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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SPTC, Inc. v. ALPRO
Case No. D2003-0321
1. The Parties
The Complainant is SPTC, Inc. of Reno, Nevada, United States of America, represented by Cowan, Liebowitz & Latman, PC of United States of America.
The Respondent is ALPRO of Uxbridge, Middlesex, United Kingdom of Great Britain and Northern Ireland; C/- Alan Grant, ALPRO of Uxbridge, Middlesex, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <sothebysweb.com> is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 24, 2003. On April 25, 2003, the Center transmitted by email to Network Solutions, Inc., Registrar a request for registrar verification in connection with the domain name at issue. On April 29, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2003. The Response was filed with the Center on May 20, 2003.
The Center appointed Simon Minahan as the Sole Panelist in this matter on June 11, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
By its Response the Respondent confirmed and advised of inaccuracies dating from registration in the WHOIS database record for the domain name and notified a new administrative contact in respect of the registration. The parties’ details listed above reflect that advice in respect of the administrative contact.
4. Factual Background
The Panel finds the following facts in this case:
· Complainant and its predecessors have carried on an auction business dating back to 1744, and operate globally under the name "Sotheby’s."
· Complainant is the owner of a number of registered service and trademarks in the USA for the names "Sotheby’s" and "Sothebys" the filing dates of which date from 1998, and records of which indicate various commercial uses dating back to the 1980’s. These registrations include Reg. No. 2,428,011 for provision of computerized online retail services in the field of fine and decorative works of art, jewelry, stamps, coins, books, books, antiques, furniture and other valuable personal property in US classes 35 and 42 with a stipulated first commercial use of November 1, 2000, and a filing date of September 6, 1999.
· Complainant and its affiliates and licensees have also conducted online services associated with its auction business since 1994, from a website "www.sothebys.com."
· Complainant’s affiliates and licensees has expended in excess of $25,000,000 in promoting its mark and services globally since 1996.
· The SOTHEBY’S mark is internationally recognized and well known.
· Respondent has never been known or gone by a name the same as or similar to the domain name or had any trademark or other interest in such a name.
· Respondent, for the 4 years prior to receiving notice of this Complaint , had the domain name resolve to a single non-interactive webpage stating that:
"Sothebysweb aim to provide links to sites on the Internet where you can buy fine art and antiques from reliable and reputable sources. Over the next few months we will be reviewing and vetting dealers and Auctioneers to include in our list."
The page appears to also have carried a hyperlink titled "E-mail."
5. Parties’ Contentions
COMPAINANT’S TRADEMARK INTEREST
As to the requisite trademark interest to ground the Complaint, Complainant contends that it has common law and registered trade and service mark interests in the SOTHEBY’S and SOTHEBYS marks in relation to auction and related services and proffers evidence of over 20 registrations in the USA. It further contends that the SOTHEBY’S mark is the subject of use or registration by affiliates and licensees in over 40 countries and has enjoyed continuous use by its predecessors for over 250 years and been the subject of expensive and extensive marketing in modern times. Finally, it contends the mark is world-famous.
Complainant contends that the subject domain name, <sothebysweb.com>, is confusingly similar to both its SOTHEBY’S and SOTHEBYS marks. It contends the absence of the apostrophe from what the Panel shall call its primary mark SOTHEBY’S is not a point of distinction which removes any confusion attaching to the complete appropriation of the mark in the subject domain name. Moreover it notes the inability to include apostrophes in domain names and the use by Complainant of the SOTHEBYS mark in relation to online services for this reason.
It also contends the addition of "web" to the mark in the subject domain name does not distinguish the subject domain name from the Complainant’s marks. In support Complainant cites AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790 (September 27, 2000), in for the proposition that the affixing of the suffix "web" to the mark does not distinguish the subject domain name so as to remove confusing similarity with the Complainant’s marks.
LACK OF RESPONDENT’S RIGHT OR INTERESTS
Complainant contends that Respondent has no rights to or legitimate interests in the domain name because Complainant’s and its predecessors’ use of the SOTHEBY’S predate Respondent’s registration by more than 250 years and in support cites Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (December 9, 2000).
More pertinently, Complainant contends Respondent has no registered mark identical or similar to the domain name, that it has no licence or authorization regarding the mark from or affiliation to the Respondent.
It further contends Respondent had constructive notice of its registered marks and therefore is to be deemed as not having made bona fide use of the mark. It otherwise states there is no evidence of any bona fide offering of goods or services in conjunction with the domain name nor of making legitimate non-commercial or fair use of the domain name without intent for commercial gain, to misleadingly divert customers or tarnish the Sotheby’s mark.
BAD FAITH REGISTRATION AND USE
Complainant contends that the registration of a well-known trademark is evidence of a bad faith registration and cites numerous prior decisions of Panels in support including Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (December 9, 2000). Donna Karan Studio v. Donn, WIPO Case No. D2001-0587 (June 27, 2001), and Chanel, Inc. v. Buybeauty.com, WIPO Case No. D2000-1126 (November 22, 2000). In addition it calls in support US trademark law for the proposition of a constructive notice of prior registration: RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242 (December 11, 2001).
It further contends for bad faith on the basis of "free-riding" on Complainant’s reputation and diversion of its custom as an obvious and necessary intention and element of use of the mark in the domain name citing: Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000) in support. It further contends that the name resolving to an inactive site is evidence of bad faith partly on the basis of the venerable authority of Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).
Lastly it points to inaccurate registration information as indicating bad faith registration again on the authority (amongst others) of Nuclear Marshmallows.
Respondent has filed a brief informal response resisting transfer.
By its informal response Respondent does not dispute the Complainant’s trade and service mark claims. Neither does it raise any claim or evidence of having ever been known by or possessing any objective right to the "Sothebys" name.
AS TO REGISTRATION HISTORY AND INACCURACIES IN THE WHOIS RECORD
It contends that the original registration of the domain name was undertaken by Netbenefit which failed to enter all information Mr. Alan Grant of the Respondent provided. Upon change of the administrator of the domain to Virtual Internet they effected only a change of detail of the DNS. He maintains that registration lapsed and Respondent was uninformed of this, discovering it only on failure of e-mail services and then renewed the registration for a 10-year period. Respondent advises that the WHOIS information concerning the administrative contact is no longer accurate and that the record with Network Solutions has now been updated.
Respondent denies bad faith registration. It contends the site was not registered with any commercial intent but to "help consumers in buying antiques, either from auction houses or antique dealers" as a free service. It maintains no fee was ever solicited for listing on the site or any income received from advertising or sponsorship. But it concedes the site had never been more than a page announcing the intended purpose, until, it seems, the commencement of this Complaint. Respondent states that it now resolves to a page carrying links to the Respondent and other auction sites. Otherwise Respondent states the domain has been constantly used for an e-mail address.
Respondent states that the site was never intended for sale and has never been offered for sale.
Respondent denies confusing similarity and states that in over four years he has not had one contact or e-mail mistaking the site for the Complainant’s or an affiliated site. It also states it received no Complaint from the Complainant prior to extending the registration.
Respondent further asserts the use has not disrupted the Complainant’s business.
6. Discussion and Findings
Both parties have made unsubstantiated claims in this proceeding. For its part the Complainant has failed to adequately establish the succession to the reputation it claims in the SOTHEBY’S mark or provide any evidence of the affiliations and license arrangements it claims. Nonetheless the documentary evidence shows that the Complainant has numerous registrations in the mark, some of which predate the registration of the domain name. Accordingly its interest in the "Sotheby’s" name as a trademark is established. Moreover, the Panel is prepared to accept that SOTHEBY’S is an internationally famous mark.
For its part the Respondent, who is not a lawyer, provides no supporting evidence for any of its contentions. Nonetheless those contentions seem to follow the structure of the UDRP and evince a familiarity with the Policy and issues salient to it. While there is no supporting proof offered, the Panel is prepared to accept the Respondent’s contention that registration inaccuracies in the WHOIS record are a matter of inadvertance on the Respondent’s part and that the site has never been sponsored or carried any paid advertising and the Respondent has not been paid for making links available on the site.
A. Identical or Confusingly Similar
The panel finds that the domain name is confusingly similar to the registered marks on the basis of comparison of the names and, if any authority is needed to support the proposition, I agree with the principles enunciated in AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790 (September 27, 2000), that the suffix "web", particularly in the context of an online offering, does nothing to change this confusing similarity.
I note the Respondent’s claim that no confused correspondence or Complaint has reached him, but in view of the inaccuracy of the WHOIS record and the essentially dormant nature of the site, that does not amount to evidence which could displace the prima facie proposition that the incorporation of the Complainant’s marks into the domain name is confusing. The Panel is confirmed in its view of the confusing similarity by the circumstances of the use to which the Respondent has put it whereby it refers to antique dealers and Auctioneers. The Panel believes this demonstrates the potential for real confusion beyond mere "initial interest" confusion.
B. Rights or Legitimate Interests
The Panel notes that the Complainant’s case on the lack of rights or legitimate interests in the domain name is prima facie made out in the allegations that Respondent has never been known by a name similar to the domain name, is not making a legitimate noncommercial or fair use of the domain name and is not using the domain name in connection with a bona fide offering of goods or services.
While some of these matters are addressed by Complainant with not much more than bare assertions, they are in evidence and to the extent they assert a negative, constitute evidence. For instance while Complainant states there is no evidence of Respondent’s use of the domain name in connection with a bona fide offering of goods or services, but offers the evidence of what it has done to establish or debunk such a proposition.
Further, to the extent that Complainant relies on the fame of its mark to invoke deeming of lack of legitimate interests or bona fide offering of good, the Panel disagrees with this as a prima facie proposition. With great respect to the Panels deciding to the contrary as cited by Complainant, this Panel doubts the proposition that, under the UDRP, the fame of a Complainant’s marks, without more, is determinative of the question of the legitimacy of a Respondent’s rights or interests in a domain name, as contended for by the Complainant and summarized above.
That proposition presumes that there could never be a legitimate noncommercial use of any Complainant’s famous marks in a domain name and perhaps overstates the influence of USA trademark jurisprudence in the UDRP process, at least where there is a non-US national Respondent, as in this case. The Panel need only refer generally to the notorious "sucks" cases to show this is far from a secure proposition in the context of applying the UDRP.
While the fame and associated constructive knowledge of a Respondent may have play in relation to the question of bona fides, that is a non-issue in this case in relation to legitimacy of interest in the domain name by reason of the Panel’s finding concerning the lack of offering of goods or services prior to the Complaint.
The Panel does note however the issue is relevant in respect of the later matter of bad faith registration and use.
Be that as it may, the Panel finds that the Complainant has prima facie, if somewhat thinly, established the Respondent’s lack of rights or legitimate interests in the domain name.
The onus therefore falls on the Respondent to establish such right or legitimacy: Document Technologies, Inc v. International Electronic Communications Inc. WIPO Case No. D2000-0270 (June 6, 2000); Experian Information Solutions Inc v. Credit Research, Inc. WIPO Case No. D2002-0095 (May 7, 2002).
According to paragraph 4(c) of the UDRP the Respondent may demonstrate its rights or legitimate interests in the domain name by proving any of the following:
(i) before any notice of the dispute, its use of or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) it has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) it is making legitimate noncommercial or fair use of the domain name without intent for commercial gain, misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that this is not an exhaustive list of possible proofs of the matter and further that thin proof may be met and answered by slightly less thin proof.
For its part the Respondent says nothing as to having been known by a name similar to the domain name or using any like mark other than the domain. Further the evidence of the Respondent clearly establishes that no preparations for or bona fide offering of goods or services was made prior to the Complaint. The use, until this matter commenced, of it to resolve to a "billboard" site announcing future intentions does not constitute such a use in this Panel’s opinion – and the Panel notes other Panel decisions such as Nuclear Marshmallows (supra) which support this and go further.
Accordingly the remaining stipulated basis for proof open to the Respondent is proof of a legitimate noncommercial or fair use has been made of the domain name. It is here Respondent draws its bead.
The historical use of the site a use clearly was not an offering of any service or goods, bona fide or otherwise.
However, the alleged current use as resolving to a site with links to Complainant and other apparently commercial antique and auction sites is proffered by Respondent as satisfying the third limb of 4(c) and establishing legitimate interests in the domain name. The difficulty for the Respondent is that it offers nothing more than assertion itself in this regard. Also, while the third limb of paragraph 4(c) does not confine use to that predating the Complaint, conduct only coming after notice of a Complaint is open to being disregarded or viewed with a jaded eye as an attempt to evade the Policy.
In any event, in the Panel’s view, the use to which the Respondent has lately put the domain name does not appear to involve any bona fide offering of goods or services, or to be entirely a noncommercial use. While collecting and collating sources at one site may no doubt constitute a genuine service offering, as may such a collocation with some critical analysis, the mere collection of a few hyperlinks without more does not in the Panel’s opinion constitute a real use at all.
Even if this use is accepted as constituting an offering of goods and services the Panel respectfully adopts the 4 criteria set forth in Experian (supra) for when a bona fide offering of goods and services has been made and notes that the present use seems to at least fail to satisfy one of these in that it does not clearly distinguish itself – at least from an association with the Complainant.
By its own account the Respondent states its intent is to offer a direction service for consumers of services such as those of the Complainant’s and its associates. While the Respondent denies any profit motive or gain in this enterprise, nonetheless it is simply interposing itself in the flow of the commerce between consumer and supplier in the market. This is a commercial position, whether remunerative or not. In the absence of some fair use element such as a protest or critical discussion site, the want of turning a dollar alone will not take such a use "noncommercial."
The Respondent has failed to make out any of the stipulated ways of discharging the onus and has offered no cogent other reason or evidence as to what its rights or legitimate interests in the domain name might be.
Accordingly the Panel finds the Complaint has made out this ground of its Complaint and the Respondent lacks any rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
This Panel is of the view that the long standing and fame of the SOTHEBY’S mark – albeit it is not clear on the evidence that the reputation resides exclusively in the Complainant – is a basis for inferring bad faith registration in circumstances where there is no legitimate interests or rights in the Respondent.
It defies belief to consider that the Respondent selected the name in ignorance of the mark or its fame – especially given the use of it with reference to the Respondent and its field of commerce at all stages. In light of this the Panel considers that it is not possible that the Respondent could make any plausible actual or contemplated use – other than perhaps as a clearly designated consumer review, feedback or protest site – of the domain name. There being no persuasive evidence of any active intent to use the site for consumer activism or review (or the like) in this case the Panel therefore finds that the domain name was both registered and has been used in "opportunistic" bad faith. (see e.g. Guerlain S.A. v. SL, Blancel Web No WIPO Case No. D2000-1191 (November 21, 2000); Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No D2000-0163 (May 1, 2000).
The foregoing makes it unnecessary to make any finding in respect of the Complainant’s contentions that the inaccuracy of the record would also have supplied bad faith, however I would observe that the facts of the case from which that principle stems (Nuclear Marshmallows, supra) were very different to the present matter in so far as the record there was utterly false and no response to the Complaint was ever received.
The Panel also notes Nuclear Marshmallows and other Panel decisions which have been prepared to infer a commercial purpose and bad faith from resolving a page to a "billboard" page – as this domain name did until this Complaint - as being a use calculated essentially to warehouse the domain name and implicitly advertise its availability for sale. While the Panel in this case need not does not go so far as to make such a finding, in all the circumstances it is persuaded that, on the evidence, the registration was in bad faith and its use has been too.
For all the foregoing reasons, the Panel orders that the domain name <sothebysweb.com> be transferred to the Complainant.
Dated: June 24, 2003