Sotheby’s and SPTC, Inc. and SPTC Delaware, LLC v. tomas curt
Claim Number: FA1702001718820
Complainant is Sotheby’s and SPTC, Inc. and SPTC Delaware, LLC (“Complainant”), represented by Robert J. English of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is tomas curt (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <so-the-by-srealty.com>, registered with Shinjiru Technology Sdn Bhd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 23, 2017; the Forum received payment on February 23, 2017.
On March 1, 2017, Shinjiru Technology Sdn Bhd confirmed by e-mail to the Forum that the <so-the-by-srealty.com> domain name is registered with Shinjiru Technology Sdn Bhd and that Respondent is the current registrant of the name. Shinjiru Technology Sdn Bhd has verified that Respondent is bound by the Shinjiru Technology Sdn Bhd 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 March 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2017 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@so-the-by-srealty.com. Also on March 2, 2017, 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 April 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant registered the SOTHEBY’S mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,638,329, registered Mar. 19, 1991). Respondent’s <so-the-by-srealty.com> domain name is confusingly similar as it deceptively inserts hyphens in three locations to create the words “so”, “the”, and “by”. Complainant also deletes the apostrophe and adds the generic or descriptive term “realty”, along with the generic top-level domain “.com” (“gTLD”).
ii) Respondent has no rights or legitimate interests in <so-the-by-srealty.com>. Respondent is not commonly known by the SOTHEBY’S mark, nor is Respondent sponsored or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use the mark in a domain name. Respondent also doesn’t use the disputed domain for any bona fide offering of goods or services as the disputed domain name has been used to further a scam to defraud consumers seeking to buy, sell, or rent real estate and timeshare properties. Further, Respondent uses the disputed domain name to pass off and impersonate Complainant to create a false association with Complainant’s mark.
iii) Respondent registered and uses the <so-the-by-srealty.com> in bad faith. Respondent chose the disputed domain name because it is confusingly similar to Complainant and its mark, and intended to capitalize on that confusion. Relatedly, Respondent attempts to pass off as Complainant for commercial gain. Additionally, Respondent uses the disputed domain name to offer fake and fraudulent services directly competing with Complainant’s services. Further, Respondent, when registering the domain name at issue, used false contact information to conceal its identity. Finally, Respondent must have had actual or constructive knowledge of Complainant’s SOTHEBY’S mark because of the longstanding notoriety of Complainant, and because Respondent references Complainant on the resolving webpage.
B. Respondent
Respondent did not submit a Response in this Proceeding. The Panel notes that Respondent first registered <so-the-by-srealty.com> on January 31, 2017.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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(f), 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 (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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are three 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 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 three Complainants in this matter: Sotheby’s; SPTC, Inc.; and, SPTC Delaware, LLC. Complainants claim that Sotheby’s, a United Kingdom company, and SPTC, Inc. are both subsidiaries of Sotheby’s, a United States company. SPTC, Inc. is the parent company of SPTC Delaware, LLC.
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 Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (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 Invs., Inc. v. Quality Hosting, FA 208854 (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 Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (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 (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.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it treats them all as a single entity in this proceeding.
Complainant engages in the auction business for the sale of art and other collectibles, and also engages in the sale of real property. Complainant has operated under the SOTHEBY’S mark since 1744, and currently offers its services in numerous countries around the world. Complainant claims it registered the SOTHEBY’S mark with the USPTO (e.g., Reg. No. 1,638,329, registered Mar. 19, 1991). Panels have established that registration of a mark with the USPTO sufficiently recognizes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, the Panel sees that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that the <so-the-by-srealty.com> domain name is confusingly similar to the SOTHEBY’S mark as it adds and removes punctuation; adds a generic or descriptive term; and adds a gTLD. Similar changes to marks have not sufficiently distinguished domain names for these purposes. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Similarly, the use of a gTLD is irrelevant for the analysis of confusingly similar. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). Complainant claims that Respondent’s <so-the-by-srealty.com> mark is confusingly similar as it inserts three hyphens in three different locations to create the words “so”, “the”, and “by”. Complainant also deletes the apostrophe and adds the generic or descriptive term “realty”, along with the gTLD “.com”. Accordingly, the Panel agrees with Complainant and finds that Respondent has not sufficiently distinguished the disputed domain name for the purposes of 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 (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 (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 contends that Respondent has no rights or legitimate interests in <so-the-by-srealty.com>. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Tomas Curt” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the SOTHEBY’S mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by <so-the-by-srealty.com> under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent uses the <so-the-by-srealty.com> domain name to fraudulently offer services in direct competition with Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant lacks a bona fide offering of goods or services. See Coryn Group, Inc. v. Media Insight, FA 198959 (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). Complainant contends that the disputed domain name has been used by Respondent to further a scam to defraud consumers seeking to buy, sell, or rent real estate and timeshare properties, all services offered by Complainant. The Panel agrees accordingly that this conduct lacks a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Lastly, Complainant argues that Respondent also doesn’t use the disputed domain name for any bona fide offering of goods or services because it attempts to pass off as Complainant. Passing off can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). On the disputed domain name, Respondent offers identical services as Complainant; uses Complainant’s name directly in connection with these services; and provides the history of Complainant’s services. The Panel concludes that Respondent’s use of the <so-the-by-srealty.com> domain name indeed lacks a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant first argues that Respondent disrupts Complainant’s business for commercial gain by creating a likelihood for confusion. Leading potential users to mistakenly believe that an association between a complainant and a respondent can evince bad faith. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Complainant argues that Respondent’s confusingly similar domain name resolves to a webpage that uses Complainant’s marks, which would lead users to believe that an association existed between Complainant and Respondent when no such relationship exists. The Panel agrees that the confusing similarity between Complainant’s mark and the <so-the-by-srealty.com> domain name created confusion in prospective user and thus demonstrates bad faith registration and use.
Additionally, Complainant argues that Respondent uses the disputed domain in bad faith because it attempts to pass off as Complainant. Passing off can evince bad faith registration and use. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). Complainant claims that the domain name resolves in a webpage that states Complainant’s SOTHEBY’S mark on numerous occasions, and lists Complainant’s history in the business. Thus, the Panel agrees that Respondent attempted to pass off as Complainant and further evidences bad faith.
Complainant next argues that Respondent registered and is using the <so-the-by-srealty.com> in bad faith by attempting to intercept users seeking Complainant’s services and commercially benefit by using a confusingly similar domain name and offering competing services. Using a confusingly similar domain name to offer services in direct competition can help prove bad faith. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant alleges that Respondent, by using a confusingly similar domain, offers fake and fraudulent real estate services that directly compete with Complainant and its services. The Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith.
Further, Complainant claims that Respondent registered the disputed domain name in bad faith by using false and fraudulent information for its registration. Falsifying registration information can evince bad faith. See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Here, Complainant claims that the name in the registration information lists a false address, and possibly a false name as well. The Panel agrees and holds that falsifying its registration information constitutes bad faith registration.
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s mark. However, Panels may disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel infers, however, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the SOTHEBY’S mark because of the longstanding notoriety of Complainant, and because Respondent references Complainant on the resolving webpage. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <so-the-by-srealty.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 14, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page