national arbitration forum

 

DECISION

 

SPTC, Inc. and Sotheby’s v. tony royany

Claim Number: FA1302001483937

PARTIES

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 royany (“Respondent”), Indonesia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sothebysfl.com>, registered with MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 6, 2013; the National Arbitration Forum received payment on February 6, 2013.

 

On February 10, 2013, MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <sothebysfl.com> domain name is registered with MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name.  MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE 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 February 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 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@sothebysfl.com.  Also on February 12, 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 March 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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

  1. Complainant
    1. Complainant, SPTC, Inc. and Sotheby’s, has been engaged in the auction business since 1744 and has developed a reputation as a premier auction house for the sale of fine art and other collectibles. Complainant is also engaged in the business of selling fine real estate properties in a range of locations, prices, and distinctive styles. Complainant’s auction and real estate services are offered in numerous countries all over the world.
    2. Complainant is the owner of 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 is the owner of a trademark registration with Indonesia’s Directorate General of Intellectual Property Rights (“DGIP”) for the SOTHEBY’S mark (Reg. No. 165,182, registered June 20, 2008).
    3. Respondent registered the <sothebysfl.com> domain name on September 6, 2012.
    4. Respondent’s <sothebysfl.com> domain name is virtually identical or confusingly similar to Complainant’s SOTHEBY’S mark because of the deletion of the apostrophe and the mere addition of the geographic identifier “fl.” Finally, the generic top-level domain (“gTLD”) does not alter the similarity of the disputed domain name.
    5. Respondent has no rights or legitimate interests in the disputed domain name.

                                          i.    Respondent is not commonly known by the disputed domain name.

                                         ii.    Respondent’s domain name resolves to a website that contains links to third-party websites.

    1. Respondent has registered and is using the disputed domain name in bad faith.

                                          i.    Respondent uses Complainant’s SOTHEBYS in the domain name to attract users to its websites for commercial gain.

                                         ii.    Respondent should be held to have had actual or, at a minimum, constructive knowledge of Complainant and its rights in the SOTHEBYS and SOTHEBY’S marks at the time Respondent registered the disputed domain name.

  1. Respondent has not submitted a Response to this case.

 

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).  UDRP Rule 3(a) states, “Any 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: SPTC, Inc. and Sotheby’s. The Complaint states that SPTC, Inc. and Sotheby’s are affiliated companies.

 

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 Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee 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 Services 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.  But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).

 

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

 

FINDINGS

1.    Respondent’s <sothebysfl.com> domain name is confusingly similar to Complainant’s SOTHEBYS mark.

2.    Respondent does not have any rights or legitimate interests in the < <sothebysfl.com> domain name.

Respondent registered or used the <sothebysfl.com> domain name in bad faith.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant, SPTC, Inc. and Sotheby’s, contends that it has been engaged in the auction business since 1744 and has developed a reputation as a premier auction house for the sale of fine art and other collectibles. Complainant argues that it is also engaged in the business of selling fine real estate properties in a range of locations, prices, and distinctive styles. Complainant claims that its auction and real estate services are offered in numerous countries all over the world. Complainant asserts that it is the owner of trademark registrations with the 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). See Complainant’s Exhibit B.  Complainant also claims to be the owner of a trademark registration with Indonesia’s DGIP for the SOTHEBY’S mark (Reg. No. 165,182, registered June 20, 2008). See Complainant’s Exhibit B. The Panel determines that Complainant’s registration of the SOTHEBY’S mark with the USPTO and the DGIP sufficiently evidences Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).

 

Complainant asserts that Respondent’s <sothebysfl.com> domain name is virtually identical or confusingly similar to Complainant’s SOTHEBY’S mark because Respondent has deleted the apostrophe. In LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003), the panel found that the omission of an apostrophe did not significantly distinguish the domain name from the mark. Complainant argues that Respondent merely adds the geographic identifier “fl” to the disputed domain name. Complainant contends that “fl” is a known abbreviation for the state of Florida. The Panel finds that the addition of a geographic term does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Finally, Complainant contends that the addition of a gTLD does not alter the similarity of the disputed domain name. The Panel notes that Respondent has added the gTLD “.com” to the disputed domain name. The Panel finds that the addition of a gTLD does nothing to eliminate confusing similarity pursuant to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD  is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel concludes that Respondent’s <sothebysfl.com> domain name is confusingly similar to Complainant’s SOTHEBY’S mark under Policy ¶ 4(a)(i).

 

 

Rights or Legitimate Interests

 

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); 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 asserts that Respondent is not commonly known by the disputed domain name. Complainant claims that the WHOIS record for the domain name lists “tony royany” as the registrant of the disputed domain name. See Complainant’s Exhibit E. Complainant contends that Respondent does not actually engage in any business or commerce under the names SOTHEBY, SOTHEBYS, SOTHEBY’S, and/or SOTHEBYSFL. Complainant argues that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use Complainant’s mark. The Panel determines that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 claims that Respondent’s domain name resolves to a website that contains links to third-party websites. The Panel notes that Respondent’s disputed domain name resolves to a website that appears to host a blog page. See Complainant’s Exhibit F. The Panel holds that Respondent’s unrelated use of the disputed domain name to host a blog page is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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).”).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent uses SOTHEBYS in the domain name to attract users to its websites for commercial gain. Complainant asserts that Internet users who might be searching for Complainant on the Internet would mistakenly reach Respondent’s <sothebysfl.com> website and believe that the site was either connected to, or sponsored by Complainant. Complainant contends that Respondent’s use of the <sothebysfl.com> domain name constitutes a disruption of Complainant’s business. The Panel finds that Respondent using the disputed domain name for an unrelated use does not traditionally constitute disruption of Complainant’s business under Policy ¶ 4(b)(iii). However, the Panel finds that Respondent’s use of the disputed domain name to divert Internet users away from Complainant’s business constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).

 

Complainant contends that Respondent should be held to have had actual or, at a minimum, constructive knowledge of Complainant and its rights in the SOTHEBYS and SOTHEBY’S marks at the time Respondent registered the disputed domain name.. Complainant argues that it has a long and well-established reputation in its SOTHEBY’S marks through their use in the auction and real estate industries throughout the world. Complainant claims that Respondent chose the confusingly similar domain name to capitalize on the confusion of Internet users. The Panel finds that, due to Complainant’s reputation throughout the world, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

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 <sothebysfl.com> domain name be TRANSFERRED from Respondent to Complaint.

 

 

John J. Upchurch, Panelist

Dated:  April 1, 2013

 

 

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