ER Marks, Inc. and QVC, Inc. v. Computer Centers USA, Inc.
Claim Number: FA1101001369165
Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Jeffrey H. Epstein of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Computer Centers USA, Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qvc0123.com>, registered with GoDaddy.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2011; the National Arbitration Forum received payment on January 24, 2011.
On February 2, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <qvc0123.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 February 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 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@qvc0123.com. Also on February 3, 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 28, 2011, 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 <qvc0123.com> domain name is confusingly similar to Complainant’s QVC mark.
2. Respondent does not have any rights or legitimate interests in the <qvc0123.com> domain name.
3. Respondent registered and used the <qvc0123.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ER Marks, Inc. is a wholly owned subsidiary of QVC, Inc. and owns the rights to the QVC mark within the United States. Complainant QVC, Inc. owns the QVC mark outside the United States. The Panel elects to consider both of these entities as a single Complainant for these proceedings. Complainant conducts a direct response retail shopping business via the Internet, television and other digital media. Complainant’s business operates under the QVC mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,455,889 issued September 1, 1987).
Respondent registered the <qvc0123.com> domain name on September 20, 2010. The disputed domain name resolves to a website that “phishes” for personal and financial information from Internet users.
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 claims rights in the QVC mark based on its registration of the mark with the USPTO (e.g., Reg. No. 1,455,889 issued September 1, 1987). Previous panels have found that registration of a mark with a federal trademark authority establishes rights in the mark pursuant to Policy ¶ 4(a)(i). Therefore, the Panel finds Complainant has supplied sufficient evidence to demonstrate rights in the QVC mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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).
Complainant argues that Respondent’s domain name is confusingly similar to the QVC mark. Respondent uses Complainant’s entire mark and only adds a string of numbers to the mark. Furthermore, Respondent added the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that using an entire mark followed by a string of numbers and gTLD does not prevent the domain name from being confusingly similar to Complainant’s mark. See Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also Jerry Damson, Inc. v. Tex. 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.”).
The Panel finds Policy ¶ 4(a)(i) has been established.
Once Complainant has made a prima facie showing in support of its allegation that Respondent lacks rights or legitimate interests in the disputed domain name, Respondent acquires the burden of demonstrating such rights pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has met its burden and, because Respondent failed to respond to these proceedings, the Panel assumes Respondent lacks rights or legitimate interests in the <qvc0123.com> domain name. However, the Panel will evaluate the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Complainant also alleges that Respondent is not commonly known by the <qvc0123.com> domain name and that Complainant has never authorized Respondent to use the QVC mark. The Panel can find no evidence in the record that would support a finding that Respondent is commonly known by the disputed domain name. Furthermore, the WHOIS information does not contain any information that would provide a basis for finding that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed 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 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).
Lastly, under Policy ¶ 4(a)(ii), Complainant argues that Respondent has engaged in a phishing venture. The disputed domain name resolves to a website that is used to gather personal and financial information from unsuspecting Internet users. Respondent’s website posts an invitation to provide personal and financial information by telling Internet users that once they have done so, they will be connected with a support representative. The Panel finds that using a domain name to phish for personal information in this manner is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Complainant contends that Respondent’s registration and bad faith use of the disputed domain is evident from Respondent’s attempt to profit from the <qvc0123.com> domain name. The Panel finds that Respondent is attempting to attract, for commercial gain, Internet users to its website where they are encouraged to divulge personal and financial information. Internet users may be confused as to Complainant’s sponsorship of, or affiliation with the disputed domain name and resolving website. The Panel finds that Respondent benefits from this confusion which is evidence of bad faith registration and use of the disputed domain name under ¶ 4(b)(iv) of the Policy. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme) ; see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Finally, Respondent’s registration and use of the <qvc0123.com> domain name to phish for personal and financial information from Internet unsuspecting users provides sufficient evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <qvc0123.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 4, 2011
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