SPTC, Inc. v. Modern Limited-Cayman Web
Development c/o Domain Administrator
Claim
Number: FA0507000508936
Complainant, SPTC, Inc. (“Complainant”), is
represented by William M. Borchard of Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY 10036-6799. Respondent is Modern Limited-Cayman Web Development c/o Domain Administrator (“Respondent”),
PO Box 908, George Town, Grand Cayman GT, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sothebyauction.com>, registered with Enom,
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
5, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 7, 2005.
On
July 7, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <sothebyauction.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has
verified that Respondent is bound by the Enom, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
July 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 3,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@sothebyauction.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
August 6, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration 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.”
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the National
Arbitration 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 makes the following assertions:
1. Respondent’s <sothebyauction.com>
domain name is confusingly similar to Complainant’s SOTHEBYS mark.
2. Respondent does not have any rights or
legitimate interests in the <sothebyauction.com> domain name.
3. Respondent registered and used the <sothebyauction.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since 1744,
Complainant, SPTC, Inc., and its predecessors have been engaged in the auction
business and have developed a reputation as a premier auction house for the
sale of fine art and other collectibles.
Complainant has also provided goods and services through its website, located
at <sothebys.com>. Complainant has
extensively advertised and promoted its goods and services all over the world.
Complainant
holds numerous registrations for its SOTHEBYS mark in several countries,
including with the United States Patent and Trademark Office (“USPTO”) (E.g.,
Reg. No. 2,428,011 issued February 13, 2001).
Respondent
registered the <sothebyauction.com> domain name on May 3,
2001. The disputed domain name resolves
to a website that contains links to art related websites and uses the same
fonts as Complainant does on its website.
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.”
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant’s
registrations for its SOTHEBYS mark with the USPTO are sufficient to establish
a prima facie case of rights in the mark. See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Respondent did not submit a response in this case. Thus, Complainant’s
presumption of rights in the mark is not disputed. See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption.”). The Panel finds that Complainant has
established rights in the mark for purposes of Policy ¶ 4(a)(i).
Complainant
contends that Respondent’s <sothebyauction.com> domain name is
confusingly similar to its SOTHEBYS mark.
The disputed domain name deletes the letter “s” from Complainant’s mark
and adds the word “auction.” The word
“auction” is not only generic, but is also descriptive of Complainant’s
business. The Panel holds that the
deletion of the letter “s” and the addition of the word “auction” are
insufficient to distinguish the disputed domain name from Complainant’s
mark. See Universal City Studios,
Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that
deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did
not change the overall impression of the mark and thus made the disputed domain
name confusingly similar to it); see also Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business).
Therefore, the
Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
<sothebyauction.com> domain name.
Complainant’s assertion establishes a prima facie case and shifts
the burden to Respondent. To meet its
burden, Respondent must provide concrete evidence that it does have rights or
legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to Respondent.
Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”). The Panel will analyze
whether Respondent could meet its burden of establishing rights or legitimate
interests for purposes of Policy ¶ 4(a)(ii).
Respondent does
not offer any evidence to indicate that it is commonly known by the disputed
domain name. Without such evidence, the
Panel accepts as true Complainant’s allegations that Respondent is not commonly
known by the disputed domain name. See
Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly contradicted
by the evidence). The Panel concludes
that because Respondent is not commonly known by the disputed domain name, it
has not established rights or legitimate interests under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not commonly known by the
mark).
Moreover,
Complainant avers that Respondent’s domain name resolves to a website that
contains links to Complainant’s competing businesses, including websites that
sell artwork, and collects pay-per-click fees from Internet users clicking on
these links. Because Respondent did not
provide the Panel with a response, the Panel accepts Complainant’s descriptions
of the website as accurate and Complainant’s arguments as true. See Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the
absence of a Response, the Panel accepts as true all reasonable allegations . .
. unless clearly contradicted by the evidence.”). Thus, the Panel concludes that
Respondent is not using the disputed domain name in connection with 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). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed
domain name in connection with a bona fide offering of goods and services
because Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683
(Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain
name (and Complainant’s mark) to sell products in competition with Complainant
demonstrates neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the name”).
Consequently,
the Panel determines that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
provides the Panel with evidence that indicates that Respondent is commercially
benefiting from the confusingly similar <sothebyauction.com>
domain name by receiving pay-per-click compensation to advertise competing
links. The Panel holds that Respondent
is creating a likelihood of confusion for its own commercial gain. The Panel concludes that such use is
evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site); see also MathForum.com,
LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) where the respondent registered a domain name
confusingly similar to the complainant’s mark and the domain name was used to
host a commercial website that offered similar services offered by the
complainant under its mark).
Complainant’s
use of its SOTHEBYS mark since 1744, its registration of the mark with the
USPTO, and the obvious link between Complainant’s mark and the content of
Respondent’s website all suggest that Respondent had both actual and
constructive knowledge of Complainant’s rights in the mark. See Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”). The
Panel concludes that Respondent’s actual or constructive knowledge of
Complainant’s rights in the mark prior to registration of the disputed domain
name provides further evidence of bad faith use and registration under Policy ¶
(4)(a)(iii). See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
The Panel finds
that 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 <sothebyauction.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
August 19, 2005
National Arbitration Forum