Sotheby's v. IMMAT Ltd.
Claim Number: FA1007001335246
Complainant is Sotheby's
(“Complainant”), represented by Sujata
Chaudhri, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sothebyslondon.com>, registered with Tucows, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2010.
On July 14, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <sothebyslondon.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 July 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sothebyslondon.com. Also on July 23, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" through submission of a Written Notice, as defined in Rule 1. 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 <sothebyslondon.com> domain name is confusingly similar to Complainant’s SOTHEBY’S mark.
2. Respondent does not have any rights or legitimate interests in the <sothebyslondon.com> domain name.
3. Respondent registered and used the <sothebyslondon.com> domain name in bad faith.
B. Respondent failed to timely submit a Response in this proceeding. A letter claiming to be a Response was received from Respondent beyond the applicable deadline which did not set up any defenses to the Complaint and it was not considered by the Panel.
Complainant, Sotheby's, has been engaged in the auction business since 1744. Complainant is also in the business of selling real estate properties. Complainant uses the SOTHEBY’S mark in connection with both its auction and real estate businesses. Complainant holds numerous trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) for its SOTHEBY’S mark (e.g., Reg. No. 1,280,414 issued October 27, 1989). Complainant also owns the <sothebys.com> domain name.
Respondent, IMMAT Ltd., registered the <sothebyslondon.com> domain name on March 11, 2010. The disputed domain name currently resolves to a parked website that features links to third-party websites, including links to sites that offer real estate services that compete with Complainant’s business. The resolving website also displays a message saying the disputed domain name is for sale.
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 asserts rights in the SOTHEBY’S mark through its numerous registrations of the mark with the UKIPO (e.g., Reg. No. 1,280,414 issued October 27, 1989). Prior panels have held trademark registrations with the UKIPO sufficiently prove a complainant’s rights in a mark. See The Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”); see also The Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant’s trademark registrations with the UKIPO sufficiently establish its rights in the SOTHEBY’S mark pursuant to Policy ¶ 4(a)(i).
Complainant argues Respondent’s <sothebyslondon.com>
domain name is confusingly similar to its SOTHEBY’S mark. First, Respondent omits the apostrophe from
Complainant’s mark in the disputed domain name.
Respondent then adds the geographically descriptive term “
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant
must first show Respondent lacks rights and legitimate interests in the <sothebyslondon.com>
domain name. After
Complainant makes this prima facie case,
the burden shifts to Respondent to demonstrate that it has rights or legitimate
interests. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan.
4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its
allegations, the burden shifts to respondent to show that it does have rights
or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel may infer Respondent does not have
rights and legitimate interests in the disputed domain name based on
Respondent’s failure to submit a Response.
See 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.”). However, despite Respondent’s failure to
respond, the Panel will evaluate the record to determine whether Respondent has
rights or legitimate interests pursuant to Policy ¶ 4(c).
The WHOIS information lists “IMMAT Ltd.” as the registrant of the <sothebyslondon.com> domain name. Furthermore, Complainant alleges Respondent is not its licensee nor has it ever authorized Respondent to use its mark in a domain name. Based on the WHOIS information and Complainant’s assertions, the Panel finds Respondent is not commonly known by the disputed domain name under 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 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).
Complainant claims Respondent’s disputed domain name resolves to a parked website that features hyperlinks to third-party sites, some of which directly compete with Complainant’s business. Complainant submits screen shots of Respondent’s resolving website. These images show links with titles like “Camden Real Estate Sales” and “Sothebys Real Estate.” Complainant also alleges Respondent profits from its use of the disputed domain name through the receipt of click-through fees. The Panel agrees. Therefore, the Panel finds Respondent’s use of a confusingly similar domain name to profit from click-through fees does not qualify as 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)).
Complainant further claims Respondent’s resolving website displays a general offer to sell the disputed domain name. A screen shot of the website shows the message “BUY THIS DOMAIN. The domain sothebyslondon.com may be for sale by its owner!” The Panel finds Respondent’s offer to sell the <sothebyslondon.com> domain name provides further evidence that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has offered to sell the disputed domain name on the website resolving from the domain name. The Panel presumes Respondent intends to sell the disputed domain name for more than out-of-pocket costs. Consequently, the Panel finds Respondent’s attempt to sell the disputed domain name constitutes registration and use in bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
In addition, the Panel finds Respondent uses a confusingly similar domain name to redirect Internet users seeking Complainant’s services to its website. Moreover, Respondent’s resolving website provides hyperlinks to third-party websites that provide real estate services that compete with Complainant’s business. Therefore, the Panel finds Respondent’s <sothebyslondon.com> domain name disrupts Complainant’s business, which is evidence of registration and use 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).
Finally, Respondent uses a confusingly similar domain name to profit from click-through revenue. The Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s SOTHEBY’S mark. Therefore, the Panel finds this additional evidence of Respondent’s registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothebyslondon.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 19, 2010
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