SPTC, Inc. and Sotheby's v. Private Whois for sothebys.org c/o Private Whois Escrow Domains Private Limited
Claim Number: FA0810001228526
Complainant is SPTC, Inc. and Sotheby's (collectively
“Complainant”), represented by Sujata Chaudhri, of Cowan, Liebowitz &
Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sothebys.org>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 10, 2008.
On October 10, 2008, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <sothebys.org> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 October 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 10, 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@sothebys.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2008 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sothebys.org> domain name is identical to Complainant’s SOTHEBYS mark.
2. Respondent does not have any rights or legitimate interests in the <sothebys.org> domain name.
3. Respondent registered and used the <sothebys.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants are engaged in the businesses of auctions and real estate sales. Complainants market their business under the SOTHEBYS mark, which Complainants registered with the United States Patent and Trademark Office (“USPTO”) on February 13, 2001 (Reg. No. 2,428,011). Complainant also registered the SOTHEBY’S mark with the USPTO on March 19, 1991 (Reg. No. 1,638,329). Complainants and their predecessors have been engaged in the auction business since 1744, using the SOTHEBY’S mark continuously in commerce for much of the intervening time.
Respondent registered the <sothebys.org> domain name on April 20, 2008. The disputed domain name resolves to a website that features links to third-party websites that compete 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 rights in
the SOTHEBYS mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Complainant contends that
Respondent’s <sothebys.org>
domain name is identical to its SOTHEBYS mark. The <sothebys.org> domain name differs from Complainant’s mark only in that the generic
top-level domain (gTLD) “.org” has been added to the mark. Under Policy ¶ 4(a)(i), the addition of a
gTLD is irrelevant when considering whether a domain name is identical to a
mark. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev.,
FA 204063 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <sothebys.org> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant).
Complainant contends that Respondent is not commonly known
by the <sothebys.org> domain
name nor has it ever been the owner or licensee of the SOTHEBYS mark. The WHOIS record for the disputed domain name
lists Respondent as “Private Whois for
sothebys.org c/o Private Whois Escrow Domains Private Limited.” Additionally, Respondent has failed to show
any evidence contrary to Complainant’s contentions. Because there is no evidence contrary to
Complainant’s contentions that Respondent is not known by any variant on the
SOTHEBYS mark, the Panel finds that Respondent is not commonly known by the <sothebys.org> domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum
Respondent is using the <sothebys.org> domain
name to host a website that features links to third-party websites that compete with Complainant’s
business. Complainant contends that Respondent receives
“click-through” fees from those third-party websites, and therefore
commercially benefits from the use of the disputed domain name. The Panel finds that this use by Respondent of
the <sothebys.org> domain name for
commercial benefit 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). See
Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site); see also Ameritrade
Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002)
(finding that the respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with the
complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The <sothebys.org>
domain name directs Internet customers to Respondent’s website that resolves
from the disputed domain name.
Complainant contends that this is an intentional diversion by
Respondent, who accomplishes it through the confusion caused by the similarity
of the SOTHEBYS mark and the <sothebys.org>
domain name. Complainant also
contends that Respondent is intentionally disrupting Complainant’s business by further
diverting confused customers to third-party websites that compete with
Complainant’s business. The Panel finds
that Respondent is disrupting Complainant’s business, and therefore did
register and use the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii). See
Disney Enters., Inc. v. Noel, FA 198805
(Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name
confusingly similar to Complainant's mark to divert Internet users to a
competitor's website. It is a reasonable inference that Respondent's purpose of
registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and]
(iv).”); see also EthnicGrocer.com,
Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding
bad faith where the respondent’s sites pass users through to the respondent’s
competing business).
Complainant also contends that Respondent is gaining
commercially from this diversion, through the click-through fees that
Respondent is receiving from the third-party websites. The Panel agrees, and finds that Respondent
is intentionally using the disputed domain name for commercial gain through creating
a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶
4(b)(iv), this use is also evidence of Respondent’s registration and use in bad
faith.
See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb.
Forum Jan. 8, 2003) (finding that the disputed domain name was registered and
used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s
registration and use of the infringing domain name to intentionally attempt to
attract Internet users to its fraudulent website by using the complainant’s
famous marks and likeness); 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 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 <sothebys.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 26, 2008
National
Arbitration Forum