SPTC, Inc. and Sotheby's v. Zhang Wei / 张伟 / Xu Shuai Wei / 徐帅伟
Claim Number: FA2103001936089
Complainant is SPTC, Inc. and Sotheby's ("Complainant"), represented by Lyndsey Waddington of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Zhang Wei / 张伟 / Xu Shuai Wei / 徐帅伟 ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sothrbys.com> and <sthebys.com>, registered with DNSPod, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 10, 2021; the Forum received payment on March 10, 2021.
On March 11, 2021, DNSPod, Inc. confirmed by email to the Forum that the <sothrbys.com> and <sthebys.com> domain names are registered with DNSPod, Inc. and that Respondent is the current registrant of the names. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, 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 March 17, 2021, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 6, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@sothrbys.com, postmaster@sthebys.com. Also on March 17, 2021, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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 April 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, together with its predecessors and affiliated companies and licensees, has been engaged in the auction business since 1744, and currently offers auction and real estate services in countries around the world. Complainant owns trademark registrations for SOTHEBY'S in the United States and many other jurisdictions, and claims that the mark is world-famous as a result of long and continuous use and promotion.
Respondent registered the disputed domain names <sothrbys.com> and <sthebys.com> in January and February 2021. The domain names redirect users to a rotating series of third-party websites that purport to detect security risks and that allegedly attempt to install malware on the user's computer. Complainant states that Respondent is not commonly known by the disputed domain names, is not a licensee of Complainant, and has not been authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain names <sothrbys.com> and <sthebys.com> are confusingly similar to its SOTHEBY'S mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in 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 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Paragraph 3(c) of the Rules provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." Complainant alleges that the disputed domain names in this proceeding are effectively controlled by the same person or entity. Although the domain names are registered in different names, they target the same mark; were registered within seven days of one another; use the same registrar, privacy registration service, and hosting service; and redirect to similar or identical websites. Furthermore, Respondent has not come forward to dispute the allegation that it is one entity acting under multiple aliases, nor to object to the inclusion of both domain names in this proceeding. Under the circumstances, the Panel considers it appropriate to treat the disputed domain names as being under the common control of a single person or entity. See, e.g., Target Brands, Inc. v. Jugnu Kumar / Tinku Singh, FA 1935126 (Forum Apr. 7, 2021) (treating domain names as being effectively controlled by one person or entity based upon similarities between domain names and other circumstances); Disney Enterprises, Inc. v. Liang Tang/Zhi Ming Tang, FA 1797074 (Forum Aug. 20, 2018) (same). The Panel determines that both of the disputed domain names may properly be subject to this proceeding.
The Panel notes that the Registration Agreement is written in Chinese. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. Complainant requests that the proceeding be conducted in English, asserting that Respondent is capable of proceeding in English and noting inter alia that the disputed domain names correspond to an English-language mark. The Panel also notes that the domain names resolve to English-language websites, even when accessed through proxies located in non-English-speaking countries; that the Written Notice of the Complaint was served upon Respondent in both English and Chinese; and that Respondent has made no objection to Complainant's request that the proceeding be conducted in English. In addition, it appears that Respondent has previously targeted English-language marks and has been a party to numerous prior proceedings under the Policy, most or all of which have been conducted in English. See, e.g., Natixis v. 张伟 (Zhang Wei), D2020-2946 (WIPO Feb. 3, 2021) (ordering transfer of <natixid.com>); Government Employees Insurance Co. ("GEICO") v. 徐帅伟 (Xu Shuai Wei), D2020-2563 (WIPO Feb. 2, 2021) (ordering transfer of <geicomobileapp.com>); Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (ordering transfer of <nnationalcarrental.com>, <nationallcarrental.com>, <nattionalcarrental.com>, <nationalcarrenntal.com>, <nationalccarrental.com>, and <natioonalcarrental.com>); Pierre Balmain S.A. v. Zhang Wei, D2016-1815 (WIPO Oct. 24, 2016) (ordering transfer of <balmein.com>, <blamain.com> and <wwwbalmain.com>).
Under the circumstances, the Panel finds it likely that Respondent is conversant in the English language, has received adequate notice of this proceeding, and has chosen not to participate. The Panel sees no reason to require Complainant to bear the burden and expense of arranging for a Chinese translation that is likely unnecessary to afford proper notice to Respondent, and that in any event Respondent is likely to ignore. See, e.g., Wahl Clipper Corp. v. Ya Lei Zhu, FA 1932888 (Forum Mar. 18, 2021) (deciding to conduct proceeding in English in similar circumstances); Brooks Sports, Inc. v. Liuzhao, FA 1900494 (Forum July 24, 2020) (same); ALO, LLC v. Chen Jian Shan, FA 1819707 (Forum Jan. 14, 2019) (same). The Panel decides that English shall be the language of this proceeding.
The disputed domain names <sothrbys.com> and <sthebys.com> incorporate Complainant's registered SOTHEBY'S trademark, omitting the apostrophe and introducing minor typographical errors (substituting a letter "R" for the "E" in one instance, and omitting the letter "O" in the other), and appending the ".com" top-level domain. Such alterations, commonly referred to as "typosquatting," do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., SPTC, Inc. & Sotheby's v. Kathleen Kim, FA 1734152 (Forum July 14, 2017) (finding <sotheebys.com> confusingly similar to SOTHEBY'S); Sotheby's v. Forum LLC, FA 409449 (Forum Mar. 15, 2005) (finding <sothbys.com> confusingly similar to SOTHEBY'S). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's registered mark without authorization, and they are being used to redirect users to a rotating series of third-party websites that purport to detect security risks and that allegedly attempt to install malware on the user's computer. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Bittrex, Inc. v. Not disclosed Not disclosed / IceNetworks Ltd., FA 1797852 (Forum Aug. 20, 2018) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered two domain names that correspond to typographical variations on Complainant's famous mark and is using the domain names to redirect Internet users to a rotating series of third-party websites that allegedly attempt to install malware, presumably for commercial gain. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Crayola Properties, Inc. v. Domain Admin / Whois Privacy Corp., FA 1820716 (Forum Jan. 18, 2019) (finding bad faith in similar circumstances); Jack Daniel's Properties, Inc. v. Domain Admin / Whois Privacy Corp., FA 1762300 (Forum Jan. 15, 2018) (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothrbys.com> and <sthebys.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 13, 2021
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