SPTC, Inc. and Sotheby’s v. LLC "Organization name"
Claim Number: FA2109001963172
Complainant is SPTC, Inc. and Sotheby’s (“Complainant”), represented by Lyndsey Waddington of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is LLC "Organization name" (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sothebys-auction.com>, registered with Registrar of Domain Names REG.RU LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 10, 2021; the Forum received payment on September 10, 2021.
On September 13, 2021, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <sothebys-auction.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 15, 2021, the Forum served the Complaint and all Annexes, including a Russian and English language Written Notice of the Complaint, setting a deadline of October 5, 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@sothebys-auction.com. Also on September 15, 2021, the Russian and English language 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 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Multiple 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.” Forum 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.”
In the instant proceedings, there are two identified Complainants: SPTC, Inc. and Sotheby’s. SPTC, Inc. is a subsidiary of Sotheby’s and together they hold the rights to the SOTHEBYS service mark.
It is well established that multiple parties may proceed as one party where they can show a sufficient link to one another. See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel there finding that:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
See also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum December 28, 2003), in which a panel treated two complainants as a single entity where both held rights in trademarks contained within disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum February 6, 2004), a panel found a sufficient link between multiple complainants where there was a license between them regarding use of a mark at issue in the proceeding.
There being no objection from Respondent, on the facts before us the allegations of the Complaint are deemed sufficient to establish a nexus between SPTC, Inc. and Sotheby’s justifying that they be permitted to proceed as a single Complainant for all purposes in this proceeding. Accordingly, throughout the remainder of this proceeding, the two will be referred to collectively as “Complainant.”
Preliminary Issue: Language of Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Russian. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that:
a. the disputed domain name contains wholly English words;
b. the content of the website resolving from the domain name is rendered entirely in English;
c. the disputed domain name is registered in connection with the generic Top Level Domain “.com,” which primarily targets English-speaking Internet users;
d. these facts demonstrate Respondent’s proficiency in
English; and
e. translating the documents required to prosecute this proceeding into Russian would put Complainant to a substantial financial burden and would unnecessarily delay this proceeding.
Respondent does not contest any of these assertions. For that reason, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
A. Complainant
Complainant is engaged in the auction business, including with respect to the sale of select real estate properties.
Complainant holds a registration for the SOTHEBYS mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,428,011, registered February 13, 2001, and renewed most recently as of April 27, 2021.
Respondent registered the domain name <sothebys-auction.com> on June 15, 2021.
The domain name is confusingly similar to Complainant’s SOTHEBYS mark.
Respondent is not licensed or otherwise authorized to use Complainant’s SOTHEBY’S mark.
Respondent has not been commonly known by the domain name.
Respondent doesn’t use the domain for any bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to profit illicitly by impersonating Complainant online in furtherance of a scam in which Respondent purports to invite Internet users to participate in “a closed Sotheby’s auction,” the object of which deception is to “phish” for personal and financial information and to defraud consumers.
Respondent does not have either rights to or legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the SOTHEBYS mark at the time the disputed domain name was registered.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the SOTHEBYS service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Russia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <sothebys-auction.com> domain name is confusingly similar to Complainant’s SOTHEBYS service mark. The domain name incorporates the mark in its entirety, with only the addition of a hyphen (“-“) and the generic term “auction,” (a direct reference to the nature of Complainant’s business) plus the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not sufficiently distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
And, as to Respondent’s addition of a hyphen to the domain name, this feature is of no consequence to our analysis is because a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <sothebys-auction.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <sothebys-auction.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the SOTHEBYS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “LCC ‘Organization Name’,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
Complainant further asserts, without objection from Respondent, that Respondent uses the sothebys-auction.com> domain name to profit illicitly by impersonating Complainant online in furtherance of a scam in which Respondent purports to invite Internet users to participate in “a closed Sotheby’s auction,” the object of which deception is to “phish” for personal and financial information and to defraud consumers. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007):
Because respondent … is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … 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).
See also HOPE worldwide, Ltd. v. Jin, FA 320379 (Forum November 11, 2004) (finding that a domain name that was confusingly similar to a UDRP complainant’s mark, redirected Internet users to a website that imitated that complainant’s website, and was used to acquire personal information from that complainant’s potential associates did not fall within the parameters of Policy ¶ 4(c)(i) or (iii)).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the sothebys-auction.com> domain name to profit illicitly by impersonating Complainant online in furtherance of a scam in which Respondent purports to invite Internet users to participate in “a closed Sotheby’s auction,” the object of which deception is to “phish” for personal and financial information and to defraud consumers. This use of the domain name is undeniable evidence of Respondent’s bad faith in registering and using the domain name. See, for example, ArcelorMittal (Société Anonyme) v. El Manuel Es Pura Bellesa, Acero, D2020-0868 (WIPO May 14, 2020):
[T]he Respondent had been using the website at the disputed domain name to fraudulently pose as the Complainant for the purposes of sending phishing emails containing fake invoices to incite payment from unsuspecting third parties. This is manifestly evidence of use in bad faith.
See also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith under Policy ¶ 4(b)(iv) where “Respondent registered and uses the … domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Further see Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted to its own website Internet users searching for the website of a UDRP complainant, likely profiting in the process).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <sothebys-auction.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 12, 2021
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