national arbitration forum

 

DECISION

 

SPTC, Inc. and SPTC Delaware, LLC v. Amayak Movsessyan

Claim Number: FA1011001355801

 

PARTIES

 Complainant is SPTC, Inc. and SPTC Delaware, LLC (“Complainant”), represented by Sujata Chaudhri of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is Amayak Movsessyan (“Respondent”), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <auctionsothebys.com> and <sothbysauction.com> registered with Godaddy.com, 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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2010; the National Arbitration Forum received payment on November 1, 2010.

 

On November 1, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <auctionsothebys.com> and <sothbysauction.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@auctionsothebys.com, postmaster@sothbysauction.com.  Also on November 2, 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 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <auctionsothebys.com> and <sothbysauction.com> domain names are confusingly similar to Complainant’s SOTHEBYS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <auctionsothebys.com> and <sothbysauction.com> domain names.

 

3.      Respondent registered and used the <auctionsothebys.com> and <sothbysauction.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, SPTC, Inc., is the parent company of SPTC Delaware, LLC.  The Panel elects to treat these two entities as a single Complainant for the purposes of these proceedings.  Complainant operates an auction house that specializes in the sale of fine art and other collectibles.  Complainant operates its auction house under the SOTHEBYS trademark, registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,428,011 issued February 13, 2001).

 

Respondent, Amayak Movsessyan, registered both of the disputed domain names on August 18, 2010.  The disputed domain names both resolve to websites displaying links to third party auction websites containing content that is related to Complainant’s business.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has provided evidence of its registration of the SOTHEBYS mark with the USPTO (e.g., Reg. No. 2,428,011 issued February 13, 2001).  The Panel finds that such evidence establishes rights in the mark and satisfies the requirements outlined in Policy ¶ 4(a)(i).  The Panel bases this determination on previous findings that registration of a mark with a federal trademark authority establishes rights in the mark.  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).  The Panel concludes, pursuant to Policy ¶ 4(a)(i), that Complainant has established rights in its SOTHEBYS mark based on its registration of the mark with the USPTO.

 

Complainant urges the Panel to find confusing similarity between Complainant’s SOTHEBYS mark and the disputed domain names.  The <auctionsothebys.com> disputed domain name incorporates Complainant’s entire mark while simply adding the descriptive term “auction” and the generic top-level domain (“gTLD”) “.com” to the SOTHEBYS mark.  Respondent’s <sothbysauction.com> domain name also incorporates Complainant’s mark, only Respondent has removed the letter “e” from the mark while adding both the descriptive term “auction” and gTLD “.com” to the end of Complainant’s mark.  Complainant contends that adding descriptive terms, a gTLD, and slight misspelling all fall within the realm of confusing similarity to the SOTHEBYS mark.  The Panel may find accordingly.  See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”).  Based on the findings of previous panels, this Panel now concludes that Respondent’s <auctionsothebys.com> and <sothbysauction.com> domain names are confusingly similar to Complainant’s SOTHEBYS mark.

 

The Panel finds Policy ¶ 4(a)(i) has been established.

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must prove that Respondent does not have rights and legitimate interests in the disputed domain name.  Complainant does this by establishing a prima facie showing in support of its allegations, at which point the burden shifts to Respondent to show it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  The Panel finds that Complainant has made a prima facie showing and because Respondent failed to make a timely response, the Panel may assume that Respondent lacks rights or legitimate interests in the disputed domain names.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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.”).  However, the Panel chooses to consider the evidence to determine whether Respondent owns any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).

 

Complainant asserts that Respondent is not commonly known by the <auctionsothebys.com> and <sothbysauction.com> domain names and that Respondent is not authorized to use the SOTHEBYS mark.  The Panel notes that Complainant’s assertions have gone uncontested by Respondent.  In addition, the Panel finds no evidence in the record that would provide a solid foundation for determining that Respondent is commonly known by the disputed domain names.  Additionally, the information in the WHOIS database lists the registrant of the disputed domain names as “Amayak Movsessyan,” which, as alleged by Complainant, is not similar to either of the disputed domain names.  Thus, the Panel finds that Respondent is not commonly known by either the <auctionsothebys.com> or <sothbysauction.com> domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 alleges that Respondent uses the disputed domain name to redirect Internet users to Respondent’s websites, which are comprised of links to the auction websites of Complainant’s competitors.  The Panel presumes that, for the redirection of Internet traffic to third-party websites, Respondent receives click-through fees.  The Panel finds that Respondent’s use of a confusingly similar domain name to operate a website featuring links to Complainant’s competitors is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, 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 also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).

 

The Panel finds Policy ¶ 4(a)(ii) has been established.

 

Registration and Use in Bad Faith

 

Respondent uses the disputed domain names and resolving websites to post links to various third-party website that compete with Complainant in the auction business.  Respondent’s inclusion of hyperlinks to Complainant’s competitors negatively affects Complainant’s business.  Internet users interested in information relating to Complainant’s auction house or auction services may be misled and find and utilize similar services from Complainant’s competitors due to Respondent’s use of the confusingly similar disputed domain name.  The Panel determines that such a use disrupts Complainant’s business, which previous panels have concluded constitutes bad faith registration and use 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 Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site.  The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant alleges that Respondent uses the disputed domain names to redirect Internet users to websites that display links to third party websites containing content that is directly related to Complainant’s auction business.  Complainant further alleges that Internet users are likely to become confused as to Complainant’s possible affiliation with, or sponsorship of, the disputed domain names and resolving websites.  Complainant alleges, and the Panel is in agreement, that Respondent benefits from this confusion through the receipt of click-through fees. Therefore, the Panel concludes that Respondent’s use of the disputed domain name constitutes bad faith registration and use 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 Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds Policy ¶ 4(a)(iii) has been established.

 

 

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 <auctionsothebys.com> and <sothbysauction.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  December 6, 2010

 

 

 

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