Sotheby’s and SPTC, Inc. and SPTC Delaware, LLC v. Christopher Todd / SANCAS Realty
Claim Number: FA1712001764568
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 Christopher Todd / SANCAS Realty (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <belizesothebys.com>, registered with Google Inc..
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 J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 27, 2017; the Forum received payment on December 27, 2017.
On December 28, 2017, Google Inc. confirmed by e-mail to the Forum that the <belizesothebys.com> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google Inc. 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 January 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 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@belizesothebys.com. Also on January 3, 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 January 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <belizesothebys.com> domain name is confusingly similar to Complainant’s SOTHEBY’S mark.
2. Respondent does not have any rights or legitimate interests in the <belizesothebys.com> domain name.
3. Respondent registered and uses the <belizesothebys.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Sotheby’s and SPTC, Inc. and their predecessors have been engaged in the auction business under the SOTHEBY’S mark since 1744. Complainant holds a registration for its SOTHEBY’S mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,638,239, registered Mar. 19, 1991).
Respondent registered the <belizesothebys.com> domain name on November 19, 2015, and uses it to divert Internet users to Respondent’s competing website.
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 this proceeding, 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.”
The three Complainants are Sotheby’s and SPTC, Inc. and SPTC Delaware, LLC. Complainant Sotheby’s, a United Kingdom company, (“Sotheby’s UK”) and Complainant SPTC, Inc. are both subsidiaries of Sotheby’s, a United States Company (“Sotheby’s USA). Complainant’s 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.
Here, the Panel finds that there is a sufficient nexus between the Complainants, and elects to treat them all as a single entity in this proceeding, and thus they will be collectively referred to as “Complainant” in this Decision.
The Panel finds that Complainant has established rights in the SOTHEBY’S mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Respondent’s <belizesothebys.com> domain name contains the entire mark without the apostrophe, and simply adds the geographic term “BELIZE” and the gTLD “.com.” These changes do not distinguish the disputed domain name from Complainant’s mark. 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 Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Therefore, the Panel finds that Respondent’s <belizesothebys.com> domain name is confusingly similar to Complainant’s SOTHEBY’S mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its SOTHEBY’S mark. The WHOIS information for the <belizesothebys.com> domain name lists “Christopher Todd / SANCAS Realty” as the registrant. Therefore, the Panel finds that there is no evidence to suggest that Respondent is commonly known by the <belizesothebys.com> domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name); see also State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Complainant argues that Respondent does not use the <belizesothebys.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent uses the disputed domain name to divert Internet users to Respondent’s competing website, and provides screenshots showing that Respondent offers real estate brokerage services that directly compete with Complainant’s real estate services in Belize. Use of a domain name to divert Internet users to a website that competes with a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).” Accordingly, the Panel finds that Respondent’s use of the <belizesothebys.com> domain name to redirect Internet users to a competing website indicates that Respondent lacks rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the <belizesothebys.com> domain name in bad faith because it disrupts Complainant’s business by diverting Internet users to Respondent’s competing website. The Panel agrees and finds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also contends that Respondent created a likelihood of confusion with Complainant’s mark for Respondent’s commercial gain. Use of a domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein can evidence bad faith per Policy ¶ 4(b)(iv). See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). Complainant’s screenshots show that the <belizesothebys.com> domain name resolves to Respondent’s own competing website. Therefore, the Panel finds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent had actual knowledge of its rights in the SOTHEBY’S mark due to significant goodwill and consumer recognition around the world. The Panel notes that Complainant has been using the mark since 1744, and that Respondent uses it in a domain name to directly compete with Complainant. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the SOTHEBY’S mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds that Complainant has satisfied 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 <belizesothebys.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 30, 2018
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