SPTC, Inc. and Sotheby’s v. Michael Harris
Claim Number: FA2108001961598
Complainant is SPTC, Inc. and Sotheby’s (“Complainant”), represented by Lyndsey Waddington of Liebowitz & Latman, P.C., New York, USA. Respondent is Michael Harris (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sothebysauctionbitcoin.com>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 30, 2021; the Forum received payment on August 30, 2021.
On August 31, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sothebysauctionbitcoin.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 2021 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@sothebysauctionbitcoin.com. Also on September 1, 2021, 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.
A timely Response was received and determined to be complete on September 23 , 2021.
On September 24, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant SPTC, Inc. and Complainant Sotheby’s ( together “Complainant”) are engaged in the auction business and have developed a reputation under the name Sothebys as a premier auction house for the sale of fine art and other collectibles.
Complainant has rights in the SOTHEBYS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,428,011, registered Feb. 13, 2001).
The <sothebysauctionbitcoin.com> domain name was registered by Respondent on February 10, 2021.
Respondent’s <sothebysauctionbitcoin.com> domain name is identical or confusingly similar to Complainant’s mark as Respondent merely adds the descriptive word “auction,” the generic term “bitcoin,” and the “.com” generic top-level domain to Complainant’s SOTHEBYS mark.
Respondent has no rights or legitimate interests in the <sothebysauctionbitcoin.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is diverting Internet users to Respondent’s website offering competing pay-per-click hyperlinks.
Respondent registered and uses the <sothebysauctionbitcoin.com> domain name in bad faith. Specifically, Respondent is attempting to pass itself off as Complainant to offer a competing website that is disruptive to Complainant’s business and attempts by hyperlinks to attract Internet users to that site for commercial gain. Finally, Respondent had constructive or actual knowledge of Complainant’s rights in the SOTHEBYS mark at the time of registration of the domain name.
B. Respondent
During the course of this proceeding, Respondent by himself and by his authorized representative sent several email communications to the Complainant ,the Forum and the Panel. There seem to have been 9 communications in all, the earliest being on September 1, 2021 and the most recent on September 24, 2021, although received later. Some of those communications related to procedural matters and some of them related to matters of substance. One such communication was headed “Response”. But it seems that they were all intended by the Respondent and his representative to put forward arguments to the effect that for one reason or another the Complaint should be dismissed and that the Respondent should be permitted to keep the disputed domain name. The Panel therefore takes the view that the points made in the email communications should all be regarded as parts of a Response and the Panel has regarded them as such and taken them into account in considering its decision. Accordingly, the Panel has done its best to articulate here the salient points sought to be conveyed by the Respondent and will now set them out as successive points being made in a Response.
The points made by the Respondent are as follows.
1. Craig Eisele will be my liason, not my agent as I will be out of pocket with limited access to email and phone.
2. Complainant’s counsel is abusing the SPTC process.
3. Respondent rejects the entire Complaint.
4. The Complaint is based on lies , misrepresentations, assumptions, and presumptions.
5. The disputed domain name is not identical or confusingly similar to Complainant’s trademark.
6. Complainant could have acquired any of the domain names that were publicly available but has failed to do so.
7. Complainant has never attempted to buy the domain name from the registry or from Respondent and the money spent on this proceeding would have been better used as part of a legitimate purchase agreement.
8. If Complainant is willing to negotiate it should act promptly.
9. Respondent proposes a settlement that “is not six figures at this time.” The Respondent is open to discussing the parameters of an agreement in that regard.
10. Respondent has a right or legitimate interest in the domain name as it is a legitimate investment.
11. Complainant has been negligent in pursuing acquisitions of salient and relevant domain names and has abandoned its claim.
12. Respondent has domain names that include the name Sotheby Auctions.
13. Respondent denies the parked page relied on by the Complainant displayed any third party advertisements or links to other businesses.
14. No fees were paid to Respondent for any such links.
15. Complainant intended to adopt Bitcoin as a means of payment. Complainant should therefore have made a reasonable offer to Respondent to acquire the domain name instead of intimidating and bullying him to surrender it.
16. Prior UDRP decisions cited by the Complainant are irrelevant.
C. Additional Submissions
Rule 7 of the Forum’s Supplemental Rules to ICANN’s Uniform Domain Name Dispute Resolution Policy provides inter alia that “ It is within the discretion of the Panel to accept or consider additional unsolicited submission(s).” On September 24, 2021, Complainant submitted an additional unsolicited submission to the Forum. In response, on September 24, 2021, by way of an email submission to the Forum, Respondent submitted its response to the Complainant’s additional submission. The Panel has given careful consideration to both submissions and has decided in the exercise of its discretion to accept and consider both submissions.
FINDINGS
1. Complainant SPTC, Inc. is a United States company and Complainant Sotheby’s is a United Kingdom company. They are engaged in the auction business under the name Sothebys and have developed a reputation as a premier auction house for the sale of fine art and other collectibles and related goods and services.
2. The Complainant has established its trademark rights in the SOTHEBYS mark through the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,428,011, registered Feb. 13, 2001).
3. The Respondent registered the disputed domain name on February 10, 2021.
4. The Respondent has caused the domain name to resolve to a website containing hyperlinks that offer goods and services that are the same and/or similar to and compete with the goods and services of the Complainant.
5. The domain name is confusingly similar to the SOTHEBYS Mark.
6. There is no evidence that the Respondent has a right or legitimate interest in the disputed domain name.
7. The evidence shows that the Respondent registered and uses the disputed 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.
It should be noted that all 3 of those elements must be proved and that they must be proved by evidence on the balance of probabilities.
PANEL NOTE: CITATION AND USE OF PRIOR UDRP DECISIONS
In its submissions, the Respondent has argued against the relevance and propriety of the use by the Complainant of prior UDRP decisions. Prior decisions, although they are not precedents or binding on panels in any way, are useful to panels as an indication of how other panels have dealt with similar and analogous factual situations. However, in all the circumstances, the Panel will not refer to prior decisions. However, it also assures the parties that its findings are consistent with the substance and intent of prior decisions.
The first issue that arises is whether the Complainant has a trademark or service mark on which it may rely. Complainant submits that it has rights in the SOTHEBYS trademark through its registration of the mark with the United States Patent and Trademark Office (“the USPTO”) (e.g., Reg. No. 2,428,011, registered Feb. 13, 2001). It has long been accepted that if a trademark is registered with the USPTO, that is sufficient to prove rights in a mark under paragraph 4(a)(i) of the Policy. In the present case, the Complainant has proved this in the normal way, that is by attaching a copy of the relevant registration certificate from the USPTO. The Panel has examined the copy registration certificate attached to the Complaint and finds that it is in order. That examination shows that the Complainant also has a series of other trademarks for SOTHEBYS as well and it has also attached copies of those registrations, although it has to prove only one trademark, which it has done. Therefore, the Panel finds that the Complainant has made out its rights in the SOTHEBYS mark for the purposes of paragraph 4(a)(i) of the Policy.
The next question that arises is whether the <sothebysauctionbitcoin.com> domain name is identical or confusingly similar to SOTHEBYS mark. To answer that question a straight comparison must be made between the domain name and the trademark. Clearly, they are not identical, as the domain name includes the trademark but also the words “auction” and “bitcoin,” as well as the “.com” generic top-level domain.
But they are similar, because the most dominant feature of the domain name is the word SOTHEBYS, which is the Complainant’s trademark and the other words added on to it obviously qualify the word SOTHEBYS. It has also long been accepted that if generic words, sometimes called descriptive words, are added to a trademark in this way to constitute a domain name, it will still convey the meaning of the trademark which will not be negated by the presence of the generic or descriptive words. Thus, the ordinary user of the internet would look at the domain name in the present case and reach the conclusion that what it means is the auction and bitcoin activities conducted under the SOTHEBYS trademark and by Sothebys itself. It has also been a principle of interpretation that when making this comparison, the top level domain , such as “.com” is not taken into account, because it is not possible to have a domain name without one or another of the many extensions which now accompany domain names. When these matters are put together, the conclusion is that the domain name in this case is similar to the trademark and confusingly so, for internet users would probably conclude that the domain name is a Sothebys’ domain name dealing with its auction and bitcoin activities and that it will lead to an official Sothebys website dealing with those subjects.
The Panel therefore finds that Respondent’s <sothebysauctionbitcoin.com> domain name is confusingly similar to Complainant’s SOTHEBYS mark under Paragraph 4(a)(i) of the Policy.
The Complainant has therefore made out the first of the three elements that it must establish.
Under
paragraph 4(a)(ii) of the Policy, the Complainant has the burden of
establishing that the Respondent has no rights or legitimate interests in
respect of the disputed domain name.
But
by virtue of paragraph 4(c) of the Policy, it is open to a respondent to
establish its rights or legitimate interests in a domain name, among other
circumstances, by showing any of the following elements:
(i)
before any
notice to you [the respondent] of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name
in connection with a bona fide offering of goods or services; or
(ii)
you [the respondent]
(as an individual, business, or other organization) have been commonly known by
the domain name, even if you have acquired no trademark or service mark rights;
or
(iii) you [ the respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if a respondent proves any of these elements or indeed anything else that
shows that it has a right or legitimate interest in the domain name, the
complainant will have failed to discharge its onus and the complaint will fail.
It is also well-established that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests and that when such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent cannot do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Panel, after considering all of the evidence in this proceeding, finds that
the Complainant has made out a prima facie case that the Respondent has
no rights or legitimate interests in the disputed domain name .
That prima facie case is made out from the following considerations.
Most importantly in this consideration is the fact that the Respondent has chosen to take the Complainant’s SOTHEBYS trademark and to use it without permission in the Respondent’s domain name. It has then registered the domain name and used it to resolve to a website which in turn carries links to a range of goods and services which are the same as or similar to the goods and services provided by the Complainant. Those facts alone would make out the prima facie case.
But the Complainant says that there are other facts that add to that conclusion. Complainant says that Respondent is not commonly known by the disputed domain name and nor has Respondent been licensed or authorized by the Complainant to use its mark. To prove that, the best evidence of course is what the WHOIS search shows as to whether a respondent is or is not commonly known by the disputed domain name. The WHOIS search in the present case identifies the Respondent as “Michael Harris” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Clearly there is no suggestion that the Respondent’s name is Sothebys or that he is commonly known by that name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <sothebysauctionbitcoin.com> domain name because Respondent is not commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy.
Next, Complainant argues that Respondent fails to use the <sothebysauctionbitcoin.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Rather, it was submitted by the Complainant that the Respondent is using the domain name to divert Internet users to the Respondent’s own website offering competing pay-per-click hyperlinks. Using a disputed domain name to divert Internet users seeking a complainant’s services to a webpage hosting competing hyperlinks is not seen as a bona fide offering of goods or services or a legitimate noncommercial or fair use under paragraph 4(c)(i) or (iii) of the Policy. In the present case Complainant provides screenshots of the webpage to which the <sothebysauctionbitcoin.com> domain name resolves, directing Internet users to Respondent’s own site featuring hyperlinks offering artworks and collectibles that compete with Complainant’s goods and services and for which the Complainant is famous. That is highly improper and cannot give rise to a right or legitimate interest. Therefore, the Panel finds that Respondent fails to use the <sothebysauctionbitcoin.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under paragraph 4(c)(i) or (iii) of the Policy.
As the prima facie case has been made out, it is now a question of whether the respondent has rebutted that case.
The Panel has considered carefully all that the Respondent has put forward to show that it has rebutted the prima facie case. But it is clear to the Panel that the Respondent has not rebutted the prima facie case.
The main argument used by the Respondent is that its registration of the domain name is an investment and that this investment itself gives rise to the right to register the domain name and a legitimate interest in it. The Panel has to reject that argument. The mere fact that a domain name has been registered could not have that result, as if it did, it would mean that the whole issue of deciding the issue would be pointless, as a registrant would have an automatic right and interest in the domain name simply by having registered it and this would lead to wholesale cybersquatting. Every registrant of a domain name would then be entitled to the domain name, no matter how flagrant an abuse of another party’s trademark the domain name constituted. Those who drafted the Policy could not possibly have intended such a result. The Panel therefore rejects that argument.
The Respondent has also submitted on several occasions that he has a right or legitimate interest in the domain name because the complainant Sothebys could have bought this domain name and others like it, but did not do so. But that cannot be so, as there is no obligation on the complainant or any other trademark owner to buy or acquire every possible permutation of domain name in the hope that this will prevent a cybersquatter from acquiring the domain name in dispute. There is nothing in the Policy to justify such a principle, it would be contrary to common sense to expect it to do so and it would impose an impossible burden and endless guesswork and expense on a trademark owner to have to engage in such a practice. Moreover, if those who drafted the Policy wanted to impose that burden they could easily have said so, but did not.
The Respondent also denies that the parked page relied on by the Complainant displays any third party advertisements or links to other businesses and that , therefore there was nothing improper in the domain name resolving to any particular website or page. The Panel does not accept that submission. The Panel has examined the evidence carefully and has also tested the disputed domain name to see how it resolves. Even today, it is only too clear that the domain name resolves to a parking page with links to many business that promote goods and services in the art and auction milieur in which the Complainant has an international reputation. Thus, an internet user finding or using the disputed domain name would assume that all of these businesses had been approved or endorsed by Sothebys or that Sothebys itself had branched out into these less prestigious businesses, which of course is not the case and which devalues Sotheby’s standing and reputation. It is clear therefore that in substance what has happened here is that the Respondent is using the Complainant’s name and trademark for its own ends, either for a reward for directing internet users to these rival businesses or developing the domain name for some ulterior purpose to benefit the Respondent. None of its conduct could conceivably be undertaken for the benefit of the Complainant and the Panel expressly finds that this was not the intention of the Respondent. Had that been the respondent’s intention, it could easily have said so, but it did not.
The Panel also finds that there is no evidence to support any of the Respondent’s other contentions on this issue and that there is no reason or logic to support any of those contentions.
In particular, the Panel finds that there is no evidence that, as the Respondent put it, the Complaint is based on lies , misrepresentations, assumptions, and presumptions. Nor should the Respondent have made such allegations without there being some justification for doing so which there clearly is not.
Finally, it is obvious that the Respondent’s repeated overtures inviting a commercial settlement to the dispute, involving the purchase of the domain name by the Complainant, cannot create a right or legitimate interest in the domain name. Such proposals are tantamount to blackmail and make it clear that this was the real motivation of the Respondent when he acquired the domain name and since then.
The Respondent has therefore failed to rebut the prima facie case against it.
Thus, the Complainant has shown that the Respondent has no right or legitimate interest in the disputed domain name and the Complainant has therefore made out the second of the three elements that it must establish.
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is
evidence of the registration and use of a domain name in bad faith, although
other circumstances may also be relied on, as the four circumstances are not
exclusive.
The
four specified circumstances are:
(i)
circumstances
indicating that the respondent has registered or acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to the complainant who is the owner of the trademark
or service mark or to a competitor of that complainant, for valuable
consideration in excess of the respondent’s documented out-of-pocket costs
directly related to the domain name; or
(ii)
the
respondent has registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that the respondent has engaged in a pattern of such conduct; or
(iii)
the
respondent has registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
The Panel finds that the Complainant has shown that the Respondent registered
and used the disputed domain name in bad faith both in general and in
particular because the Respondent’s conduct puts the case squarely within sub-paragraph
4(b) (i), (iii) and (iv) of the Policy.
With respect to sub-paragraph 4(b)(i), it is clear on the evidence that the Respondent registered the domain name with a view to trying to sell it to the Complainant and, not to make too fine a point of it, forcing the Complainant to buy it. The Respondent says so in plain words in his correspondence to the Complainant, the Forum and this Panel, a correspondence that culminates, on this issue, in proposing in an email letter of September 21, 2021 to the Forum that the Complainant enter into a financial settlement that would be “not six figures at this time.” Moreover, on frequent occasions in that series of communications, the Respondent advocated and proposed that the Complainant should “ negotiate”, that there should be a “settlement”, that the Complainant enter into a “ legitimate purchase agreement” and that he, the Respondent, was proposing such a settlement. The evidence is therefore unequivocal that the Respondent has registered and then used the domain name to promote similar goods and services to those of the Complainant, thus setting itself up as a competitor of the Complainant and has then made numerous attempts to induce the Complainant to buy the domain name. In other words, the Respondent has attempted to blackmail the Complainant into buying the domain name. That brings the conduct squarely within sub-paragraph 4(b)(i) of the Policy.
With respect to sub-paragraphs 4(b) (iii) and (iv) Complainant argues that Respondent registered and uses the <sothebysauctionbitcoin.com> domain name in bad faith because it is attempting to pass itself off as Complainant to offer competing websites to which the domain name resolves, which clearly disrupts the Complainant’s business and attempts to attract Internet users to its, the Respondent’s, site for commercial gain. Registering a disputed domain name so to offer competing goods and deceive Internet users into believing an affiliation exists between a respondent and complainant is evidence of bad faith under these two sub-paragraphs of the Policy. As part of its case the Complainant tendered in evidence screenshots of the <sothebysauctionbitcoin.com> domain name resolving webpage, which provides hyperlinks for artworks and collectibles that compete with Complainant’s goods and services. By incorporating the Complainant’s name in the domain name, the Respondent has passed itself off as the Complainant to attract internet users to the websites promoted by the use of the domain name. Therefore, the Panel finds Respondent registered and uses the <sothebysauctionbitcoin.com> domain name in bad faith under sub-paragraphs 4(b) (iii) and (iv).
Complainant also argues that Respondent had knowledge of Complainant’s rights in the SOTHEBYS mark at the time of registering the <sothebysauctionbitcoin.com> domain name. The Panel agrees with that submission because the Complainant’s name is so famous that the Respondent must have known of it when he registered the domain name that includes the Complainant’s name. This clearly shows bad faith under sub-paragraph 4(a)(iii).
Moreover, within the meaning of sub-paragraph 4(b)(iv), the evidence is that the Respondent’s links to other websites promoting auctions, art works and collectables give rise to potential confusion in the market as to whether the Complainant was offering these goods and services itself or was endorsing other businesses in the same fields. It is clear that this is so. The Panel has itself activated the disputed domain name to see the result, which is that it instantly leads to the following groups of links: bitcoin, bitcoin exchange, auction online website, “the online auction”, art works for sale and “sell”. Each of those categories contains links to websites of other businesses offering goods and services in the same fields as those of the Complainant.
The Respondent says that he has not received any payment for this, but even if this were so, the process is disruptive of the Complainant’s business and confuses the market as to whether what are being promoted are Sotheby’s goods and services or those of less prestigious businesses. Moreover, this conduct diminishes the name and standing of the Complainant which is based on its prestige.
The Respondent, judging from the submissions of his authorized representative, seems to have difficulty in understanding or accepting this. But to make it clear, the substance of this case is that the Respondent has brazenly misappropriated the Complainant’s trademark without any permission to do so and used it to promote the wares of rival businesses. Such conduct is illegal and reprehensible and easily comes with the meaning of the expression bad faith. Even more brazenly, when the Respondent has been exposed, it proposes that the Complainant buy it out, holding out the olive branch that the settlement would be “not six figures at this time.”
Moreover, none of the defences raised by the Respondent can possibly negate the conclusion that it has been proved beyond any doubt that the Respondent registered and has used the domain name in bad faith. Those defences are set out above and it is not necessary to repeat them here, but with respect to all of them the Panel finds that there is no evidence or valid reason to support them and the Panel rejects them all.
The Complainant has thus established on all of these grounds that the Respondent registered and has used the disputed domain name in bad faith.
The Complainant has thus made out the third of the three elements that it must establish.
OTHER ISSUES
The Panel rejects the submission of the Respondent that the Complaint is based on lies , misrepresentations, assumptions, and presumptions as there is no evidence to support that discreditable submission.
Finally, all of the findings that the Panel has made are consistent with and supported by prior UDRP decisions.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sothebysauctionbitcoin.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 28, 2021
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