ER Marks, Inc. and QVC, Inc. v. Sales Team
Claim Number: FA1004001321485
Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Jeffrey
H. Epstein, of Cowan, Liebowitz & Latman, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <qvcstore.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on April 27, 2010.
On April 28, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <qvcstore.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 April 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2010 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@qvcstore.com. Also on April 29, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <qvcstore.com> domain name is confusingly similar to Complainant’s QVC mark.
2. Respondent does not have any rights or legitimate interests in the <qvcstore.com> domain name.
3. Respondent registered and used the <qvcstore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ER Marks, Inc.
and QVC, Inc., offers direct response television retail shopping via
television, cable, satellite, and digital broadcasts, as well as via the
Internet. Complainant holds multiple
registrations for its QVC mark with the United States Patent and Trademark
Office (“USPTO”) (e.g., Reg. No.
1,455,889 issued September 1, 1987).
Respondent registered the
disputed domain name on January 12, 2010.
The disputed domain name resolves to a website offering at-home shopping
services featuring some of Complainant’s most popular goods.
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 asserts rights in its QVC mark through its
holding of multiple trademark registrations with the USPTO for its QVC mark (e.g., Reg. No. 1,455,889 issued September 1, 1987).
The Panel finds that Complainant’s registrations of its QVC mark with
the USPTO are sufficient evidence of Complainant’s rights in the mark pursuant
to Policy ¶ 4(a)(i). See Intel
Corp. v. Macare, FA 660685
(Nat. Arb. Forum Apr. 26, 2006) (finding that
the complainant had established rights in the PENTIUM, CENTRINO and INTEL
INSIDE marks by registering the marks with the USPTO); see also Reebok Int’l Ltd. v.
Complainant alleges that Respondent’s <qvcstore.com> domain name is confusingly similar to Complainant’s QVC mark. Respondent’s disputed domain name merely adds the generic term “store” and the generic top-level domain (“gTLD”) “.com” to the entirety of Complainant’s mark. The Panel finds that the addition of a generic term creates a confusing similarity between the disputed domain name and Complainant’s mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel also finds that the addition of a gTLD is irrelevant for purposes of Policy ¶ 4(a)(i) analysis and does not serve to distinguish the disputed domain name from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel concludes that pursuant to Policy ¶ 4(a)(i), Respondent’s <qvcstore.com> domain name is confusingly similar to Complainant’s QVC mark.
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii) requires that Complainant make a prima facie case against Respondent before the burden shifts to Respondent to prove it does have rights or legitimate interests. The Panel is satisfied that Complainant has established a prima facie case based on its contentions in the Complaint. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Additionally, Respondent’s failure to submit a Response to these proceedings allows the Panel to infer that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <qvcstore.com> domain name does not indicate that the registrant is commonly known by the disputed domain name. Complainant asserts that Respondent is not a licensee of Complainant nor has Respondent ever been authorized by Complainant to register or use the domain name. Based on the WHOIS information and other evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain name resolves to a website featuring at-home shopping services. The resolving website offers some of Complainant’s best selling products. The Panel finds that Respondent’s use of the disputed domain name to sell Complainant’s own goods is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s disputed domain name resolves to a website that
offers at-home shopping services and features some of Complainant’s best
selling products in direct competition with Complainant. Internet users who might ordinarily purchase
these goods from Complainant may instead purchase them from Respondent’s
resolving website. The Panel finds that
Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s
business and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v.
Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16,
2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s
products represents bad faith use under Policy ¶ 4(b)(iii).”);
see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
(transferring the <fossilwatch.com> domain name from the respondent, a
watch dealer not otherwise authorized to sell the complainant’s goods, to the
complainant).
The Panel finds that
Respondent is using the disputed domain name to attract Complainant’s potential
customers and redirect them to Respondent’s own website for Respondent’s
commercial gain. Internet users may
easily be confused as to the source, sponsorship of or affiliation with Respondent’s
website and believe that Respondent’s disputed domain name is legitimately
associated with Complainant, especially, where as here, Respondent’s website
sells some of Complainant’s own goods.
The Panel concludes that Respondent’s registration and use of the
disputed domain name for this purpose constitutes bad faith under Policy ¶ 4(b)(iv). See Hunter Fan Co. v.
MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the
respondent used the disputed domain name to sell the complainant’s products
without permission and mislead Internet users by implying that the respondent
was affiliated with the complainant); see
also Compaq Info. Techs.
Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb.
Forum May 29, 2002) (finding that the respondent’s use of the
<compaq-broker.com> domain name to sell the complainant’s products
“creates a likelihood of confusion with Complainant's COMPAQ mark as to the
source, sponsorship, or affiliation of the website and constituted bad faith
pursuant to Policy ¶ 4(b)(iv)”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <qvcstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 9, 2010
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