SPTC, Inc. and SPTC Delaware, LLC v. Houston Luxury & International Real Estate
Claim Number: FA1509001639099
Complainant is SPTC, Inc. and SPTC Delaware, LLC (“Complainant”), represented by Robert J. English of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Houston Luxury & International Real Estate (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sothebyshouston.com>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2015; the Forum received payment on September 23, 2015.
On September 23, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sothebyshouston.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 September 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2015 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@sothebyshouston.com. Also on September 25, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that, through its predecessors and affiliated companies, it has engaged in the auction business using the SOTHEBY’S mark since 1744. Complainant also offers luxury real estate brokerage services. Complainant has numerous trademark registrations of the SOTHEBY’S mark including with the United States Patent and Trademark Office dating back to 1991. Its mark is well known around the world. The disputed domain name is confusingly similar to Complainant’s mark as the domain only removes the apostrophe in the mark, adds a geographic term, and adds the generic top-level domain (“gTLD”) “.com.” These differences do not differentiate the domain from the mark. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name and has not been authorized or licensed to use the SOTHEBY’S mark in any manner. Respondent’s disputed domain redirects to a website at <enidfineproperties.com> and offers luxury real estate services that directly compete with the services offered by Complainant. That use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith. Respondent, through use of the disputed domain name, is competing and disrupting Complainant’s business. Additionally, Respondent, through redirecting to a website that competes with Complainant, demonstrates the intention to attract and confuse internet users for commercial profit. Finally, Respondent had knowledge of Complainant’s rights in the SOTHEBY’S mark at the time of registration. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the registered trademark SOTHEBY’S. This mark is registered in many countries around the world and it is well known.
The disputed domain name was registered in 2014, well after Complainant registered its mark.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to redirect users to a web site that competes directly with Complainant.
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.”).
The disputed domain name is confusingly similar to the SOTHEBY’S mark because it removes the apostrophe in the mark, adds a geographic term, and adds the gTLD “.com.” Panels have found that the presence or absence of punctuation marks such as apostrophes is not relevant for a confusing similarity analysis. See Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”). Similarly, the gTLD “.com” has not been seen as a distinguishing factor when comparing a domain and a trademark under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Finally, adding a geographic term to a domain has been found not to overcome a finding of confusing similarity. See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Accordingly, the Panel finds that the disputed domain is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Respondent has not been commonly known by the disputed domain name and has not been authorized or licensed to use the SOTHEBY’S mark in any manner. Indeed, WHOIS information associated with the domain shows that Respondent registered the domain using the name “Houston Luxury & International Real Estate,” which does not resemble the domain name. Panels have found a respondent to not be commonly known by a disputed domain name where the WHOIS information did not match the domain and there was no other information in the record to show that a respondent was commonly known by the domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Pursuant to Policy ¶ 4(c)(ii), the Panel finds that Respondent is not commonly known by the disputed domain name.
Further, Respondent’s use of the disputed domain name, to redirect users to a website that competes with Complainant’s real estate services, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel concludes that Respondent’s use 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).
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002-0701 (WIPO Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO Oct. 13, 2000) .
Respondent (who did not reply to the Complainant’s contentions) has not presented any plausible explanation for its use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
The only plausible explanation for Respondent’s use of the SOTHEBY’S name and trademark in the Domain Name would appear to be to pass its purported business off as being affiliated with Complainant, thereby compelling the conclusion that Respondent is acting in bad faith. See Ciccone v. Parisi et al., D2000-0847 (WIPO Oct. 12, 2000) (“The only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”; domain name MADONNA.COM ordered transferred); Tata Sons Ltd. v. Advanced Information Technology Ass’n, D2000-0049 (WIPO Apr. 4, 2000) (transferring TATA.ORG to complainant where respondent was “obviously aware of the longstanding, enormous reputation of the name TATA” and “offered no explanation as to how it adopted the word TATA as a domain name”).
Indeed Respondent is using the disputed domain name to redirect users to its own website at <enidfineproperties.com>, which offers services that compete with Complainant. Past panels have found bad faith where a respondent used a disputed domain name that incorporates a complainant’s mark to redirect internet users to a respondent’s competing website. See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel thus finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Further, Respondent is attempting to attract and confuse internet users for commercial profit through the use of Complainant’s mark to redirect users to a commercial real estate website. Panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent was found to be operating a confusingly similar domain name to attract and divert internet users to its own website for commercial gain. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). The Panel finds that Respondent is using the disputed domain name to confuse and attract internet users for commercial gain. Consequently, it finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothebyshouston.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 23, 2015
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