Sotheby’s and SPTC, Inc. and SPTC Delaware, LLC v. Lola Tayler / Goldfinger LLC
Claim Number: FA1709001749614
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. Notwithstanding that there are three nominal Complainants in the instant dispute, they are collectively referred to as Complainant herein. Respondent is Lola Tayler / Goldfinger LLC (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sothbysrealty.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 18, 2017; the Forum received payment on September 18, 2017.
On September 20, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <sothbysrealty.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 2017 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@sothbysrealty.net. Also on September 20, 2017, 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 October 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant has been engaged in the auction business under the SOTHEBY’S mark since 1744 and has developed a reputation as a premier auction house for the sale of fine art and other collectibles.
Complainant has registered its SOTHEBY’S and SOTHEBY’S INTERNATIONAL REALTY marks with the United States Patent and Trademark Office.
Respondent’s <sothbysrealty.net> domain name is confusingly similar to Complainant’s marks as it is clearly a misspelled version of Complainant’s mark(s).
Respondent has no rights or legitimate interests in the <sothbysrealty.net> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its marks. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website that reproduces the official Sotheby’s International Realty website located at <sothebysrealty.com> in virtually all aspects. Further, the domain name may be used to operate a scam to phish for personal and financial information.
Respondent registered and uses the <sothbysrealty.net> domain name in bad faith. Respondent clearly chose the domain name because it is confusingly similar to Complainants’ well-known marks and intended to capitalize on that confusion to attract Internet users to its website and pass off as Complainant on the resolving webpage. Further, Respondent uses the confusingly similar domain name to phish for personal or financial information. Finally, there can be no doubt that Respondent was aware of Complainant’s SOTHEBY’S and SOTHEBY INTERNATIONAL REALTY mark when Respondent chose and registered the domain name, especially since Respondent’s website copies virtually all aspects of Complainant’s official website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the SOTHEBY’S and SOTHEBY’S INTERNATIONAL REALTY mark through its registration of such marks with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a website designed to mimic Complainant’s official website so that it may attempt to fraudulently pass itself off as Complainant for commercial gain.
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 the instant proceedings, 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.”
Complainant Sotheby’s, is a United Kingdom company, and Complainant SPTC, Inc. are both subsidiaries of Sotheby’s, a United States company. The Panel therefore finds that the three Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they shall be treated as if a single entity. Notably, there is no objection by Respondent to the three named complainants proceeding together as urged in the Complaint. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO registrations for both the SOTHEBY’S and SOTHEBY’S INTERNATIONAL REALTY trademarks demonstrate its rights in such marks for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i)”).
Respondent’s <sothbysrealty.net> domain name contains a recognizable misspelled variant of both Complainant’s SOTHEBY’S and SOTHEBY’S INTERNATIONAL REALTY trademarks. For example, the domain name contains the later mark’s significant term, SOTHEBY’S, less its “e” and less the mark’s spaces, apostrophe and INTERNATIONAL term, all appended with the top-level domain name “.net.” As discussed below, the domain name is quite like Complainant’s official <sothebysrealty.com> domain name but for the lack of the first “e” and a different top level, thereby adding to the domain name – trademark confusion. Significantly, the alterations to Complainant’s trademark(s) are insufficient to distinguish the at-issue domain name from Complainant’s marks for the purposes of the Policy ¶ 4 (a)(i). Therefore, the Panel finds that Respondent’s <sothbysrealty.net> domain name is confusingly similar to both Complainant’s SOTHEBY’S and SOTHEBY’S INTERNATIONAL REALTY trademarks. See Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”); see also, 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); see also, Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); see also, The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.); see also, Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademarks in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Lola Tayler / Goldfinger LLC.” The record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the <sothbysrealty.net> domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the at-issue domain name to address a commercial website that Respondent designed to appear as if it were Complainant’s official website. Indeed, Respondent’s <sothbysrealty.net> website is remarkably similar to Complainant’s <sothebysrealty.com> website not only because of the similarity of their domain names but also because of the respective websites’ comparable look and feel. Using the <sothbysrealty.net> domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <sothbysrealty.net> domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances, as well as other circumstances, are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent uses the confusingly similar domain name to pass itself off as Complainant in what appears to be the makings of a phishing scheme. Using the domain name in this manner demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv) and otherwise. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Additionally, Respondent’s intentional misspelling of Complainant’s trademarks in the confusingly similar domain name shows that Respondent is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name hoping that internet users will either inadvertently type the malformed string when searching for products or services associated with the target trademark or –as more likely in the instant case-- will otherwise confuse the malformed trademark laden domain name with its target trademark when viewing the domain name. Here, Respondent insignificantly modifies Complainant’s trademarks essentially by dropping the “e” in the trademarks’ principal term, SOTHEBY’S. Importantly, typosquatting is a hallmark of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered <sothbysrealty.net> knowing that Complainant had trademark rights in the SOTHEBY’S and SOTHEBY’S INTERNATIONAL REALTY marks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks and from Respondent’s use of Complainant’s trade dress on the <sothbysrealty.net> website. It is thus crystal clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademarks further indicates that Respondent registered and used the <sothbysrealty.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothbysrealty.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 15, 2017
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