperlinks displayed on the websites that resolve from the <sothebysrealestate.info> and <sothebys-real-estate.info>
domain names. The Panel also finds that
Respondent’s disputed domain names are capable of creating a likelihood of
confusion as to Complainant’s sponsorship and affiliation with the disputed
domain names and corresponding websites due to Respondent displaying
Complainant’s SOTHEBY’S mark without the apostrophe on the website. Such commercial benefit constitutes bad faith
registration and use under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see
also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat.
Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothebysrealestate.info> and <sothebys-real-estate.info> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 19, 2008
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