Sotheby’s v. Forum LLC
Claim
Number: FA0501000409449
Complainant is Sotheby’s (“Complainant”), represented
by William M. Borchard, of Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY 10036-6799. Respondent
is Forum LLC (“Respondent”),
Cpothall, PO Box 2331, Roseau, Roseau 00152 DM.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sothbys.com>, registered with Fabulous.com
Pty Ltd.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
25, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 27, 2005.
On
January 27, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the domain name <sothbys.com> is registered
with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the
name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com
Pty Ltd. 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
February 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 21, 2005 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@sothbys.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 28, 2005, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Honorable Paul A. Dorf (Ret.) 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sothbys.com>
domain name is confusingly similar to Complainant’s SOTHEBY’S mark.
2. Respondent does not have any rights or
legitimate interests in the <sothbys.com> domain name.
3. Respondent registered and used the <sothbys.com>
domain name in bad faith.
B. Respondent failed to submit a response in
this proceeding.
Complainant
and its predecessors, through their affiliated companies and licensees, have
been engaged in the auction business since 1744 and have developed a reputation
as a premier auction house for the sale of fine art and other collectibles.
Complainant and its predecessors have used the SOTHEBY’S mark in connection
with its auction services for over 200 years. Complainant has extensively
advertised and promoted its auction, real estate, and other goods and services
under the SOTHEBY’S mark, which has caused the mark to develop substantial
public recognition and goodwill. Complainant holds several worldwide trademark
registrations for the SOTHEBY’S mark, including U.S. Reg. No. 1,638,329 (issued
March 19, 1991), which is on file at the United States Patent and Trademark
Office. Complainant has also provided goods and services related to its various
businesses on its website located at the <sothebys.com> domain name since
1994.
Respondent
registered the <sothbys.com> domain name on May 15, 2002. The
disputed domain name resolves to a portal page that contains links to various
commercial websites. Some of the links direct Internet users to websites that
provide services that directly compete with Complainant’s real estate and fine
art auction services. Respondent is not a licensee of Complainant nor is
Respondent authorized to use Complainant’s marks for any purpose.
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.
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.
Complainant has
established that it has rights in the SOTHEBY’S mark through registration with
the United States Patent and Trademark Office and through continuous use of the
mark in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat.
Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201
(WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration
of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden
of refuting this assumption).
The <sothbys.com> domain name is
confusingly similar to Complainant’s SOTHEBY’S registered trademark because the
disputed domain name merely removes the letter “e” and an apostrophe from the
mark and adds the “.com” generic top-level domain. The intentional misspelling
of a famous mark, the omission of an apostrophe, and the addition of a generic
top-level domain do not distinguish the domain name from the mark. Respondent’s
“typosquatting” results in a domain name that is confusingly similar to
Complainant’s mark. See Chi-Chi’s,
Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the
domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S
mark, despite the omission of the apostrophe and hyphen from the mark); see
also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, the respondent did not create a distinct mark, and the
intentional misspelling rendered the domain name confusingly similar to the
complainant’s marks); 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 Complainant’s STATE FARM mark); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum
July 23, 2002) (finding the disputed domain name was a simple misspelling of
Complainant’s mark and was a classic example of typosquatting, which “renders the domain name confusingly similar to the altered
famous mark”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments unrefuted. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Further, because
Respondent has failed to submit a response, Respondent has failed to propose
any set of circumstances that could substantiate its rights or legitimate
interests in the disputed domain name. See Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name); see also
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be
deemed true).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). The record reveals that Respondent’s domain name redirects
unsuspecting Internet users to commercial websites that offer products and
services that are in competition with Complainant’s services. Respondent makes
opportunistic use of Complainant’s mark in order to capitalize on the goodwill
and fame associated with the SOTHEBY’S moniker. Thus, Respondent fails to
establish rights or legitimate interests in the domain name. See
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001)
(finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from
Complainant’s site to a competing website); see also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona
fide offering of services in a respondent’s operation of [a] web-site using a
domain name which is confusingly similar to the Complainant’s mark and for the
same business.”).
No
evidence before the Panel suggests Respondent is commonly known by the domain
name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates that the
registrant of the disputed domain name is known as “Forum LLC” and is not known
by the confusingly similar second-level domain that infringes on Complainant’s
SOTHEBY’S mark. Moreover, Respondent is not authorized or licensed to use
Complainant’s mark for any purpose. See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003)
(noting that “the
disputed domain name does not even correctly spell a cognizable phrase” in
finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
makes use of a confusingly similar variation of Complainant’s famous SOTHEBY’S
mark to ensnare unsuspecting Internet users. Respondent then redirects the
users to a website that provides links to various commercial websites. The
Panel infers that Respondent receives pay-per-click fees when Internet users
follow the links on its website. Respondent is profiting from the unauthorized
use of Complainant’s registered mark in its domain name. Such infringement is
what the Policy was intended to remedy and is bad faith registration and use
under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also Kmart v. Khan, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant’s mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet users to businesses that offer
services that compete with Complainant’s services. Respondent’s use of the <sothbys.com> domain name
establishes that Respondent registered and used the domain name for the purpose
of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii). See
S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith
by attracting Internet users to a website that competes with Complainant’s
business); see also EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from Complainant’s marks
suggests that Respondent, Complainant’s competitor, registered the names
primarily for the purpose of disrupting Complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June
12, 2000) (finding that Respondent has diverted business from Complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
removal of a single letter from Complainant’s well-known SOTHEBY’S mark,
resulting in a domain name that is confusingly similar to the mark, is evidence
of bad faith registration and use of the disputed domain name. Respondent
diverts Internet users who accidentally mistype Complainant’s mark to
Respondent’s competing website. The Panel finds that Respondent engaged in the
practice of typosquatting and, therefore, finds that Respondent registered and
used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off traffic
from its intended destination, by preying on Internauts who make common typing
errors. Typosquatting is inherently parasitic and of itself evidence of bad
faith.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding
that Respondent registered and used the
<zonelarm.com> domain name in bad faith pursuant to Policy
¶ 4(a)(iii) because the name was merely a typosquatted version of
Complainant’s ZONEALARM mark. “Typosquatting, itself is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the
<dermatalogica.com> domain name was a typosquatted version of
Complainant’s DERMALOGICA mark and stating, ”[t]yposquatting
itself is evidence of bad faith registration and use pursuant to Policy
4(a)(iii)”).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s well-known registered mark and simply removes a single letter,
suggests that Respondent knew of Complainant’s rights in the SOTHEBY’S mark.
Additionally, Complainant’s trademark registration on file at the United States
Patent and Trademark Office gave Respondent constructive notice of
Complainant’s mark. Moreover, the fact that Respondent’s website provides links
to Complainant’s competitors evidences Respondent’s knowledge of Complainant’s
rights in the mark. Thus, the Panel finds that Respondent chose the <sothbys.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use under Policy ¶ 4(a)(iii). See
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names
are so obviously connected with the Complainants that the use or registration
by anyone other than Complainants suggests ‘opportunistic bad faith’”); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”); see also Reuters
Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of Complainant’s
famous mark when registering the domain name as well as aware of the deception
and confusion that would inevitably follow if he used the domain names); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <sothbys.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
March 15, 2005
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