SPTC, Inc. and Sotheby's v. DomainsByProxy.com Private Registration / Domains by Proxy, Inc.
Claim Number: FA1304001494907
Complainant is SPTC, Inc. and Sotheby's (“Complainant”), represented by Robert J. English of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is DomainsByProxy.com Private Registration / Domains by Proxy, Inc. (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sotheby.org>, registered with Dynadot, LLC (R1266-LROR).
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2013; the National Arbitration Forum received payment on April 15, 2013.
On April 16, 2013, Dynadot, LLC (R1266-LROR) confirmed by e-mail to the National Arbitration Forum that the <sotheby.org> domain name is registered with Dynadot, LLC (R1266-LROR) and that Respondent is the current registrant of the names. Dynadot, LLC (R1266-LROR) has verified that Respondent is bound by the Dynadot, LLC (R1266-LROR) 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 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 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@sotheby.org. Also on April 17, 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 May 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
The National Arbitration Forum did receive an email from Respondent, which is identified in this proceeding as “Correspondence-Respondent.” In this document, Respondent offers to transfer the <sotheby.org> domain name. Since there has been no request to withdraw the complaint, pursuant to the National Arbitration Forum Supplemental Rule 12 (b), the Panel will issue a decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Respondent is not commonly known by this name.
ii. Respondent is currently using the disputed domain name to redirect Internet users to third-party websites presumably for the purpose of obtaining click-through or referral fees.
i. Respondent’s registration and use of the disputed domain name to redirect and/or divert unsuspecting Internet users to unrelated and/or competing businesses with the intent of receiving commercial benefit constitutes registration and use in bad faith.
ii. Given the prior worldwide use and registrations of Complainant’s SOTHEBY’S mark, including Complainant’s registrations in the United States, Respondent should be held to have actual or at a minimum constructive knowledge of such use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
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. Complainant asserts that Sotheby’s is a licensee of SPTC, Inc.
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.
The 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. In this decision, the Complainants will be collectively referred to as “Complainant.”
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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.”).
Complainant, SPTC, Inc. and Sotheby’s, argues that it has been engaged in the auction business since 1744 and have developed a reputation as a premier auction house for the sale of fine art and other collectibles. Complainant asserts that it is the owner of trademark registrations with the USPTO for the SOTHEBY’S mark (e.g., Reg. No. 1,638,329, registered March 19, 1991). The Panel notes that Respondent appears to reside within the United States. Therefore, the Panel holds that Complainant’s registration of the SOTHEBY’S mark with the USPTO demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <sotheby.org> domain name is virtually identical to Complainant’s SOTHEBY’S mark. Complainant asserts that the only difference between the domain name and Complainant’s SOTHEBY’S mark is the omission of the apostrophe and letter “S.” The Panel finds that the removal of an apostrophe does nothing to distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark). The Panel finds that Respondent’s removal of a letter in Complainant’s mark does not eliminate confusing similarity pursuant to Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.org” to the disputed domain name. The Panel determines that the addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that Respondent’s <sotheby.org> domain name is confusingly similar to Complainant’s SOTHEBY’S mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 claims that Respondent is not commonly known by this name. The Panel notes that the WHOIS information identifies “DomainsByProxy.com Private Registration / Domains by Proxy, Inc.” as the registrant of the disputed domain name. Complainant asserts that Respondent’s personal name is not “Sotheby,” “Sothebys,” or “Sotheby’s.” Complainant contends that Respondent does not actually engage in any business or commerce under the name “Sotheby.” Complainant argues that Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to register or use Complainants’ SOTHEBY’S mark. Complainant claims Respondent has no relationship whatsoever to Complainant. Consequently, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent is currently using the disputed domain name to redirect Internet users to third-party websites presumably for the purpose of obtaining click-through or referral fees. Complainant asserts that Respondent’s domain name currently resolves to a website containing third-party sponsored links related to the real estate business that compete with Complainants’ real estate services. The Panel notes that Respondent’s disputed domain name resolves to a competing hyperlink directory featuring links titled “Property Appraisals,” “Sotheby Realty,” “Coldwell Banker Property,” and others. Thus, the Panel finds that Respondent’s use of the disputed domain name to list competing hyperlinks 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 Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Complainant has proven this element.
Complainant argues that Respondent’s registration and use of the disputed domain name to redirect and/or divert unsuspecting Internet users to unrelated and/or competing businesses with the intent of receiving commercial benefit constitutes registration and use in bad faith. The Panel notes that Respondent’s disputed domain name resolves to a hyperlink directory featuring competing links titled “Property Listing,” “Commercial Property Buyers,” “Property Management Leads,” and others. The Panel finds that Respondent is using the disputed domain name to host a hyperlink directory, the Panel also finds that Respondent has registered and is using the disputed domain name to attract Internet users for its own commercial gain under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant contends that given the prior worldwide use and registrations of Complainant’s SOTHEBY’S mark, including Complainant’s registrations in the United States, Respondent should be held to have actual or at a minimum constructive knowledge of such use. 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 determine that 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 has proven this element.
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 <sotheby.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: May 23, 2013
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