Sotheby's v. Mizuno, Hiroyuki
Claim Number: FA1204001439175
Complainant is Sotheby's (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Mizuno, Hiroyuki (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sothebysinstitutelondon.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on April 12, 2012; the National Arbitration Forum received payment on April 12, 2012.
On April 12, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <sothebysinstitutelondon.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 April 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2012 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@sothebysinstitutelondon.com. Also on April 13, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent 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 May 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the SOTHEBY’S trademark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,280,414, registered September 26, 1986).
Complainant has been licensing the SOTHEBY’S mark in association with the marketing of Art Institutes for over 40 years.
Complainant previously owned the disputed <sothebysinstitutelondon.com> domain name, but inadvertently allowed the registration of the domain to lapse.
Respondent’s domain name is confusingly similar to Complainant’s SOTHEBY’S trademark.
Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use the SOTHEBY’S trademark.
Respondent is not commonly known by the disputed domain name.
Respondent’s domain name resolves to a Japanese language website offering adult-oriented material, including escort services.
Respondent is not engaging in a bona fide offering of goods or services by means of the disputed domain name.
Respondent does not have any rights to or legitimate interests in the disputed domain name.
Respondent was aware of Complainant’s rights in the SOTHEBY’S mark when it registered the disputed domain name.
Respondent has registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations 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.”).
Complainant has rights in the SOTHEBY’S trademark under Policy ¶ 4(a)(i) by reason of having registered it with a national trademark authority, the UKIPO. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding a complainant’s registration for its HONEYWELL mark sufficient to est-ablish its rights in the mark under the Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant for purposes of the Policy whether a complainant has registered its trademark in the country of a respondent’s residence).
Respondent’s <sothebysinstitutelondon.com> domain name is confusingly similar to Complainant’s well-known SOTHEBY’S trademark. The disputed domain name includes the entire mark, merely omitting the apostrophe. It also includes the generic term “institute” and the geographic identifier “London,” both descript-tive of complainant’s business, in addition to the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not remove the domain from the realm of confusing similarity under Policy ¶ 4(a)(i). See LOreal USA Creative Inc v. Synco-pate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omis-sion of an apostrophe did not distinguish a domain name from the mark from which it was derived); 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.
Further see Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004):
[I]t is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie case that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must make a prima facie showing that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that
Respondent has never been authorized by Complainant to register or use the SOTHEBY’S trademark. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Mizuno, Hiroyuki,” which does not resemble the contested domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the domain name <cigaraficionada.com>, and so had not acquired rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where the relevant WHOIS inform-ation and other evidence in the record failed to show that that Respondent was commonly known by the domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii) where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the disputed domain name, in that the disputed domain name resolves to a Japanese-language websites that offers adult-oriented material. This use of the domain name is indeed not a bona fide offering of goods or services or a legitimate noncom-mercial or fair use of the domain name. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that a respond-ent’s use of a contested domain name to link unsuspecting Internet traffic to an adult orientated website did not constitute a bona fide offering of goods or services or a noncommercial or fair use of the domain); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not constitute to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed <sothebysinstitutelondon.com> domain name resolves to an adult-oriented website. This use of the disputed domain name, which is confusingly similar to Complainant’s SOTHEBY’S trademark, demonstrates bad faith registration and use of the domain under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that a respondent’s use of a complainant’s mark in a domain name used to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith registration and use of the domain name); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking contested domain names to graphic, adult-oriented websites is evidence of bad faith registration and use of the domains).
Complainant was the prior registrant of the disputed domain name, but inad-vertently allowed the registration to lapse. Respondent’s opportunistic registra-tion of the domain name in the circumstances outlined in the Complaint is further evidence of bad faith registration and use of the domain. See, for example, BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith registration and use of s contested domain name where a respondent took ad-vantage of a complainant’s failure to renew its registration of a domain name); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003):
Where the domain name registration was previously held, devel-oped and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.
No justification for the registration of the domain name by Respondent appearing in the record, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <sothebysinstitutelondon.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 23, 2012
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