SPTC, Inc. and Sotheby’s v. Ricardo Francois / Tuxedo Capital
Claim Number: FA2307002055239
Complainants are SPTC, Inc. and Sotheby’s (“Complainants”), represented by Robert J. English of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Ricardo Francois / Tuxedo Capital (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sothebyshotels.com>, registered with Google LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Jonathan Agmon as Panelist.
Complainants submitted a Complaint to Forum electronically on July 28, 2023; Forum received payment on July 28, 2023.
On July 31, 2023, Google LLC confirmed by e-mail to Forum that the <sothebyshotels.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 August 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 2023 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@sothebyshotels.com. Also on August 3, 2023, 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.
A timely Response was received and determined to be complete on August 15, 2023. An Additional Submission was received from Complainants and determined to be complete on August 16, 2023.
Two Additional Submissions were received from Respondent by Forum on August 22, 2023. As Rule 7 of Forum’s Supplemental Rules To ICANN's Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) was not met, it would be prejudicial for the Panel to consider Respondent’s additional submission.
On August 16, 2023, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, Forum appointed Jonathan Agmon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainants request that the domain name be transferred from Respondent to Complainants.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
The Complaint was filed by two Complainants against a single Respondent.
The Policy does not expressly provide for or prohibits the consolidation of multiple complainants.
Complainants are the holders of the SOTHEBY’S and/or SOTHEBYS marks. Complainants and their predecessors, through their affiliates and licensees, have extensively advertised and promoted the SOTHEBY’S and/or SOTHEBYS mark all over the world.
The Panel finds that the Complainants have a common grievance against the domain name registrant as they have a common legal interest in the trademark rights on which this Complaint is based, and it is equitable and procedurally efficient to permit the consolidation of their complaints.
A. Complainants
Complainants and their 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. In addition to its auction business, Complainants, through their exclusive licensee, are engaged in the business of selling fine real estate properties in a range of locations, prices and distinctive styles. Complainants’ auction and real estate services are offered in numerous countries all over the world.
Complainants are the registered proprietor of the following trademarks in the United States:-
a) U.S. Registration No. 1638329 for SOTHBY’S registered on March 19, 1991;
b) U.S. Registration No. 2308657 for SOTHEBY'S registered on January 18, 2000;
c) U.S. Registration No. 2386853 for SOTHEBY’S registered on September 19, 2000;
d) U.S. Registration No. 2428011 for SOTHEBYS registered on February 13, 2001;
e) U.S. Registration No. 2577652 for SOTHEBY’S registered on June 11, 2002; and
f) U.S. Registration No. 3148164 for SOTHEBY’S registered on September 26, 2006.
Complainants have owned and operated the domain name <sothebys.com> since December 20, 1994.
The disputed domain name, <sothebyshotels.com>, was registered on July 6, 2023, and is identical or confusingly similar to the registered SOTHEBY’S and/or SOTHEBYS trademark as it wholly incorporates said mark with the addition of the descriptive term “hotels”. The said addition does not obviate confusion with Complainants’ trademark. Further, the addition of the generic top-level domain name “.com” does not alter the similarity of the disputed domain name
Respondent is not commonly known as “Sotheby’s” or “Sothebys”. Respondent’s personal name is not Sothebys, Sotheby’s, or Sothebyhotels. Instead, the domain name is associated with an individual or organization named Ricardo Francois or Tuxedo Capital.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name currently resolves to a website template page, purporting to provide hotel-related services. However, the services offered on the website are fake. Further, the template used on the website is incomplete, evidenced by (1) the header has an unfilled spot that says “logo”; (2) all the links on the website link back to the main page; (3) the contact email is listed as “support@example.com”; and (4) the photographs of individuals on the site purporting to give consumer review also appear on other unrelated websites with different names that do not match those on the Respondent’s website. The offering of fake services is not considered a legitimate or bona fide use of a domain name.
During the communication between Complainants and Respondent, Respondent stated that the disputed domain name was for sale. Further, Respondent also informed Complainants that he had listed the disputed domain name on the domain name market website Sedo.com for a price that far exceeds the registration costs of the disputed domain name. This further demonstrates a lack of legitimate use of the disputed domain name.
Complainants’ SOTHEBY’S and/or SOTHEBYS marks are so well-known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered it to take advantage of and intentionally trade on the goodwill associated with Complainants’ marks. This intent was admitted within the correspondence between Respondent and Complainants, including the initial unsolicited proposal to develop a hotel based on Respondent’s prior unauthorized registration of the disputed domain name, and Respondent’s subsequent suggestion that the parties “consider the domain name as ‘Soth & Eby's Hotels’ for now,”.
Respondent registered the disputed domain name in bad faith. The disputed domain name resolves to a parked website containing links to webpages offering (fake) services that compete with Complainants’ services. The fact that Respondent offered to sell the disputed domain name for a price that far exceeds that of the registration costs is evidence of bad faith. This was done in spite of Complainants sending Respondent a demand letter.
It is evident that Respondent has actual knowledge of Complainants’ well-known SOTHEBY’S and/or SOTHEBYS trademarks and did so when registering the disputed domain name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, it sent an email to Forum on August 15, 2023.
Respondent stated that he purchased the disputed domain name after seeing the global partnership page on Complainants’ website. He did so as he allegedly intended to pitch a business partnership with Complainants for 2 construction projects. In support of this, Respondent provided 2 links to the purported said projects. Respondent claimed that if he had not purchased the disputed domain name before contacting Complainants, Complainants would have purchased the domain name and proceeded to pursue the construction projects without Respondent. Respondent also implied that Complainants lodged the Complaint to seize Respondent’s rightful property.
Respondent claimed to have corresponded with Complainants, proposing a “Founder’s Club”, and allegedly showing Complainants a method of fundraising developed by Respondent. Respondent also admitted to (1) buying a Wordpress theme, presumably for the website that disputed domain name resolved to, and (2) listing the disputed name on Sedo.com.
Respondent reiterated that he was open to selling the disputed domain name, either on Sedo.com or otherwise, and admitted that the only purpose of the disputed domain name was to sell it to Complainants. Respondent also alleged that if Complainants were so concerned about their trademark, they would have registered the disputed domain name first.
Respondent implied that Complaint was racially motivated, and that Complainants saw Respondent as nothing more than a racial stereotype.
C. Additional Complainants’ Submissions
Complainants pointed out that Respondent failed to rebut Complainants’ submissions and admitted in his email that (1) Complainants had prior rights in the SOTHEBY’S mark; (2) Respondent had prior knowledge of Complainants’ mark at the time of registration of the disputed domain name; (3) Respondent purchased the disputed domain name in order to sell it to Complainants.
Complainants highlighted that Respondent’s email demonstrates that he has no legitimate right or interest in the disputed domain name and is using the disputed domain name in bad faith. Complainants also highlighted Respondent’s mistaken belief that intentionally registering a domain containing a famous registered trademark solely for the purpose of soliciting a business partnership and/or selling it to the brand owner was permissible. Complainants also noted that Respondent’s repeated suggestions, even in the response email, that Complainants purchase the disputed domain name from Respondent to be further evidence of Respondent’s lack of right or legitimate interest in the domain, as well as bad faith.
D. Additional Respondent Submissions
Two Additional Submission were received from Respondent by Forum on August 22, 2023. However, Rule 7 of the Supplemental Rules was not met for the first Additional Submission by Respondent, and it would be prejudicial for the Panel to consider Respondent’s first Additional Submission.
The second Additional Submission from Respondent includes a Memorandum and Recommendation titled “OmniMarks Umbrella: Sotheby’s Case Study - Navigating Diverse Sectors” prepared by Respondent. The Memorandum suggests certain changes to Complainant’s trademark. Further, the submission contains a hypothetical situation which does not further Respondent’s position. Respondent also provides that he is no longer interested in a partnership with Complainants.
The Panel has therefore elected to not consider Respondent’s first Additional Submission pursuant to Rule 7 of the Supplemental Rules.
The Panel notes that full consideration of the first Additional Submission would not have changed the outcome of this decision.
- Complainants’ own rights in the SOTHEBY’S and SOTHEBYS trademarks.
- The <sothebyshotels.com> domain name is confusingly similar to the SOTHEBY’S and/or SOTHEBYS trademarks in which Complainants have rights.
- Complainants have established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, which has not been rebutted.
- Respondent’s registration and use of the disputed domain name is in bad faith. The disputed domain name incorporates the registered SOTHEBY’S and/or SOTHEBYS trademarks in combination with a descriptive term, which correspond to the goods and services Complainants offer, all of which creates a presumption of bad faith.
- Respondent’s conduct, choice of descriptive terms in the disputed domain names, and manner of use of the <sothebyshotels.com> domain name support a finding of bad faith.
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 Complainants must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names have been registered and are being used in bad faith.
The Panel shall decide this administrative proceeding on the basis of Complainants’ and Respondent’s representations pursuant to paragraphs 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum Jun, 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Policy ¶ 4(a)(i) requires Complainants to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights.
Registration of a mark with the USPTO suffices to establish the rights under the Policy. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018). (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such a mark for the purposes of Policy ¶ 4(a)(i). Complainants provided evidence that it owns the SOTHEBY’S trademark in the form of trademark certificates from the USPTO.
The disputed domain name <sothebyshotels.com> contains Complainants’ SOTHEBY’S and/or SOTHEBYS trademark(s) albeit with the omission of the apostrophe, and/or the addition of the descriptive term “hotels”. The Panel is of the view that these additions/omissions do not prevent a finding of confusing similarity with the SOTHEBY’S and/or SOTHEBYS trade mark since the SOTHEBY’S and/or SOTHEBYS trade mark is recognizable within the disputed domain name and “hotels” is a term descriptive of Complainants’ products. See principles set out in WIPO Jurisprudential Overview 3.0 at ¶1.7 and 1.8; see also Stardust Materials v. Neil Ivey, FA 940188 (Forum Jun. 1, 2021).
The Panel accepts Complainants’ submission that the deletion of an apostrophe in the disputed domain name has no legal significance because it is an inherent limitation of the Internet naming system. See 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).
The disputed domain name <sothebyshotels.com> contains Complainants’ SOTHEBY’S and/or SOTHEBYS trademark in its entirety and is differentiated from the trademark merely by the addition of the generic term “hotels” which correspond to Complainants’ field of business. It is trite that the addition of descriptive terms to a recognized trademark does not obviate the confusing similarity of a domain name to a registered trademark.
Accordingly, the Panel finds that the domain name <sothebyshotels.com> is confusingly similar under Policy ¶ 4(a)(i).
The Policy ¶ 4(a)(ii) requires Complainants to show that Respondent has no rights or interests in respect of the disputed domain names. Once Complainants establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to Respondent to show that it has rights or legitimate interests in respect of the disputed domain names. See WIPO Jurisprudential Overview 3.0 at ¶2.1 and Google LLC v. Alex Xavier/ Alexander Xavier / Sustineri Foresight Ltd, FA 28296 (Forum Mar. 15, 2023).
The Panel finds that Complainants have established a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain names. Complainants provided evidence that they own trademark registrations of the SOTHEBY’S and SOTHEBYS marks long before the date the disputed domain names were registered. Complainant is not affiliated with, nor has it licensed or otherwise permitted Respondent to use Complainant’s trademarks. See IndyMac Bank F.S.B. v. Grant Eshback d/b/a eMit Mortgage, Inc., 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 of that it is commonly known by the disputed domain name).
There is no evidence that Respondent is commonly known by the disputed domain name. See WIPO Jurisprudential Overview 3.0, ¶2.3 and Foot Locker Retail, Inc. v. Gibson, FA 139693 (Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).
The Panel agrees with Complainants’ assertion that Respondent is not making a legitimate noncommercial or fair use of the domain name. Respondent’s explanation that he registered the disputed domain name to pursue a business proposal with Complainants is feeble and far-fetched at best. This is supported by the incomplete template design of the website, and the many iterations of theme changes it went through. The resolution of the disputed domain name to a parked page also does not provide any basis for finding in favor of Respondent under Policy ¶ 4(a)(ii). See Victoria’s Secret Stores Brand Management, Inc. v. Travis Martin c/o Dynadot Privacy, FA 1250363 (Forum Apr. 22, 2009) (“the failure of Respondent’s confusingly similar <victoriassecrret.com> domain name to resolve to any website is evidence that Respondent has not made a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”)
Further, Respondent has admitted that the sole purpose the disputed domain name serves is to be sold, to Complainants or otherwise. This is strong evidence of the non-legitimate use of the disputed domain name.
In the response email, Respondent did not proffer any relevant evidence showing rights or legitimate interests in the disputed domain names.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the disputed domain names. The Policy ¶ 4(a)(ii) has been satisfied.
The Panel also finds that Complainants have established that the disputed domain name was registered and is being used in bad faith.
Respondent did not dispute that Complainants had rights in the SOTHEBY’S and/or SOTHEBYS marks long before he registered the disputed domain name.
Respondent also acknowledged that he knew of the Complainants and their trademarks and was registering the disputed domain name in order to propose a cooperation with Complainants. When this plan did not materialize, Respondent decided to offer the disputed domain name to the Complainant at a sum of US$10M, which is significantly more than his documented out of pocket costs for registering the disputed domain name.
The disputed domain name was used for the Respondent’s website which, at one point or another, contained an incomplete template layout resembling a hotel’s website and offered what appeared to be fake hotel-related services. These hotel-related services are similar to services Complainants offer under its SOTHEBY’S and/or SOTHEBYS trademarks. Respondent did not deny these facts.
As mentioned above, Respondent stated in his second additional submission that he is no longer interested in pursuing a partnership with Complainants. That being the case, and given that he has still not surrendered the disputed domain name to Complainants, reinforces the case that Respondent registered and used the domain name in bad faith.
Respondent was also well aware of Complainant’s SOTHEBY’S and/or SOTHEBYS, and the associated reputation and/or fame or the marks. In fact, this was the main reason, and was admitted by Respondent, as to why the disputed domain name was chosen at the outset and used in the manner it was used.
Panels in earlier UDRP cases have consistently found that the mere registration of a domain name that is confusingly similar to a famous or widely known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (see ¶3.1.4 of the WIPO Overview 3.0).
To summarize, the factors which the Panel has taken into account in this case include:
(i) the nature of the domain name (in this case, incorporating Complainant’s widely-known mark);
(ii) the content of the Respondent’s website to which the disputed domain name directs;
(iii) a clear absence of rights or legitimate interests coupled with no credible explanation for Respondent’s choice of the domain name.
(iv) Respondent’s own admissions as to his intentions and motives behind registering the disputed domain name and particularly the fact that it targeted the Complainants and their mark.
(See ¶3.2.1 of the WIPO Overview 3.0.)
Policy ¶ 4(a)(iii) has therefore been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothebyshotels.com> domain name be TRANSFERRED from Respondent to Complainants in the manner that Complainants’ deem fit.
Jonathan Agmon as Panelist
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