SPTC, Inc. and Sotheby’s v. Tony Yeh shiun
Claim Number: FA1810001810835
Complainant is SPTC, Inc. and Sotheby’s (“Complainant”), represented by Robert J. English of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Tony Yeh shiun (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sothebys.email>, registered with Key-Systems, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 8, 2018; the Forum received payment on October 8, 2018.
On October 9, 2018, Key-Systems, LLC confirmed by e-mail to the Forum that the <sothebys.email> domain name is registered with Key-Systems, LLC and that Respondent is the current registrant of the name. Key-Systems, LLC has verified that Respondent is bound by the Key-Systems, 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 October 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@sothebys.email. Also on October 10, 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 November 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.” There are two Complainants in this matter: SPTC, Inc. and Sotheby’s. 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. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006). It appears from the record that the two complaining parties are sufficiently related such that they may proceed as a single complainant. Thus, the two Complainants will be collectively referred to as “Complainant.”
PRELIMINARY ISSUE: SUGGESTED LANGUAGE REQUEST
Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the French language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that the Respondent is conversant and proficient in the English language. Accordingly, the Panel holds that this proceeding should be in English.
A. Complainant
1. Sotheby’s is a well-known auctioneering and real estate company. Complainant has rights in the SOTHEBY’S mark based upon its registration of the mark with trademark agencies around the world (e.g., Reg. No. 2,428,011 registered Feb. 13, 2001). Respondent’s <sothebys.email>[i] domain name is confusingly similar to Complainant’s mark because Respondent incorporates the SOTHEBY’S mark in its entirety in the domain name, deletes the apostrophe, and adds the generic top-level domain (“gTLD”) “.email.”
2. Respondent lacks rights and legitimate interests in the <sothebys.email> domain name because Respondent is not commonly known by the domain name and is not authorized or permitted to use Complainant’s mark in any fashion.
3. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to pass off as Complainant in furtherance of a phishing scheme.
4. Respondent registered and uses the <sothebys.email> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the domain name’s resolving website, which mimics Complainant’s own website. Moreover, Respondent uses an email address associated with the domain to pass off as Complainant in furtherance of a phishing scheme.
5. Further, Respondent had actual knowledge of Complainant’s rights in the SOTHEBY’S mark prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SOTHEBY’S mark. Respondent’s domain name is confusingly similar to Complainant’s SOTHEBY’S mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <sothebys.email> domain name and that Respondent registered and uses the domain name 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.”).
Complainant has rights in the SOTHEBY’S mark based upon its registration of the mark with trademark agencies around the world. Registration with multiple trademark agencies is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Here, Complainant provides copies of its registrations with the United States Patent and Trademark Office (“USPTO”), the European Union Intellectual Property Office, and the Commonwealth of Australia Trademark Office (e.g., USPTO- Reg. No. 2,428,011 registered Feb. 13, 2001). Therefore, Complainant has rights in the SOTHEBY’S mark under Policy ¶ 4(a)(i).
Next, Complainant asserts that Respondent’s <sothebys.email> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the SOTHEBY’S mark in its entirety in the domain name, deletes the apostrophe, and adds a gTLD. The removal of punctuation is typically insufficient to distinguish a domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Kellogg North America Company v. Richard Harvey / Kellogg Company, FA 1752030 (Forum Nov. 16, 2017) (“The punctuation (an apostrophe) is removed, which must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits apostrophes.”). Additionally, the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (“The addition of top-level domains, such as “.club,” must also be ignored for the purposes of Policy ¶ 4(a)(i) analysis.”). Here, Respondent incorporates the SOTHEBY’S mark in its entirety in the domain, removes the apostrophe, and adds the gTLD “.email.” Therefore, the Panel holds that Respondent’s <sothebys.email> domain name is confusingly similar to Complainant’s SOTHEBY’S mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <sothebys.email> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <sothebys.email> domain name. Specifically, Complainant claims Respondent is not authorized or permitted to use Complainant’s SOTHEBY’S mark and is not commonly known by the domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See 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)). Additionally, where the record indicates the respondent lacks authorization from the complainant to use its mark this is further evidence that a respondent is not commonly known by a domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (“ Respondent is not authorized to use Complainant’s trademark in any capacity and . . . there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The WHOIS of record identifies the Respondent as “Tony Yeh shiun,” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the <sothebys.email> domain. Accordingly, the Panel concludes that the Respondent lacks rights and legitimate interests in the <sothebys.email> domain name under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent fails to use the <sothebys.email> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain to pass off as Complainant. Use of a domain incorporating the mark of another to pass off as a complainant is not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Here, Complainant provides screenshots of the <sothebys.email> domain name’s resolving website, which mimics Complainant’s own website. Complainant also provides emails sent from an address associated with the domain name, through which Respondent attempts to pass off as one of Complainant’s employees. Therefore, the Panel holds that Respondent uses the <sothebys.email> domain to pass off as Complainant, and therefore fails to use the domain for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Additionally, Complainant claims that Respondent fails to use the <sothebys.email> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain to phish for users’ personal or financial information. Such use is not a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). The record contains examples of emails in which Respondent impersonates one of Complainant’s employees. The record supports Complainant’s assertion that Respondent does this to defraud users of their personal or financial information. The Panel agrees and concludes that Respondent fails to use the <sothebys.email> domain for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <sothebys.email> domain name in bad faith because Respondent uses the domain to pass off as Complainant in order to attract, for commercial gain, users to the domain name’s website. Passing off as a complainant by using the complainant’s mark for commercial gain shows bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). Complainant has provided evidence that the <sothebys.email> domain name’s resolving website imitates Complainant’s website. Additionally, Complainant has shown that Respondent uses an email address associated with the <sothebys.email> domain to impersonate one of Complainant’s employees. Therefore, the Panel holds that Respondent attempts to pass off as Complainant, and therefore registered and uses the <sothebys.email> domain name in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the SOTHEBY’S mark prior to registering the <sothebys.email> domain name. Actual knowledge may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be shown by the fame of the mark and the respondent’s use of it. See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product): see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant has shown without contradiction the fame of its SOTHEBY’S mark. Under the circumstances of this case, it is easy for the Panel to conclude that Respondent registered the <sothebys.email> domain name with actual knowledge of Complainant’s rights in the SOTHEBY’S mark, thereby supporting a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds 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 <sothebys.email> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 13, 2018
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