SPTC, Inc. and SPTC Delaware, LLC v. c/o ONESOTHEBYS.COM, ONESOTHEBYS.NET
Claim Number: FA1206001449023
Complainant is SPTC, Inc. and SPTC Delaware, LLC (“Complainant”), represented by Robert J. English of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is c/o ONESOTHEBYS.COM, ONESOTHEBYS.NET (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <onesothebys.com> and <onesothebys.net>, registered with Domain.com, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 15, 2012; the National Arbitration Forum received payment June 15, 2012.
On June 18, 2012, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <onesothebys.com> and <onesothebys.net> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC verified that Respondent is bound by the Domain.com, 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 June 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@onesothebys.com, and postmaster@onesothebys.net. Also on June 18, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 July 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following allegations:
Complainants own rights in the SOTHEBY’S mark through their many trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,638,329 registered March 19, 1991). See Exhibit C. Complainants own service mark registrations in more than fifty countries internationally. Complainants have been involved in the industry of real estate sales in the United States and in countries throughout the world for over 25 years.
Respondent registered the <onesothebys.com> domain name January 1, 2011, and the <onesothebys.net> domain name February 9, 2011. The disputed domain names resolve to a website that allows users to search for property listings in Miami, Florida. The disputed domain name is confusingly similar to Complainant’s SOTHEBY’S mark. Respondent does not possess rights or legitimate interests in either the <onesothebys.com> or the <onesothebys.net> domain names and Respondent is not commonly known by the disputed domain names. Respondent is not authorized to register or use Complainant’s marks in any manner. Respondent’s diversion of Internet users to its competing website is not a bona fide offering of goods or services nor is it a legitimate noncommercial or fair use. Respondent disrupts Complainant’s business and capitalizes on user confusion to attract Internet traffic to its website.
B. Respondent did not submit a Response in this proceeding.
The Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has shown legal rights.
The Panel finds that Respondent has no rights in the disputed domain names.
The Panel finds that Respondent registered and used the disputed domain names 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e) and the relevant language of each is set out above. The two Complainants in this matter are SPTC, Inc. and its subsidiary SPTC Delaware, LLC.
The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. 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 Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Servs. 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.
The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and the Panel treats them as a single entity for purposes of this proceeding. The Complainants will be collectively referred to as “Complainant.”
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant alleges that multiple entities control the domain name at issue and are operating under the same person and/or entity, although under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that both domain names are registered with the same privacy service and urges that sufficient evidence supports a finding that a single domain holder registered both disputed domain names. As support Complainant notes that the same phone number and similar email addresses are assigned to the registrants for both domain names.
The Panel finds that Complainant presented sufficient evidence that the disputed domain names are controlled by the same entity and the Panel proceeds with the instant proceedings.
Complainant asserts that it owns trademark rights in its SOTHEBY’S mark through numerous registrations with the USPTO (e.g., Reg. No. 1,638,329 registered March 19, 1991). The Panel finds that Complainant demonstrates its rights in the SOTHEBY’S mark through its USPTO registrations pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant claims that the <onesothebys.com> and <onesothebys.net> domain names are confusingly similar to its SOTHEBY’S mark. Complainant points out that the <onesothebys.com> domain name includes the generic top-level domain (“gTLD”) “.com,” and the <onesothebys.net> domain name includes the gTLD “.net,” while both domain names include the generic term “one.” The Panel also notes that neither domain name includes the apostrophe contained in the SOTHEBY’S mark. The Panel finds that the removal of punctuation as well as the additions of a gTLD and a generic term to each of the disputed domain names does not distinguish the mark from the domain names, the disputed domain names are confusingly similar to Complainant’s SOTHEBY’S mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate 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 Respondent 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 satisfied that requirement.
Complainant claims it has not given Respondent permission to use the SOTHEBY’S mark in any way and that Respondent is not commonly known by either the <onesothebys.com> or the <onesothebys.net> domain names. Complainant provides evidence of the WHOIS information for the <onesothebys.com> domain name, which identifies the registrant as “c/o ONESOTHEBYS.COM.” Complainant also provides evidence that the registrant of the <onesothebys.net> domain name is identified as “c/o ONESOTHEBYS.NET.” The WHOIS information for both disputed domain names, and the absence of other supporting evidence, demonstrate that Respondent is not commonly known by the <onesothebys.com> and <onesothebys.net> 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that Respondent uses the <onesothebys.com> and <onesothebys.net> domain names to host a competing real estate website that allows visitors to search listings that are not offered by Complainant’s business. Complainant asserts that maintaining a competing website correlating to the disputed domain names is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent uses the names to redirect Internet traffic to its competing website using Complainant’s mark. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s registration and use of the <onesothebys.com> and <onesothebys.net> domain names supports findings of bad faith. Complainant urges that Respondent’s use disrupts Complainant’s business by directly competing with Complainant and diverting its consumers to Respondent’s website. In Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006), the panel stated that the respondent’s use of a website in direct competition with the complainant was evidence that the respondent registered and used the disputed domain name to disrupt the complainant’s business. In S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000), the panel concluded that the respondent intentionally registered a domain name with the purpose of disrupting the complainant, who was a competitor of the respondent. The Panel finds that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iii) when its use shows that Respondent registered the disputed domain names with the intention of disrupting Complainant’s business by offering competing services at the resolving website.
Complainant argues that Respondent capitalizes on Internet user confusion by attracting consumers to its website in order to generate a profit by offering competing services, which also is evidence of Respondent’s bad faith registration and use. Complainant alleges that Respondent’s website offers search boxes for visitors and contact information for a realtor. See Exhibit I. The panel in Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), stated that the respondent’s use of a domain name that is confusingly similar to the complainant’s mark to divert Internet traffic to a competing website supports a finding that the respondent registered and used the disputed domain name in bad faith. In Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000), the panel concluded that the respondent violated the Policy by appropriating the complainant’s mark and offering identical services on its website as those offered by the complainant. The Panel finds that by featuring real-estate services in competition with the services offered by Complainant, Respondent registered and uses the <onesothebys.com> and <onesothebys.net> domain names in bad faith under a Policy ¶ 4(b)(iv) analysis.
Complainant asserts that Respondent is presumed to have constructive notice of Complainant’s SOTHEBY’S marks prior to registering the disputed domain name, due to Complainant’s numerous trademark registrations. The Panel notes that Complainant does not allege Respondent’s actual knowledge of Complainant’s rights in its mark; however, the Panel notes that Respondent uses the resolving website to host information and services similar to those that Complainant’s business offers. In The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003), the panel concluded that the Policy does not recognize constructive knowledge and did find bad faith based on constructive knowledge alone. In Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007), however the panel found that the respondent’s disputed domain name was registered in bad faith because the respondent had actual knowledge of the complainant’s rights in the mark when the respondent registered the disputed domain name. The Panel rejects Complainant’s constructive knowledge argument, but finds that Respondent’s use shows that the Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii). Competing content on Respondent’s website demonstrates that Respondent had actual knowledge of Complainant’s rights in the SOTHEBY’S mark at the time Respondent registered the names.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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 <onesothebys.com> and <onesothebys.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 31, 2012.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page