SPTC, Inc. and Sotheby’s v. Moirano, M
Claim Number: FA1810001813071
Complainant is SPTC, Inc. and Sotheby’s (“Complainant”), represented by Robert J. English of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Moirano, M (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sothebysstudios.com>, registered with Network Solutions, 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 22, 2018; the Forum received payment on October 22, 2018.
On October 23, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <sothebysstudios.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2018 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@sothebysstudios.com. Also on October 24, 2018, 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 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, Sotheby’s and SPTC, Inc., is a well-known auctioneering and real estate company. Complainant has rights in the SOTHEBY’S mark based upon its registration of the mark with trademark agencies around the world (e.g., Reg. No. 2,428,011 registered Feb. 13, 2001). See Compl. Ex. B. Respondent’s <sothebysstudios.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the SOTHEBY’S mark in its entirety in the domain name, deletes the apostrophe, adds the descriptive term “studios”, and adds the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the <sothebysstudios.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users to a parked page with links related to Complainant’s business.
Respondent registered and uses the <sothebysstudios.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name’s resolving website, which features advertising links to Complainant’s competitors. Further, Respondent had constructive and/or actual knowledge of Complainant’s rights in the SOTHEBY’S mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <sothebysstudios.com>, was registered on July 14, 2018
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 Panel finds that the disputed domain name, <sothebysstudios.com>, is confusingly similar to Complainant’s trademark, SOTHEBY’S. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by incorporating the SOTHEBY’S mark in its entirety in the domain name, deleting the apostrophe, adding the descriptive term “studios”, and adding the generic top-level domain (“gTLD”) “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel also finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the dispute domain name.
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent apparently uses the disputed domain name to divert users to a parked page with links related to Complainant’s business.
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the dispute domain name.
The Panel further finds that Respondent engaged in bad faith use and registration of the disputed domain name. Complainant claims that Respondent registered and uses the <sothebysstudios.com> domain name in bad faith because Respondent uses the domain to disrupt Complainant’s business and attract, for commercial gain, users to Respondent’s parked page. Use of a disputed domain to divert users to a parked page with competing, advertising links may evince bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Complainant provides screenshots of the disputed domain name’s resolving website, which features a list of links related to Complainant’s art and real estate services. See Compl. Ex. F.
As such, the Panel finds that Respondent registered and uses the <sothebysstudios.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SOTHEBY’S mark prior to registering the <sothebysstudios.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii). Here, Complainant offers its trademark registrations, screenshots of its website, and WHOIS data for its website as evidence of the fame of its mark. See Compl. Exs. B-D. Complainant also cites the confusing similarity between the SOTHEBY’S mark and the <sothebysstudios.com> domain. As such, given the fame of Complainant’s mark and the totality of the circumstances, the Panel finds that Respondent registered the <sothebysstudios.com> domain name with actual knowledge of Complainant’s rights in the SOTHEBY’S mark.
As such, the Panel finds that Respondent engaged in bad faith use and registration of 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 <sothebysstudios.com> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: November 17, 2018
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