ER Marks, Inc. and QVC, Inc. v. Charlie Kalopungi aa7group@gmail.com
Claim Number: FA1101001368660
Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Sujata Chaudhri of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Charlie Kalopungi (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qvckuk.com>, registered with Moniker Online Services, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2011; the National Arbitration Forum received payment on January 20, 2011.
On January 21, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <qvckuk.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 January 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2011 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@qvckuk.com. Also on January 24, 2011, 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 February 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <qvckuk.com> domain name is confusingly similar to Complainant’s QVC mark.
2. Respondent does not have any rights or legitimate interests in the <qvckuk.com> domain name.
3. Respondent registered and used the <qvckuk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ER Marks, Inc., is a subsidiary of QVC, Inc. (hereafter, “Complainant”), one of the largest at-home shopping networks in the world. Complainant owns many trademark registrations for its QVC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,455,889 issued 1987). Complainant uses its mark to support its home shopping business.
Respondent, Charlie Kalopungi, registered the disputed domain name on August 9, 2010. The disputed domain name resolves to a site offering links to Complainant’s competitors. Respondent presumably receives click-through fees from these linked sites.
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 it has established rights in its QVC mark by registering it with a federal trademark authority, the USPTO (e.g., Reg. No. 1,455,889 issued 1987). Registering a trademark with a federal trademark authority will provide affirmative evidence of complainant’s rights in the registered mark. 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). Furthermore, registering the trademark in respondent’s country of residence is irrelevant to the determination of complainant’s rights in the mark. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant has established its rights in the QVC mark pursuant to Policy ¶ 4(a)(i).
Complainant also asserts that Respondent’s <qvckuk.com> domain name is confusingly similar to Complainant’s QVC mark. The disputed domain name incorporates the entire mark while adding the letter “k,” the geographic identifier “UK,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent has failed to sufficiently differentiate its disputed domain name from Complainant’s QVC mark by adding a letter, a geographic identifier, and a gTLD. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); Jerry Damson, Inc. v. Texas Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel finds that the disputed domain name and Complainant’s QVC mark are confusingly similar under Policy ¶ 4(a)(i).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
The Panel finds that Complainant has met its burden of proof by making a prima facie case against Respondent showing that it lacks rights or legitimate interests in the <qvckuk.com> domain name. Previous panels have found that once complainant has made a prima facie case, the burden then shifts to Respondent to show it does in fact have rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent has made no offering to refute Complainant’s prima facie case; therefore, the Panel may assume that Respondent has no rights or legitimate interests in the disputed domain name. See American 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.”). However, the Panel will examine the entire record to determine whether Respondent retains rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <qvckuk.com> domain name. Respondent has made no showing that it is commonly known by the disputed domain name. The WHOIS information in the record identifies registrant as “Charlie Kalopungi,” which this Panel finds is not similar to the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <qvckuk.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <qvckuk.com> domain name. Respondent’s disputed domain name resolves to a site offering links to Complainant’s competitors. Presumably, Respondent receives click-through fees from these linked sites. The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <qvckuk.com> domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”)
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Complainant asserts that Respondent’s <qvckuk.com> domain name disrupts its business. Respondent’s disputed domain name resolves to a site offering links to commercial sites that directly compete with Complainant’s business. Respondent’s confusingly similar domain name diverts Internet users to its own site and then to the sites of Complainant’s competitors where they then may purchase products from the competitor instead of Complainant. The Panel finds that Respondent’s use of the disputed domain name does in fact disrupt Complainant’s business thereby constituting bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant also asserts that Respondent is gaining commercially from the operation of its <qvckuk.com> domain name. Respondent’s disputed domain resolves to a site offering links to Complainant’s competitors. The Panel infers that Respondent receives click through fees from the sites to which it links. Therefore, the Panel concludes that Respondent is using the disputed domain name for its own commercial gain constituting bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <qvckuk.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 28, 2011
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