SPTC, Inc. and Sotheby’s v. Tony Hagerty / Proactive Risk Management Ltd
Claim Number: FA1212001477849
Complainant is SPTC, Inc. and Sotheby’s (“Complainant”), represented by Robert J. English of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Tony Hagerty / Proactive Risk Management Ltd (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sothebysearch.com> and <sothebywealth.com>, registered with MESH DIGITAL LIMITED.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 28, 2012; the National Arbitration Forum received payment on December 28, 2012.
On December 29, 2012, MESH DIGITAL LIMITED confirmed by e-mail to the National Arbitration Forum that the <sothebysearch.com> and <sothebywealth.com> domain names are registered with MESH DIGITAL LIMITED and that Respondent is the current registrant of the names. MESH DIGITAL LIMITED has verified that Respondent is bound by the MESH DIGITAL LIMITED 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 January 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2013 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@sothebysearch.com, postmaster@sothebywealth.com. Also on January 4, 2013, 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 January 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
i. Respondent is not commonly known by the disputed domain names where the WHOIS information shows that “Tony Hagerty / Proactive Risk Management Ltd” is the registrant of the disputed domain names.
ii. Respondent’s disputed domain name <sothebysearch.com> resolves to a home page that references what appears to be a financial services recruitment business. Respondent’s disputed domain name <sothebywealth.com> appears to be a “parking” website that contains advertisements for the domain registrar and/or hosting company’s services.
i. Respondent is using the disputed domain names to attract users to its websites for its own commercial gain.
ii. Respondent is not making an active use of the <sothebywealth.com> domain name.
iii. Respondent should be held to have actual or constructive knowledge of Complainant’s rights in the marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainants SPTC, Inc. and Sotheby’s are affiliated companies and will be referred to as “Complainant.” Complainant, SPTC, Inc. and Sotheby’s, has been engaged in the auction business since 1744 and has developed a reputation as a premiere auction house for the sale of fine art and other collectibles. Complainant is also engaged in the business is selling fine real estate properties. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SOTHEBYS mark (Reg. No. 2,428,011, registered February 13, 2001) and for the SOTHEBY’S mark (e.g., Reg. No. 1,638,329, registered March 19, 1991). Complainant owns trademark registrations with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) for the SOTHEBY’S mark (Reg. No. 839,993, registered July 3, 2000). Complainant owns trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) for the SOTHEBY’S (Reg. No. 1,283,724, registered January 10, 1986).
Respondent, Tony Hagerty / Proactive Risk Management Ltd, registered the <sothebysearch.com> domain name on August 10, 2012 and registered the <sothebywealth.com> domain name on April 27, 2012. Respondent’s disputed domain name <sothebysearch.com> resolves to a home page that references what appears to be a financial services recruitment business. Respondent’s disputed domain name <sothebywealth.com> appears to be a “parking” website that contains advertisements for the domain registrar and/or hosting company’s services.
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.”).
Respondent appears to reside in the United Kingdom. Therefore, the Panel concludes that Complainant’s registration of the SOTHEBY’S mark with the OHIM and UKIPO is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i). See Petroleo Brasileiro S.A. – Petrobras v. Munoz, FA 1222428 (Nat. Arb. Forum Oct. 16, 2008) (finding complainant’s multiple trademark registrations around the world, including those with the European Union’s Office for Harmonization in the Internal Market (“OHIM”), established complainant’s rights in its mark under Policy ¶ 4(a)(i)); see also Royal Bank of Scot. Group plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”).
Complainant argues that Respondent’s <sothebysearch.com> and <sothebywealth.com> domain names are confusingly similar to Complainant’s SOTHEBY’S mark as they incorporate Complainant’s mark and delete the letter “s.” The removal of the “s” in Complainant’s SOTHEBY’S does not distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”). Respondent adds the descriptive term “search” or “wealth” to the disputed domain names. Complainant contends that the terms “search” and “wealth” are both terms that can relate to Complainants’ auction business as well as the sale of fine real estate properties by Complainant’s licensee. The addition of descriptive terms does not eliminate confusing similarity under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Respondent adds the gTLD “.com” to the disputed domain names. Respondent removes the apostrophe in Complainant’s SOTHEBY’S mark. The addition of a gTLD and removal of an apostrophe does not differentiate Respondent’s disputed domain name from Complainant’s mark. 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 Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Accordingly, the Panel finds that Respondent’s <sothebysearch.com> and <sothebywealth.com> domain names are confusingly similar to Complainant’s SOTHEBY’S mark under Policy 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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).
Complainant asserts that Respondent is not commonly known by the disputed domain names where the WHOIS information shows that “Tony Hagerty / Proactive Risk Management Ltd” is the registrant of the disputed domain names. Complainant argues that Respondent is not a licensee of Complainants, nor has Respondent ever been authorized by Complainant to register or use Complainants’ SOTHEBY’S mark. Complainant contends that Respondent does not engage in any business or commerce under the names Sotheby, Sotheby’s, and/or Sothebywealth. See 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).
Complainant contends that Respondent’s disputed domain name <sothebysearch.com> resolves to a home page that references what appears to be a financial services recruitment business. Complainant asserts that Respondent’s disputed domain name <sothebywealth.com> appears to be a “parking” website that contains advertisements for the domain registrar and/or hosting company’s services. The Panel finds that Respondent’s use of the disputed domain names in connection with uses that are unrelated to Complainant 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).”).
Complainant contends that Respondent is using the disputed domain names to attract users to its websites for its own commercial gain. Complainant argues that Internet users searching for Complainant on the Internet would mistakenly reach Respondent’s websites and believe that the sites were either connected or sponsored by Complainant. Complainant asserts that Internet users confusion is especially likely given Respondent’s prominent display of a photographic image of the Palace of Westminster in London, the city in which Complainant is based, on the website resolving from the <sothebysearch.com> domain name. Complainant argues that Respondent is not making an active use of the <sothebywealth.com> domain name. Respondent’s <sothebywealth.com> domain name resolves to a webpage that sells domains. The Panel presumes that Respondent benefits from the use of both the disputed domain names. The Panel finds that Respondent’s use of the disputed domain names to confuse Internet users shows bad faith use and registration under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant argues that Respondent should be held to have actual or constructive knowledge of Complainant’s rights in the marks. Complainant argues that Respondent’s constructive knowledge of Complainant’s rights in the mark is evidenced by Complainant’s registrations in the United States, the European Union, and in the United Kingdom. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothebysearch.com> and <sothebywealth.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 11, 2013
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