national arbitration forum

 

DECISION

 

Sotheby’s and SPTC Delaware, LLC v. Stayktan Zandiss

Claim Number: FA1208001456464

 

PARTIES

Complainant is Sotheby’s and SPTC Delaware, LLC (“Complainant”), represented by Robert J. English of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is Stayktan Zandiss (“Respondent”), Bangladesh.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hamburgsothebysrealty.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

David A. Einhorn appointed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2012; the National Arbitration Forum received payment on August 2, 2012.

 

On August 3, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <hamburgsothebysrealty.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 August 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@hamburgsotheby’srealty.com.  Also on August 6, 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 August 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant’s Contentions

1)    Complainant, Sotheby’s, and Complainant, SPTC Delaware, LLC  are affiliated companies and have concurrent rights in the SOTHEBY’S marks.

2)    Complainants registered the SOTHEBY’S mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,428,011 on February 13, 2001) and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 839,993 registered July 3, 2000).  Complainants also registered the SOTHEBY’S INTERNATIONAL REALTY mark with the USPTO (Reg. No. 1,248,613 on August 16, 1983) and in over 50 countries around the world.

3)    SOTHEBY’S is a world famous mark.

4)    Complainants do business in Hamburg, Germany.

5)    Respondent, Stayktan Zandiss, registered the <hamburgsothebysrealty.com> domain name on May 24, 2012.

6)    Respondent resolves the disputed domain name to a German language website that purports to sell designer shoes from Christian Louboutin and Manolo Blahnik.

7)    Respondent’s <hamburgsothebysrealty.com> domain name is confusingly similar to the SOTHEBY’S mark, merely adding the geographic term “hamburg” and the descriptive term “realty”.

8)    Respondent is not commonly known by the disputed domain name and has not been authorized to use the SOTHEBY’S mark in any fashion.

9)    Respondent does not have rights and legitimate interests in the disputed domain name where it is using the domain name to operate a retail shop selling footwear.

10) Respondent is using the disputed domain name to attract Internet users to its website for commercial gain in bad faith.

11) Respondent’s use of the disputed domain name disrupts Complainants’ business.

12)  Respondent had constructive and actual knowledge of Complainants’ rights in the SOTHEBY’S marks prior to registering the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS AND 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."

 

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.

 

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.”).

 

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.”  There are two Complainants in this matter: Sotheby’s and SPTC Delaware, LLC.  Complainants contend that Complainant, Sotheby’s, and Complainant, SPTC Delaware, LLC, are affiliated companies.  Complainants explain that Complainant, SPTC Delaware, LLC, is a subsidiary of SPTC, Inc., which itself is an affiliate of Complainant, Sotheby’s.  Complainants argue that both entities have rights to the SOTHEBY’S marks.

 

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 Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. 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 208584 (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.

 

This Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and will treat them all as a single entity in this proceeding.

 

Identical and/or Confusingly Similar

 

Complainant argues that it has rights in the SOTHEBY’S mark under Policy          ¶ 4(a)(i).  In support of its argument, Complainant provides the Panel with evidence of Complainant’s trademark registrations for the SOTHEBY’S mark with the USPTO (Reg. No. 2,428,011 registered February 13, 2001) and with the OHIM (Reg. No. 839993 registered July 3, 2000).  Complainant has also provided the Panel with evidence of Complainant’s trademark registration for SOTHEBY’S INTERNATIONAL REALTY (Reg. No. 1,248,613, registered on August 16, 1983).  The Panel finds that such registrations affirmatively establish Complainant’s rights in the SOTHEBY’S mark under Policy ¶ 4(a)(i), regardless of Respondent’s purported location.  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Further, Complainant argues that Respondent’s <hamburgsothebysrealty.com> domain name is confusingly similar to the SOTHEBY’S marks, merely adding the geographic term “hamburg” (a city in which Complainant does business) and the descriptive term “realty” (which is contained in Complainant’s SOTHEBY’S INTERNATIONAL REALTY mark) to the term “sothebys”.  The Panel finds that Respondent’s disputed domain name is confusingly similar to the SOTHEBY’S marks under Policy ¶ 4(a)(i).  See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark).

 

Thus, Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant contends that Respondent is not commonly known by the disputed domain name and has not been authorized to use the SOTHEBY’S mark in any fashion.  The Panel notes that the WHOIS information for the <hamburgsothebysrealty.com> domain name identifies “Stayktan Zandiss” as the registrant and Respondent has not come forward with evidence indicating that it has been known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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).

 

Further, Complainant argues that Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) where it is using the domain name to operate a retail shop selling footwear.  Complainant claims that Respondent resolves the disputed domain name to a German language website that purports to sell designer shoes.  The Panel finds that Respondent’s commercial use of the disputed domain name, albeit in a different industry than Complainant operates in, is 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 Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).

 

Thus, Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent had actual knowledge of Complainant’s rights in the SOTHEBY’S mark prior to registering the disputed domain name.  It has previously been found, under similar provided evidence, that SOTHEBY’S is a well known mark.  See SPTC, Inc. v. Bonanzas.com.Inc., FA409895 (Nat. Arb. Forum March 14, 2005).  The Panel thus infers that Respondent had actual knowledge of Complainant’s marks.

 

Complainant also contends that Respondent is using the disputed domain name to attract Internet users to its website for commercial gain in bad faith under Policy ¶ 4(b)(iv).  Complainant also asserts that Internet users who may be looking for Complainant in Hamburg, Germany, may mistakenly reach Respondent’s website and believe that the website was sponsored by, or connected to, Complainant.  The Panel finds that, by registering the <hamburgsothebysrealty.com> domain name, Respondent intended to create confusion with Complainant’s mark in order to attract Internet users to the resolving website.  Further, the Panel finds that Respondent likely commercially gains from such use through the sale of footwear on the website.  Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

Thus, Complainant has satisfied Policy ¶ 4(a)(iii).

 

 

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 <hamburgsothebysrealty.com> domain name be TRANSFERRED from Respondent to Complainant.

 

David A. Einhorn

Dated: September 13, 2012

 

 

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