SPTC,
Inc. and SPTC
Claim Number: FA1008001338654
Complainant is SPTC,
Inc. and SPTC Delaware LLC (“Complainant”),
represented by Sujata Chaudhri, of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Enhance Marketing / Virginia Hornaday (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <ftlauderalesothebys.net> and <sothebysluxury.net>, registered with Enom.
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 August 3, 2010.
On August 3, 2010, Enom confirmed by e-mail to the National Arbitration Forum that the <ftlauderalesothebys.net> and <sothebysluxury.net> domain names are registered with Enom and that Respondent is the current registrant of the names. Enom has verified that Respondent is bound by the Enom 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 August 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 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@ftlauderalesothebys.net and postmaster@sothebysluxury.net by e-mail. Also on August 4, 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 September 3, 2010, 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" 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ftlauderalesothebys.net> and <sothebysluxury.net> domain names are confusingly similar to Complainant’s SOTHEBY’S mark.
2. Respondent does not have any rights or legitimate interests in the <ftlauderalesothebys.net> and <sothebysluxury.net> domain names.
3. Respondent registered and used the <ftlauderalesothebys.net> and <sothebysluxury.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SPTC, Inc., is the parent
company of Complainant, SPTC,
Respondent, Enhance Marketing / Virginia Hornaday, registered the <ftlauderalesothebys.net> and <sothebysluxury.net> domain names on March 15, 2010. The disputed domain names resolve to websites that offer auction services or real estates services in competition with Complainant’s auction and real estate 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.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It
has been accepted that it is permissible for two complainants to submit a
single complaint if they can demonstrate a link between the two entities such
as a relationship involving a license, a partnership or an affiliation that
would establish the reason for the parties bringing the complaint as one
entity.
In
American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a
sufficient link between the complainants where there was a license between the
parties regarding use of the TOUGHLOVE mark.
But see AmeriSource
Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a
domain name that may belong to AmerisourceBergen Corporation (i.e., the subject
Domain Names) should belong to AmeriSource Corporation because they are
affiliated companies.”).
There are two Complainants in this matter: SPTC, Inc. and
SPTC Delaware LLC. Complainant, SPTC,
Inc., states it is the parent company of Complainant, SPTC,
Complainant asserts rights in its SOTHEBY’S mark through its
numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,638,329 issued March 19, 1991). Prior panels have consistently held that
registration of a mark with the USPTO sufficiently proves a complainant’s
rights in a mark. 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
Complainant claims the <ftlauderalesothebys.net> and <sothebysluxury.net>
domain names are confusingly similar to its SOTHEBY’S mark. Respondent first omits the apostrophe from
Complainant’s mark in the disputed domain names. Respondent then adds a misspelling of the
geographic term “
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
After Complainant establishes a prima facie case showing that Respondent lacks rights and legitimate interests in the <ftlauderalesothebys.net> and <sothebysluxury.net> domain names, the burden shifts to Respondent to demonstrate it has rights or legitimate interests. The Panel may infer that Respondent’s failure to submit a Response suggests that Respondent lacks rights and 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.”); 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.”). However, despite Respondent’s failure to submit a Response, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges it has not licensed or otherwise authorized Respondent to use its SOTHEBY’S mark in a domain name. In addition, the WHOIS information lists “Enhance Marketing / Virginia Hornaday” as the registrant of the disputed domain names, which the Panel finds is not similar to the <ftlauderalesothebys.net> domain name or the <sothebysluxury.net> domain name. Therefore, the Panel finds Complainant’s assertions in conjunction with the WHOIS information indicate that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).
Complainant alleges that Respondent’s disputed domain names
resolve to websites that offer auction services or real estates services in
competition with Complainant’s auction and real estate services. Screen shots of the website resolving from
the <sothebysluxury.net> domain name shows a site that provides links called “Antiques for
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s confusingly similar domain names divert Internet users seeking Complainant’s services to websites that provide links to Complainant’s competitors. Therefore, the Panel finds the <ftlauderalesothebys.net> and <sothebysluxury.net> domain names disrupt Complainant’s business, which qualifies as registration and use in bad faith under 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 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, Complainant claims Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with Complainant’s SOTHEBY’S mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website in order to profit from referral fees. As previously discussed, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark. Moreover, the Panel presumes Respondent uses the disputed domain names to receive commercial gain from click-through or pay-per-click fees. Therefore, the Panel concludes Respondent’s behavior constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
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 <ftlauderalesothebys.net> and <sothebysluxury.net> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 14, 2010
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