SPTC, Inc. v. Bonanzas.com Inc.
Claim
Number: FA0501000409895
Complainant is SPTC, Inc. (“Complainant”), represented
by William M. Borchard, of Cowan, Liebowitz and Latman, P.C., 1133 Avenue of the Americas, New York, NY 10036-6799. Respondent
is Bonanzas.com Inc. (“Respondent”),
4751 Lindle Road, Suite 112, Harrisburg, PA 17109.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sothebysauctions.com>, registered with Bulkregister,
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 27, 2005.
On
February 2, 2005, Bulkregister, LLC confirmed by e-mail to the National Arbitration
Forum that the domain name <sothebysauctions.com> is registered
with Bulkregister, LLC and that Respondent is the current registrant of the
name. Bulkregister, LLC has verified that Respondent is bound by the Bulkregister,
LLC 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 2, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 22, 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@sothebysauctions.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
Sandra Franklin 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 <sothebysauctions.com>
domain name is confusingly similar to Complainant’s SOTHEBY’S mark.
2. Respondent does not have any rights or
legitimate interests in the <sothebysauctions.com> domain name.
3. Respondent registered and used the <sothebysauctions.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 <sothebysauctions.com> domain name on November 29,
2001. The disputed domain name resolves to a portal page that contains several
banner advertisements and links to various commercial websites. Some of the
links direct Internet users to websites that provide services that directly
compete with Complainant’s auction services. Respondent is not a licensee of
Complainant nor is Respondent authorized to use Complainant’s mark 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) noting 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 <sothebysauctions.com> domain
name is confusingly similar to Complainant’s SOTHEBY’S registered trademark
because the domain name merely adds the generic word “auctions,” which is also
descriptive of Complainant’s business, and the “.com” generic top-level domain
and removes an apostrophe from the mark. The omission of an apostrophe and the
addition of a generic word and a generic top-level domain do not distinguish
the domain name from the 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 the 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 Brown
& Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) finding that the <hoylecasino.net>
domain name was confusingly similar to the complainant’s HOYLE mark, and that
the addition of “casino,” a generic word describing the type of business in
which the complainant was engaged, did not take the disputed domain name out of
the realm of confusing similarity; see
also Christie’s Inc.
v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) finding
that the domain name <christiesauction.com> was confusingly similar to
the complainant’s mark since it merely added the word “auction” used in its
generic sense.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Complainant has alleged
that Respondent lacks rights and legitimate interests in the <sothebysauctions.com>
domain name. Complainant’s submission has gone unopposed and its arguments
unrefuted. 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, the respondent 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 a respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of a 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). Respondent’s domain name, which is confusingly similar to
Complainant’s mark, redirects unsuspecting Internet users to a portal website
that subjects visitors to banner advertisements and provides links to other
commercial websites, including websites that offer goods and services that are
in competition with Complainant. The Panel infers that Respondent receives
pay-per-click fees when Internet users follow the links on its website.
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 the respondent generated commercial gain by
intentionally and misleadingly diverting users away from the 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 web-site using a domain name which is confusingly similar to the
Complainant’s mark and for the same business.”); see also Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) holding
that the respondent’s use of the disputed domain name to host a series of
hyperlinks and a banner advertisement was neither a bona fide offering of goods
or services nor a legitimate noncommercial or fair use of the domain name.
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 “Bonanza.com Inc.” 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. Thus, the Panel finds that
Respondent lacks rights and legitimate interests in the domain name under
Policy ¶ 4(a)(ii). See Tercent Inc.
v. 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 RMO, Inc.
v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting
Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail”.
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
uses a confusingly similar variation of Complainant’s well-known 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. Therefore, 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 the respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv) because the 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 a respondent profits
from its diversionary use of a complainant’s mark when the domain name resolves
to commercial websites and the respondent fails to contest the Complaint, it
may be concluded that the 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 goods
and services that compete with Complainant’s goods and services. Respondent’s
use of the <sothebysauctions.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 that the respondent acted in bad
faith by attracting Internet users to a website that competed with the
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 the complainant’s marks suggested that the
respondent, a competitor of the complainant, registered the domain names
primarily for the purpose of disrupting the complainant’s business; see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) finding that the
respondent diverted business from the 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
registration of the disputed domain name, a domain name that is confusingly
similar to Complainant’s well-known registered mark, 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 <sothebysauctions.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 the
respondent demonstrated bad faith where it was aware of the complainant’s
famous mark when registering the domain name and was aware of the deception and
confusion that would inevitably follow if it 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 <sothebysauctions.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
March 14, 2005
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