SPTC, Inc and SPTC Delaware, LLC v. Sanson Enterprises S.A.C
Claim Number: FA1010001350930
Complainant is SPTC, Inc and SPTC Delaware, LLC (“Complainant”), represented by Sujata Chaudhri, of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Sanson Enterprises S.A.C (“Respondent”), Peru.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sothebysperu.com>, <perusothebys.com>, <perusothebysrealty.com>, <sothebysinternacional.com>, <sothebysrealtyperu.com>, <sothebysinternacionalperu.com> and <sothebysinternationalperu.com>, registered with Godaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2010.
On October 7, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sothebysperu.com>, <perusothebys.com>, <perusothebysrealty.com>, <sothebysinternacional.com>, <sothebysrealtyperu.com>, <sothebysinternacionalperu.com> and <sothebysinternationalperu.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 October 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@sothebysperu.com, postmaster@perusothebys.com, postmaster@perusothebysrealty.com, postmaster@sothebysinternacional.com postmaster@sothebysrealtyperu.com, postmaster@sothebysinternacionalperu.com and postmaster@sothebysinternationalperu.com by e-mail. Also on October 8, 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 November 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <sothebysperu.com>, <perusothebys.com>, and <perusothebysrealty.com> domain names are confusingly similar to Complainant’s SOTHEBY’S mark.
Respondent’s <sothebysinternacional.com>, <sothebysrealtyperu.com>, <sothebysinternacionalperu.com> and <sothebysinternationalperu.com> domain names are confusingly similar to Complainant’s SOTHEBY’S INTERNATIONAL REALTY mark.
2. Respondent does not have any rights or legitimate interests in the <sothebysperu.com>, <perusothebys.com>, <perusothebysrealty.com>, <sothebysinternacional.com>, <sothebysrealtyperu.com>, <sothebysinternacionalperu.com> and <sothebysinternationalperu.com> domain names.
3. Respondent registered and used the <sothebysperu.com>, <perusothebys.com>, <perusothebysrealty.com>, <sothebysinternacional.com>, <sothebysrealtyperu.com>, <sothebysinternacionalperu.com> and <sothebysinternationalperu.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SPTC, Inc asserts that it is the parent company of SPTC Delaware, LLC. The Panel elects to treat these two entities as a single Complainant for the purposes of this proceeding. Complainant owns the exclusive rights to its SOTHEBYS and SOTHEBY’S INTERNATIONAL REALTY marks which it uses in connection with its auction business and its luxury real estate services. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SOTHEBYS (e.g., Reg. No. 2,428,011 issued February 13, 2001) and SOTHEBY’S INTERNATIONAL REALTY (e.g., Reg. No. 1,248,613 issued August 13, 1983) marks. Complainant also holds a trademark registration with Peru’s trademark authority The National Institute for the Defense of Competition and Intellectual Property (INDECOPI) for its SOTHEBY’S INTERNATIONAL REALTY mark (e.g., Reg. No. 39318 issued September 5, 2005).
Respondent, Sanson Enterprises S.A.C, registered all the domain names on September 15, 2010. The disputed domain names resolve to websites featuring third-party links which presumably pay referral fees to Respondent..
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 holds multiple trademark registrations with the USPTO for its SOTHEBYS (e.g., Reg. No. 2,428,011 issued February 13, 2001) and SOTHEBY’S INTERNATIONAL REALTY (e.g., Reg. No. 1,248,613 issued August 13, 1983) marks, as well as with, INDECOPI for its SOTHEBY’S INTERNATIONAL REALTY mark (e.g., Reg. No. 39318 issued September 5, 2005). The Panel finds that trademark registrations with a federal trademark authority are sufficient to establish 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Therefore, the Panel finds that Complainant has established rights in the SOTHEBYS and SOTHEBY’S INTERNATIONAL REALTY marks pursuant to Policy ¶ 4(a)(i).
Complainant contends Respondent’s <sothebysperu.com> and <perusothebys.com>, domain names are confusingly similar to to Complainant’s SOTHEBYS mark. The disputed domain names contain Complainant’s SOTHEBYS mark, add the geographic term “Peru” and add the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the addition of geographic term and a gTLD do nothing to distinguish a disputed domain name from a complainant’s mark. See Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds Respondent’s <sothebysperu.com> and <perusothebys.com> domain names are confusingly similar to Complainant’s SOTHEBYS mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <perusothebysrealty.com>, <sothebysinternacional.com>, <sothebysrealtyperu.com>, <sothebysinternacionalperu.com> and <sothebysinternationalperu.com> domain names are confusingly similar to Complainant’s SOTHEBY’S INTERNATIONAL REALTY mark. Respondent’s <perusothebysrealty.com>, <sothebysrealtyperu.com>, and <sothebysinternationalperu.com> all remove a term from Complainant’s mark, along with removing the apostrophe, the spaces between the terms and add the geographic term “peru” and the gTLD “.com.” Previous panels have found that the removal of an apostrophe and a term from Complainant’s mark do not render a disputed domain name distinct. See 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”).
Previous panels also have determined that the addition of a geographic term renders a disputed domain name confusingly similar to a complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel additionally finds that the removal of spaces and the addition of a gTLD are insufficient to overcome a finding of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).
Respondent’s <sothebysinternacional.com> and <sothebysinternacionalperu.com> domain names each delete the term “realty” and the apostrophe from Complainant’s mark and replace the word “international” with the Spanish equivalent “internacional.” Additionally, Respondent’s <sothebysinternacionalperu.com> domain name appends the geographic term “peru.” Again, both disputed domain names remove the spaces between the terms of Complainant’s mark and add the gTLD “.com.” The Panel finds that none of these alterations is sufficient to distinguish the disputed domain names from Complainant’s mark. See Loreal USA, supra; see also Tesco Pers. Fin. Ltd., supra; see also Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Prop., D2005-1085 (WIPO Jan. 2, 2006) (“[A] semantic similarity between a trademark and a domain name can also exist if the trademark and the domain name contain word elements of different languages if a considerable part of the public understands the meaning of the translation.”); see also Trip Network Inc., supra; see also Bond & Co. Jewelers, Inc., supra. Therefore, the Panel finds that Respondent’s <perusothebysrealty.com>, <sothebysinternacional.com>, <sothebysrealtyperu.com>, <sothebysinternacionalperu.com> and <sothebysinternationalperu.com> domain names are confusingly similar to Complainant’s SOTHEBY’S INTERNATIONAL REALTY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that they do have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie case. Due to Respondent’s failure to respond to the complaint, the Panel may infer that Respondent does not have rights or legitimate interests in any of the disputed domain names. 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use the SOTHEBYS or SOTHEBY’S INTERNATIONAL REALTY marks. The WHOIS information identifies the registrant of the domain names as “Sanson Enterprises S.A.C.” There is no other evidence in the record to indicate that Respondent is commonly known by any of the disputed domain names. In light of these facts, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain names to direct Internet users to click-through websites; many of which compete with Complainant’s business and which Respondent likely profits from. The Panel finds that such use does not constitute 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Complainant also provides communication in which Respondent contacted representatives of Complainant’s company with offers to sell the disputed domain names. The Panel finds this is further evidence that Respondent lacks rights and legitimate interests and is not making a bona fide use of disputed domain names pursuant to Policy ¶ 4(a)(ii). See American Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of the complainant’s stock to the complainant); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Respondent registered the disputed domain names one day after Complainant issued a press release announcing its debut in the market in Peru. Almost immediately following the registration, Respondent contacted the manager of Complainant’s Peruvian office offering to sell or rent the disputed domain names to Complainant. The Panel finds that this offer to sell is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(i). See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated in communication with the complainant that it would be ready to sell the <matmut.com> domain name registration for $10,000); see also Randstad Gen. Partner, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24, 2000) (finding bad faith where the respondent offered the domain name for sale on its website <internetdomains4u.com> for $24,000).
Further, Respondent uses the disputed domain names to direct Internet users to sites displaying various third-party links, many of which compete with services offered by Complainant and which presumably provide Respondent with referral fees. The Panel finds this to be a disruption of Complainant’s business 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 S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
The Panel finds Policy ¶ 4(a)(iii) is 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 <sothebysperu.com>, <perusothebys.com>, <perusothebysrealty.com>, <sothebysinternacional.com>, <sothebysrealtyperu.com>, <sothebysinternacionalperu.com> and <sothebysinternationalperu.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: November 19, 2010
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