national arbitration forum

 

DECISION

 

SPTC, Inc. and Sotheby's v. Speedplexer c/o Chad Moston

Claim Number: FA0808001221152

 

PARTIES

 

Complainant is SPTC, Inc. and Sotheby's (“Complainant”), represented by Sujata Chaudhri, of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is Speedplexer c/o Chad Moston (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <sothebydiamonds.com>, registered with Spot Domain LLC d/b/a Domainsite.com.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 21, 2008.

 

On August 20, 2008, Spot Domain LLC d/b/a Domainsite.com confirmed by e-mail to the National Arbitration Forum that the <sothebydiamonds.com> domain name is registered with Spot Domain LLC d/b/a Domainsite.com and that Respondent is the current registrant of the name.  Spot Domain LLC d/b/a Domainsite.com has verified that Respondent is bound by the Spot Domain LLC d/b/a Domainsite.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On August 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sothebydiamonds.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 18, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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."  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 makes the following assertions:

 

1.      Respondent’s <sothebydiamonds.com> domain name is confusingly similar to Complainant’s SOTHEBY’S DIAMONDS mark.

 

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

 

3.      Respondent registered and used the <sothebydiamonds.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

SPTC, Inc. and Sotheby’s (collectively “Complainant”), have been engaged in the auction industry since 1744, and have developed a reputation as a premier auction house for the sale of jewelry, fine art, and other collectibles.  Complainant developed its “Sotheby’s Diamonds” venture in 2005, which showcases jewelry and gems in the United States and several other countries.  Complainant has registered its SOTHEBY’S mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,638,329 issued March 19, 1991), as well as numerous other governmental trademark authorities worldwide.  Moreover, Complainant has registered its SOTHEBY’S DIAMONDS mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 4,590,246 issued July 27, 2007).  Complainant also owns and operates the <sothebys.com> and <sothebysdiamonds.com> domain names.

 

Respondent, Speedplexer c/o Chad Moston, registered the disputed <sothebydiamonds.com> domain name on May 11, 2008, and is using the disputed domain name to resolve to a website that features advertisements for third parties, some of whom compete directly with Complainant’s jewelry services.

 

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."

 

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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has submitted evidence of its trademark registrations with the OHIM for its SOTHEBY’S DIAMONDS mark.  The Panel therefore finds that Complainant has sufficient rights in the mark under Policy ¶ 4(a)(i).  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).

 

Respondent’s <sothebydiamonds.com> domain name includes Complainant’s mark, while omitting only the apostrophe and the last “s” in SOTHEBY’S.  Neither of these alterations carries any meaningful distinction.  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); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark).  Moreover, the addition of the top-level domain “.com” is without relevance in this analysis.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).  Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name.  Complainant must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests.  The Panel finds that Complainant has met its burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

There is no evidence in the record, including the WHOIS information, to conclude that Respondent is commonly known by the disputed domain name.  Moreover, Complainant contends that Respondent is not a licensee of Complainant, and that Respondent is not authorized to register or use the disputed domain name or the SOTHEBY’S DIAMONDS mark.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests under 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 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).

 

Respondent’s disputed domain name resolves to a website that features third-party advertisements, some of which lead to Complainant’s direct competitors.  The Panel infers that Respondent receives click-through fees through this activity.  Therefore, the Panel finds that Respondent has failed to create 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 Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit 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).”); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii) by disrupting Complainant’s business through the provision of competitive third-party advertisements on the resolving website.  See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent used the domain name to promote competing auction sites); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv) by intentionally creating a likelihood of confusion for commercial gain as to Complainant’s affiliation with Respondent’s confusingly similar disputed domain name and corresponding website.  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); see also University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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

 

 

 

 

Bruce E. Meyerson, Panelist

Dated:  September 30, 2008

 

 

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