ER Marks, Inc. and QVC, Inc. v. Tatyana Ivanova
Claim Number: FA1356451
Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Sujata Chaudhri of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Tatyana Ivanova (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jewelryqvc.info>, registered with GoDaddy.com.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2010; the National Arbitration Forum received payment on November 4, 2010.
On November 5, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <jewelryqvc.info> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 November 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@jewelryqvc.info. Also on November 9, 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 December 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" 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 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 <jewelryqvc.info> domain name is identical/confusingly similar to Complainant’s QVC mark.
2. Respondent does not have any rights or legitimate interests in the <jewelryqvc.info> domain name.
3. Respondent registered and used the <jewelryqvc.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ER Marks, Inc. is a wholly owned subsidary of QVC, Inc. Complainant QVC, Inc. owns the QVC mark outside the United States and ER Marks, Inc. is the owner of the QVC mark in the United States. The Panel elects to treat these two entities as one Complainant throughout the course of these proceedings. The QVC mark is registered in over 45 countries, including with the Russian Federal Service for Intellectual Property, Patents and Trademarks. (“RFSIP”) (Reg. No. 275,088 issued February 12, 2003). Complainant uses the mark for direct response television retail shopping.
Respondent, Tatyana Ivanova, registered the disputed domain <jewelryqvc.info> on August 9, 2010. The domain name resolves a website featuring books for sale. The website purports to sell the books, but actually links the user to the online auction website <ebay.com> when a purchase is attempted.
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 has established rights in the QVC mark through registration with the RFSIP (Reg. No. 275,088 issued February 12, 2003). Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”). Therefore, Complainant has demonstrated sufficient rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant also alleges that the <jewelryqvc.info> domain name is confusingly similar to its QVC mark. Respondent has merely added the term, “jewelry,” which describes some of Complainant’s retail offerings, to Complainant’s mark. This addition fails to create a new distinct mark and instead makes the domain name confusingly similar to Complainant’s mark. See 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) 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). Accordingly, the Panel concludes that Respondent’s <jewelryqvc.info> domain name is confusingly similar to Complainant’s QVC mark under Policy ¶ 4(a)(i).
The Panel finds the Complainant has met the Policy ¶ 4(a)(i) requirements.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <jewelryqvc.info> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
Complainant alleges that Respondent is not commonly known by the domain name <jewelryqvc.info>. Complainant has not given Respondent authorization to use the mark in the domain name. Respondent has not offered any evidence to counter these assertions. Moreover, the domain name’s WHOIS information reveals that the registrant’s name is not similar to the domain name. The Panel finds that Respondent is not commonly known by the 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant further alleges that Respondent has made no bona fide offering of goods or services and no legitimate noncommercial or fair use in its use of the confusingly similar domain name. The disputed domain name purports to be selling goods, but when a purchase is attempted, the website merely redirects Internet users to <ebay.com>, a website that sells goods that compete with those sold by Complainant. The Panel presumes that Respondent either receives a direct financial gain from sales or Respondent receives click-through revenue for this use. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds the Complainant has met the Policy ¶ 4(a)(ii) requirements.
The Panel finds that Respondent’s use of the disputed domain name is a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). Complainant offers a wide variety of goods on its networks. Respondent’s website redirects users seeking Complainant to <ebay.com>, which also offers an extremely wide variety of goods. Respondent’s redirection of Internet users from Complainant to a competitor of Complainant is a disruption of Complainant’s business and thus evidence of bad faith pursuant to ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); See also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant alleges that Respondent is intentionally using a confusingly similar domain name to create confusion regarding the affiliation, sponsorship, or endorsement of its website and thus attract users to its website for financial gain. The Panel presumes the Respondent benefits from this confusion. Previous panels have found that the creation of confusion to attract Internet users to a website for financial gain is evidence of bad faith registration and use pursuant to ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). Therefore, the Panel finds that Respondent’s use of a confusingly similar domain name to attract Internet users to its website for profit is bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
The Panel finds the Complainant has met the Policy ¶ 4(a)(iii) requirements.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jewelryqvc.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 8, 2010
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