SPTC, Inc. and SPTC Delaware, LLC c/o Sotheby's Holdings, Inc. v. The Allgood Company
Claim Number: FA0810001231251
PARTIES
Complainant is SPTC, Inc. and SPTC Delaware, LLC c/o Sotheby's Holdings, Inc. (“Complainant”), represented by Sujata Chaudhri, of Cowan, Liebowitz & Latman, P.C., New York, United States. Respondent is The Allgood Company (“Respondent”), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sothebyshome.com>, registered with Network Solutions, Inc.
PANEL
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.
Hon. Nelson A.
Diaz as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 28, 2008.
On October 28, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <sothebyshome.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 24, 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@sothebyshome.com by e-mail.
A timely Response was received and determined to be complete on November 21, 2008.
On November 24, 2008, the National Arbitration Forum received a timely Additional Submission from Complainant in compliance with the FORUM’s Supplemental Rule 7.
On
December 1, 2008, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Nelson A. Diaz as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
SPTC, Inc. alleges that predecessors, through their affiliated companies and
licensees, have been engaged in the auction business since 1744 and have
developed a reputation as a premier auction house for the sale of fine art and
other collectibles. SPTC, Inc.’s
affiliates and licensees have a presence in numerous countries around the
world, including the United States.
SPTC, Inc. and its affiliated companies own trademark and service mark
registrations and applications of the SOTHEBY’S mark in over 50 countries
around the world, including the United States, Canada and in the European
Union. The earliest U.S. registration of
SOTHEBY’S issued on March 19, 1991 and became incontestable in 1997. SPTC, Inc. also owns an incontestable
registration of the SOTHEBY’S mark (without apostrophe). SPTC, Inc. and its predecessors, through
their affiliates and licensees, have extensively advertised and promoted their
goods and services all over the world.
As a result of long and continuous use of the SOTHEBY’S mark, and
substantial investment of time, money and effort in advertising and promoting
auction services, the SOTHEBY’S mark has developed substantial public
recognition and incalculable goodwill.
Indeed, the SOTHEBY’S mark is a world-famous mark. For many years, SPTC, Inc., through its
parent company, Sotheby’s, has operated an internet website located at <sothebys.com>. The domain name <sothebys.com> was registered in 1994 and is well-known to
customers, the trade and other segments of the public. The SOTHEBY’S mark appears prominently on
this website. Complainant, SPTC
Delaware, LLC, is a subsidiary of SPTC, Inc.
SPTC Delaware, LLC and its predecessors, through their affiliates and
licensees, have been engaged in the business of selling fine real estate
properties in a range of locations, prices and distinctive styles for more than
25 years. These services are provided
around the world, including in the United States. SPTC, Delaware, Inc. and its affiliate
companies own service mark registrations and applications of the SOTHEBY’S
INTERNATIONAL REALTY mark in over 50 countries around the world, including the
United States, Canada and in the European Union. The United States registration of SOTHEBY’S
INTERNATIONAL REALTY issued on August 16, 1983 and became incontestable in 1989. SOTHEBY’S is the most distinctive part of the
SOTHEBY’S INTERNATIONAL REALTY mark. Copies
of registration certificates of the U.S., Canadian and Community Trademark
registrations of SOTHEBY'S INTERNATIONAL REALTY were provided by Complainant. SPTC Delaware, LLC and its
predecessors, through their affiliates and licensees have extensively
advertised and promoted their real estate services all over the world. As a result of long and continuous use of the
SOTHEBY’S INTERNATIONAL REALTY MARK, and substantial investment of time, money
and effort in advertising and promoting real estate services, the SOTHEBY’S
INTERNATIONAL REALTY mark has developed substantial public recognition and
incalculable goodwill. Indeed, the
SOTHEBY’S INTERNATIONAL REALTY mark is a world-ramous mark. SPTC, Delaware LLC, through its affiliate,
has operated an internet website located at <sothebysrealty.com> and <sothebysinternationalrealty.com>. These domain names were first registered in
1997 and 1999, respectively.
B. Respondent
Respondent held this domain for the past six to seven years, but have to date never attempted to implement any web site or other business associated with the domain. Respondent first became aware that a series of ads appear when the domain is typed into a browser window when he was alerted to such fact by Complainant. He has no knowledge of whether those ads are placed by Network Solutions or someone else, but he never authorized use of the domain in that way. Respondent received no revenues nor other benefits from the placement of such ads nor has he ever sought to sell the domain name to Sotheby’s or anyone else, nor sought compensation of any kind for use of the domain name.
Respondent has a long term business concept that relates to the use of the <sothebyshome.com> domain name, which he has not yet undertaken, and has no immediate plans to do so. However, it bears no relationship to Sotheby’s or Sotheby’s Real Estate. Particularly since he never used the domain name to implement any business strategy with respect to the domain, it is difficult to see the validity of the claim of confusion or harm to Sotheby’s real estate business. It is simply without merit.
Sotheby’s is best known as an auction company, and continues to operate under such name. And, in fact, Complainant purchased the Sotheby’s real estate business for $100mm in 2004, and presumably secured rights to use the name Sotheby’s Realty in the process. Complainant is also the owner of other real estate brokerage businesses. <sothebyshome.com> is not reasonably confused with real estate activities, as it connotes services, activities and products for the home—not real estate services. Nor is it reasonably confused with the auction activities of Sotheby’s Holdings.
Respondent has to date NEVER made use of the <sothebyshome.com> domain name, so there is absolutely no basis for a claim of intent to use for commercial gain or to mislead consumers or to tarnish any trademark. Respondent has interests in a home services business and has long term plans to potentially use the <sothebyshome.com> domain in association with that business. Respondent derives no current revenue from the domain, and has never granted anyone else permission to derive revenue from use of the name. Respondent has never sought to sell the domain name, nor has it ever been approached about selling same, and has no desire to do so.
C. Additional Submissions
Respondent's contention that the disputed domain name <sothebyshome.com> is not "reasonably confused with real estate activities, as it connotes services, activities and products for the home - not real estate services" is irrelevant, as is Respondent's contention that <sothebyshome.com> is not “reasonably confused with the auction activities of Sotheby’s Holdings.” As discussed in the Complaint, the Panel should hold that the disputed domain name <sothebyshome.com> is confusingly similar to Complainants’ Marks (as defined in the Complaint) because the disputed domain name incorporates the SOTHEBYS/SOTHEBY’S mark in which Complainants’ have sole exclusive rights.
Likewise, Respondent’s statements about Complainants’ purchase of the “Sotheby’s real estate business for $100mm in 2004” and “presumably” securing rights to use “the name Sotheby’s Realty in the process” are irrelevant for the purpose of determining whether the domain name <sothebyshome.com> is confusingly similar to Complainants’ Marks. What matters is that Complainants' rights in the SOTHEBY'S Marks predate Respondent's registration of the domain name. The Complaint adequately demonstrates Complainants' prior rights.
FINDINGS
Respondent
had violated ICANN Policy ¶ 4(a)(i) “confusing similarity,” and Policy ¶ 4(a)(ii) “no
rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration
and use.”
DISCUSSION
Paragraph
15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
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 sufficiently established rights in the SOTHEBY’S mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,638,329 issued March 19, 1991). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
The <sothebyshome.com> domain name contains Complainant’s SOTHEBY’S mark omitting the apostrophe. Additionally, it includes the descriptive term “home” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the omission of an apostrophe and addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. Moreover, the Panel concludes that the incorporation of a descriptive term such as “home” does not adequately distinguish the disputed domain name. The term “home” corresponds to Complainant’s real estate appraisal, restoration, auction and other services. For all of the aforementioned reasons, the Panel finds that the <sothebyshome.com> domain name is confusingly similar to Complainant’s SOTHEBY’S mark pursuant to Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation … as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also L’Oreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is identified in the WHOIS information for the disputed domain name as “The Allgood Company,” and Complainant asserts that Respondent has not been granted a license or given permission to use the SOTHEBY’S mark in any way. Furthermore, Respondent does not address this issue in its Response. As a result, the Panel finds that Respondent is not commonly known by the <sothebyshome.com> domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant contends that the disputed domain name resolves to a website displaying links to and advertisements for various third-parties, many of whom offer services and products that compete with those marketed under the SOTHEBY’S mark. Accordingly, the Panel finds this use to constitute neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Moreover, Respondent argues that it is not responsible for the current use of the disputed domain name, because it was “not aware” or has otherwise authorized the posting of these links to the website that resolves from the disputed domain name. However, the Panel chooses to ignore this line of argument, because numerous previous panels have held that the owner of a domain name remains ultimately responsible for whatever use is made of their domain name. See Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”); see also StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”).
And finally, Respondent contends
that it has made no use of the disputed domain name. Complainant argues in its
Additional Submission that, even if the Panel were to find that Respondent’s
asserted lack of authorization of the current infringing use of the disputed
domain name exculpates Respondent, Respondent has then conceded that it has
made no active use of the disputed domain name since its registration of the
disputed domain name on May 20, 1999. Respondent additionally states that it
has made no business plans to utilize the disputed domain name. The Panel finds
that this inactive use of the disputed domain name demonstrates that Respondent
lacks rights and legitimate interests in the <sothebyshome.com> domain name pursuant to Policy ¶ 4(a)(ii). See Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that the respondent made preparations
to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the
domain name dispute, the domain name did not resolve to a website, and the
respondent is not commonly known by the domain name); see also TMP Int’l, Inc. v.
Baker Enters., FA 204112 (Nat. Arb. Forum
Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [inactive use] of the
domain name does not establish rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii).”).
The disputed domain name resolves to a website featuring various links and advertisements. Each redirects an Internet user to a third-party, many of whom are direct competitors of Complainant. The Panel finds that these circumstances suffice to establish that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel also finds that
Respondent has attempted to create a likelihood of confusion for its own
commercial gain by using Complainant’s alleged SOTHEBY’S mark in the disputed
domain name. In its Additional
Submission, Complainant argues that even if Complainant is not commercially
gaining, there are still sufficient grounds for a finding of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv),
and the Panel makes such a finding. See 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 Respondent 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.”); see also Vance
Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and
use pursuant to Policy ¶ 4(b)(iv), regardless of the fact that the respondent
was not earning click-through fees, because “[a]lthough the websites accessed
via the Disputed Domains may be operated by domain parking service providers,
that activity is legally and practically attributable back to Respondent …
[t]he key fact here is that Respondent, in collaboration with the domain parking
service providers, is exploiting Complainant's goodwill.”).
However, Respondent argues that it
is not responsible for the links because it has not itself or otherwise
authorized any one else to post links or in any way use the disputed domain
name. It claims it had no idea of the infringing content of the <sothebyshome.com>
domain name until it
received the Complaint. Previous panels have frequently considered this use of
a disputed domain name to amount to a parked status, where a third-party, often
the registrar or some parking service, provides links and advertisements on the
website. Regardless of the service or who posted the material, most panels
consider the respondent-owner of the disputed domain name to be responsible for
whatever content is posted to its website. As a result, the Panel finds that
this parked status does not alleviate Respondent of its responsibility or
liability under the Policy. Therefore, the Panel concludes that Respondent’s
arguments do not negate a finding of bad faith. See Cengage Learning Inc. v. Myers, FA
1116919 (Nat. Arb. Forum, Jan. 15, 2008) (finding bad faith registration
and use where the respondent parked the disputed domain name with the registrar
because “the view of the panel is that, in the absence of evidence to the
contrary in any particular case, of which there is none in the present case, a
party in the position of the Respondent is also responsible for the sponsored
links currently appearing on the website.”); see also Express Scripts, Inc. v Windgather Invs. Ltd.,
D2007-0267 (WIPO Apr. 26, 2007) (“The Respondent
contends that the advertisements in this case were ‘generated by the parking
company’. The implication is that the Respondent was not responsible for the
content of these advertisements. This may well be correct but in the panel’s
view this makes no difference. The Respondent placed the Domain Name with a
parking company in circumstances where it would have been aware that those
using the Domain Name were likely to have mistyped the complainant’s name.”).
And finally, Respondent claims that it has never made any use of the disputed domain name and has no business plan to do so, nor has Respondent made any active use of the disputed domain name. Complainant argues in its Additional Submission that these are further grounds upon which the Panel may find that Respondent registered and is using the <sothebyshome.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothebyshome.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz (ret.), Panelist
Dated: December 17, 2008
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