SPTC, Inc. and Sotheby’s v. Anna B
Claim Number: FA1710001754747
Complainant is SPTC, Inc. and Sotheby’s (“Complainant”), represented by Robert J. English of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Anna B (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sothebysgraffiti.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2017; the Forum received payment on October 19, 2017.
On October 23, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sothebysgraffiti.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 October 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@sothebysgraffiti.com. Also on October 25, 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 November 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant and affiliates have engaged in auction business since 1744 and have developed a reputation as a premier auction house for the sale of fine art, collectibles, and real estate properties all over the world. 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 <sothebysgraffiti.com> domain name is confusingly similar to the SOTHEBY’S mark by incorporating the mark in its entirety, removing the apostrophe in the mark, adding the generic or descriptive term “graffiti,” and attaching a “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in <sothebysgraffiti.com>. Respondent is not commonly known by the at-issue domain name. Rather, WHOIS information identifies the registrant for <sothebysgraffiti.com> as “Anna B.” Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the domain name in attempts to pass off as Complainant by using the stylized SOTHEBY’S mark and likely attempts to obtain personal and financial information from users seeking to purchase art at auction.
Respondent registered and used <sothebysgraffiti.com> in bad faith. Respondent’s unrelated auction business with the intent to divert users for commercial gain creates confusion as to source, sponsorship, affiliation, or endorsement of Respondent’s site by incorporating a stylized SOTHEBY’S mark and diverting users seeking Complainant’s services. Respondent clearly had actual and constructive notice of the SOTHEBY’S mark due to extensive trademark registrations of the mark and Respondent’s attempts at passing off as Complainant on the resolving webpage. Finally, Respondent’s attempts to hide its identity by a privacy service is evidence of bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 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.”
Complainants Sotheby’s, a United Kingdom company, and Complainant SPTC, Inc. a Nevada company, claim to concurrently hold trademark registrations for variations of the SOTHEBY’S mark with the USPTO. Complainant SPTC, Inc. claims to hold a SOTHEBYS mark without an apostrophe with the USPTO. The Panel therefore finds that the Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they shall be treated as if a single entity. Notably, there is no objection by Respondent to the two complainants proceeding together. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
Complainant has rights in the mark through its registration of such marks with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a website it designed to mimic Complainant’s official website so that it may pass itself off as Complainant and fraudulently obtain proprietary information from site visitors.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO registrations for the SOTHEBY’S trademarks demonstrate its rights in such marks for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <sothebysgraffiti.com> domain name contains Complainant’s SOTHEBY’S trademark less the mark’s apostrophe followed the generic term “graffiti.” The domain name concludes with a necessary top-level domain name here “.com”. These alterations to Complainant’s trademark are insufficient to distinguish the at-issue domain name from Complainant’s mark, for the purposes of the Policy ¶ 4 (a)(i). Therefore, the Panel finds that Respondent’s <sothebysgraffiti.com> domain name is confusingly similar to Complainant’s SOTHEBY’S trademark. See Macy’s Retail Holdings, Inc. and its subsidiary Macy's West Stores, Inc. v. jiangchunyuan, FA 1685126 (Forum Sept. 6, 2016) (holding that “removal of an apostrophe and addition of the gTLD “.com,” are not relevant to a confusing similarity analysis”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also, SPTC, Inc. v. Sky Sothebys Magazine, FA0904001256322 (Forum, May 14, 2009) (omission of the apostrophe in the SOTHEBY’S mark does not sufficiently distinguish the domain name SKYSOTHEBYSMAG.COM from the mark).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademarks in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Anna B.” The record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the <sothebysgraffiti.com> domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Furthermore, Respondent uses the at-issue domain name to address a commercial website that Respondent designed to appear as if it were sponsored by Complainant. Indeed, Respondent’s <sothebysgraffiti.com> website displays a logo containing the SOTHEBY’S mark with the term “graffiti” beneath it. The intent of Respondent’s <sothebysgraffiti.com> website is to trick users into believing they are at an auction website related to Complainant and to have site visitors give up private financial data to Respondent. Using the <sothebysgraffiti.com> domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also 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).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <sothebysgraffiti.com> domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances, as well as other circumstance, are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent uses the confusingly similar domain name and copycat website to trade on the SOTHEBY’s mark. Respondent attempts to pass itself off as Complainant so as to facilitate a phishing scheme. Using the domain name in this manner demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv) and otherwise. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Additionally, Respondent registered <sothebysgraffiti.com> knowing that Complainant had trademark rights in the SOTHEBY’S trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, the fact that the at-issue domain name addresses an auction website, and from Respondent’s use of Complainant’s trademark on that website. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademarks further indicates that Respondent registered and used the <sothebysgraffiti.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothebysgraffiti.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 28, 2017
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