SPTC, Inc. and Sotheby's v. Sorokina Galina Konstantinovna / Kuzmin Sergei Ivanovich
Claim Number: FA1802001772891
Complainant is SPTC, Inc. and Sotheby's ("Complainant"), represented by Robert J. English of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Sorokina Galina Konstantinovna / Kuzmin Sergei Ivanovich ("Respondent"), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sothebys-enchrese.com> and <sotheby-enchrese.com>, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2018; the Forum received payment on February 21, 2018.
On February 23, 2018, PDR Ltd. d/b/a Publicdomainregistry.Com confirmed by email to the Forum that the <sothebys-enchrese.com> and <sotheby-enchrese.com> domain names are registered with PDR Ltd. d/b/a Publicdomainregistry.Com and that Respondent is the current registrant of the names. 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 February 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2018 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@sothebys-enchrese.com, postmaster@sotheby-enchrese.com. Also on February 26, 2018, the 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 March 26, 2018, 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
Complainants and their predecessors, through affiliated companies
and licensees, have been engaged in the auction business since 1744. Complainants’ auction and real estate services are offered in numerous countries, and the SOTHEBY'S mark used in connection with these services is registered in more than 50 countries, including the United States and Russia. Complainant asserts, and prior panels under the Policy have determined, that SOTHEBY'S is a world-famous mark. See, e.g., Sotheby’s v. Forum LLC, FA 409449 (Forum Mar. 15, 2005).
The disputed domain name <sotheby-enchrese.com>, registered in February 2018, resolves to a website that displays Complainant's SOTHEBY'S mark above the word "enchères," the French word for "auction." The website purports to offer links to works of art and other items being sold at auction. The website has no connection with Complainant, nor do any of the items purportedly being auctioned on the site. Until recently, the disputed domain name <sothebys-enchrese.com>, registered in December 2017, also resolved to the same website. Complainant states that the content of Respondent's website appears to have been copied directly from the website of an unrelated auction company located in France. The contact information on Respondent's website is actually an address associated with a licensee of Complainant. Complainant asserts that the purported auction services offered through Respondent's website are not legitimate, and the disputed domain names are likely being used to operate a fraudulent phishing scheme. Complainant states that Respondent is not commonly known by the disputed domain names and has never been authorized by Complainant to use the SOTHEBY'S mark.
Complainant contends on the above grounds that the disputed domain names <sothebys-enchrese.com> and <sotheby-enchrese.com> are confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain names are 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 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.").
There are two Complainants in this proceeding. 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." See, e.g., Sotheby’s & SPTC, Inc. & SPTC Delaware, LLC v. Lola Tayler / Goldfinger LLC, FA 1749614 (Forum Oct. 15, 2017) (treating multiple Sotheby's complainants as a single entity). The Panel considers it appropriate to treat the two Complainants in this proceeding as a single entity.
Complainant has alleged that the disputed domain names in this proceeding are effectively controlled by the same person or entity. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."
The disputed domain names in this proceeding are nearly identical, were registered within the same two-month period, utilize the same registrar and name servers, and currently resolve or have resolved to identical websites. These facts, none of which have been challenged by either Respondent, are sufficient to establish a prima facie case that the disputed domain names are effectively controlled by the same person or entity. See, e.g., LegalZoom.com, Inc. v. Bin G Glu c/o Affordable Computer Solutions, Inc. a/k/a Domain Contact is Private, FA 1258178 (Forum June 9, 2009). The Panel considers it appropriate to treat the disputed domain names as effectively controlled by the same person or entity for purposes of this proceeding.
The disputed domain names <sothebys-enchrese.com> and <sotheby-enchrese.com> incorporate Complainant's famous SOTHEBY'S mark (omitting the apostrophe and, in one instance, the terminal "s"), adding a hyphen, a misspelling of the word "enchères" (French for "auction," the generic term for Complainant's business), and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., SPTC, Inc. v. Modern Limited-Cayman Web Development c/o Domain Administrator, FA 508936 (Forum Aug. 19, 2005) (finding <sothebyauction.com> confusingly similar to SOTHEBYS); SPTC, Inc. v. Bonanzas.com Inc., FA 409895 (Forum Mar. 14, 2005) (finding <sothebysauctions.com> confusingly similar to SOTHEBY'S). The Panel considers the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's famous mark without authorization, and are being used for websites that appear to be part of a fraudulent phishing scheme. See, e.g., eBay Inc. v. Mohd. mohd.Danish / westernenterprises, FA 1756923 (Forum Dec. 1, 2017) (finding lack of rights or legitimate interests under similar circumstances); Sotheby’s & SPTC, Inc. & SPTC Delaware, LLC v. Lola Tayler / Goldfinger LLC, supra (same).
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 the disputed 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's registration and use of domain names obviously intended to create confusion with Complainant, likely as part of a fraudulent phishing scheme, is indicative of bad faith under these provisions of the Policy. See, e.g., eBay Inc. v. Mohd. mohd.Danish / westernenterprises, supra (finding bad faith registration and use under similar circumstances); Sotheby’s & SPTC, Inc. & SPTC Delaware, LLC v. Lola Tayler / Goldfinger LLC, supra (same). The Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothebys-enchrese.com> and <sotheby-enchrese.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 26, 2018
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