SPTC,
Inc. and SPTC
Claim Number: FA0901001243950
Complainant is SPTC,
Inc. and SPTC
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <esotby.com>, registered with Fastdomain Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 26, 2009.
On January 28, 2009, Fastdomain Inc. confirmed by e-mail to the National Arbitration Forum that the <esotby.com> domain name is registered with Fastdomain Inc. and that Respondent is the current registrant of the name. Fastdomain Inc. has verified that Respondent is bound by the Fastdomain 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 February 9, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of March 2, 2009
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@esotby.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <esotby.com> domain name is confusingly similar to Complainant’s SOTHEBY’S mark.
2. Respondent does not have any rights or legitimate interests in the <esotby.com> domain name.
3. Respondent registered and used the <esotby.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SPTC, Inc. and Sotheby’s (collectively “Complainant”), have operated in the auction industry since 1744, and have developed a reputation as a premier auction house for the sale of jewelry, fine art, and other collectibles. Complainant has registered its SOTHEBY’S mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,638,329 issued March 19, 1991), as well as numerous other governmental trademark authorities worldwide.
Respondent registered the disputed <esotby.com> domain name on February 24, 2008. The disputed domain name resolves to a website that directly competes with Complainant’s auction services.
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’s registration of the
SOTHEBY’S mark with the USPTO adequately demonstrates Complainant’s rights in
the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075
(Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered
with the USPTO, [the] complainant has met the requirements of Policy ¶
4(a)(i).”); see also
Respondent’s <esotby.com> domain name contains a variation of Complainant’s SOTHEBY’S mark by removing the “h” and “’s” elements, and moving the “e” to the beginning. Moreover, the generic top-level domain (“gTLD”) “.com” has been added. The Panel finds that the addition of a gTLD is not relevant in a Policy ¶ 4(a)(i) analysis. Moreover, the Panel finds that this variation of Complainant’s mark, being the sole element of the domain name, retains much of the nature of Complainant’s original mark. The “sotby” element appears to be a viable abbreviation of Complainant’s mark, and retains much of the phonetical equivalence. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”); see also LOreal 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 VeriSign, Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name <venesign.com> and the complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of the consumer).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also 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 Policy ¶ 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 Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
The Panel notes that the WHOIS information lists Respondent
as “HostMonster.com, POWERFUL WEB HOSTING - 1500 GB Disc - 15,000 GB Transfer
c/o HostMonster.com INC.” Moreover,
Complainant argues that Respondent is not permitted or authorized to use
Complainant’s mark. Complainant asserts,
and the Panel so finds, that Respondent is not nor has ever been commonly known
by the disputed domain names under Policy ¶ 4(c)(ii). See
Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because the respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see
also Ian Schrager Hotels,
L.L.C. v. Taylor, FA 173369 (Nat. Arb.
Forum Sept. 25, 2003) (finding that without demonstrable evidence to support
the assertion that a respondent is commonly known by a domain name, the
assertion must be rejected).
Respondent’s disputed domain name
resolves to a commercial website that directly competes with Complainant’s
auction services. Therefore, the Panel
finds that Respondent has failed to create 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 Hale Prods., Inc. v. Hart
Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003) (finding that
Respondent lacked rights and legitimate interests in the <jawsoflife.com>
domain name where it was being used to divert Internet users to the website for
Phoenix Rescue Tools, one of Complainant’s direct competitors); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”).
Complainant has asserted that Respondent engaged in
typosquatting by registering the instant disputed domain name. Typosquatting occurs when a domain name is
registered with the intent of diverting Internet users by way of common typing
errors to a different website. Here,
Respondent misspelled various aspects of Complainant’s mark. The Panel therefore finds that Respondent’s
use of typosquatting is itself evidence that Respondent lacks rights and
legitimate interests pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292 (Nat.
Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and
legitimate interests in the disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14,
2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>,
and <ltdcommodaties.com> domain names were intentional misspellings
of the complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence
that Respondent lacks rights or legitimate interests in the disputed domain
names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The resolving website for the disputed domain name competes with Complainant’s services. The disruptive nature of this activity with regards to Complainant’s business is clear, and therefore the Panel finds that Respondent has engaged in Policy ¶ 4(b)(iii) bad faith registration and use of the disputed domain name. See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding bad faith where the respondent has connections with a competitor of the complainant’s digital security business and the respondent indicated that she intended to enter the same business).
The Panel finds that Respondent has created a likelihood of
confusion as to Complainant’s source of, or affiliation with, the disputed
domain name and resolving website. The
Panel infers Respondent primarily intended to garner commercial benefit by
diverting Internet users to its competing business. Thus, Respondent has engaged in bad faith
registration and use under Policy ¶ 4(b)(iv).
See GMAC LLC v. WhoisGuard
Protected, FA 942715 (Nat. Arb.
Forum May 9, 2007) (“Under Paragraph 4(b) of the Policy, evidence that a domain
name registrant has intentionally attempted to attract, for commercial gain,
Internet users to the registrant’s website by creating a likelihood of
confusion with the complainant’s mark serves as evidence of bad faith.”); see also Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website that offered similar
products as those sold under the complainant’s famous mark).
The Panel finds that Respondent’s engagement in
typosquatting constitutes evidence of bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini,
FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration
and use of [the <zonelarm.com> domain name] that capitalizes on the
typographical error of an Internet user is considered typosquatting.
Typosquatting, itself is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).”); see also K.R. USA, INC. v. SO SO
DOMAINS, FA 180624 (Nat. Arb. Forum Sept.
18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names capitalized on the
typographical error of Internet users seeking the complainant's THE
PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting
and bad faith pursuant to Policy ¶ 4(a)(iii)).
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 <esotby.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Date: March 19, 2009
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