ER Marks, Inc. and QVC, Inc. v. isolutionindia c/o Sujit Kumar Singh
Claim Number: FA1103001377726
Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Sujata Chaudhri of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is isolutionindia c/o Sujit Kumar Singh (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qvctelemall.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2011; the National Arbitration Forum received payment on March 14, 2011.
On March 15, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com confirmed by e-mail to the National Arbitration Forum that the <qvctelemall.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.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 March 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 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@qvctelemall.com. Also on March 15, 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 April 12, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <qvctelemall.com> domain name is confusingly similar to Complainant’s QVC mark.
2. Respondent does not have any rights or legitimate interests in the <qvctelemall.com> domain name.
3. Respondent registered and used the <qvctelemall.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ER Marks, Inc. and QVC, Inc., hold numerous trademark registrations for its QVC mark including with the Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 1,625,839 issued September 29, 2001) and with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,455,889 issued September 1, 1987). Complainant uses its QVC mark to offer direct response retail shopping primarily via television, cable, satellite, and digital terrestrial broadcasts, as well as via the Internet.
Respondent, isolutionindia c/o Sujit Kumar Singh, registered the <qvctelemall.com> domain name on December 17, 2010. The disputed domain name previously resolved to an active website promoting itself as an telemarketing mail order and wholesale organization, selling a variety of goods in direct competition with Complainant’s retail business. Respondent’s resolving website is currently inactive.
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.
Prelminary Issue: Multiple Complainants
There are two Complainants in this matter: ER Marks, Inc. and QVC, Inc. Complainants maintain that ER Marks, Inc. is a wholly owned subsidiary of QVC, Inc. Complainants assert that ER Marks, Inc. is the owner of the QVC mark within the United State and that QVC, Inc. owns the QVC mark outside the United States. ER Marks, Inc. acquired the QVC mark by assignment from QVC, Inc. in 2003. The Panel finds that Complainants have provided a sufficient link or nexus between them and the Panel will treat them as a single entity in this proceeding.
Complainant alleges that it has established rights in the QVC mark. In Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), the panel found that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world. See also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Here, Complainant holds numerous trademark registrations including registration with the USPTO (e.g., Reg. No. 1,455,889 issued September 1, 1987) and OHIM (e.g., Reg. No. 1,625,839 issued September 29, 2001). Complainant is not required to register its mark within the country of Respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also 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). The Panel finds that Complainant has demonstrated its rights in the QVC mark through their trademark registrations with recognized trademark authorities pursuant to Policy ¶ 4(a)(i).
Complainant also alleges that Respondent’s <qvctelemall.com> domain name is confusingly similar to Complainant’s QVC mark. The disputed domain name incorporates the QVC mark in its entirety and merely adds the descriptive word “telemall,” which references Complainant’s business in direct response television retail shopping, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that attaching descriptive words does not avoid a finding of confusing similarity. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). The Panel also finds that the addition of a gTLD does not sufficiently distinguish the disputed domain name from Complainant’s mark. See 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.”). Therefore, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainants’ QVC mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶4(a)(i) has been met.
Complainant argues that Respondent lacks rights and legitimate interests in the <qvctelemall.com> domain name. In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the Panel held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. Here, Complainant has made a prima facie case in support of their allegations against Respondent. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant maintains that Respondent is not commonly known by the <qvctelemall.com> domain name. The WHOIS information identifies Respondent as “isolutionindia/Sujit Kumar Singh,” which is not similar to the disputed domain name. Complainant further argues that Respondent is not licensed or authorized by Complainant to register the QVC mark within the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain, pursuant to Policy ¶ 4(c)(ii), as there is no evidence presented that indicates otherwise. 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 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).
Respondent’s <qvctelemall.com> domain name previously resolved to a website offering a variety of retail goods. Respondent’s resolving website portrayed itself as a telemarketing mail order organization and attempted to pass itself off as being affiliated with Complainant. The Panel finds the Respondent’s use of a confusingly similar disputed domain name in an attempt to pass itself off as being associated with Complainant and to sell goods in a manner that competes with Complainant’s direct response retail business is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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).”); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
Complainant points out that Respondent’s disputed domain name currently resolves to an inactive website which states that the account has been suspended. The Panel finds that Respondent’s failure to make an active use of the domain name is evidence that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant contends that Respondent’s registration and previous use of the <qvctelemall.com> domain name disrupted its direct response retail business. Internet users meaning to purchase goods from Complainant may have found Respondent’s website instead and purchased similar goods from Respondent. The Panel finds that Respondent’s prior use of a confusingly similar disputed domain name in order to operate a website in direct competition with Complainant did disrupt Complainant’s business, which is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); 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).
Respondent formerly used the disputed domain name to operate a telemarketing mail order website selling numerous retail goods, a manner of business that directly competed with Complainant’s direct response retail services. The resolving website attempted to pass itself off as associated with Complainant through its use of Complainant’s QVC mark and the confusingly similar disputed domain name. Given the similarities, there was an increased likelihood of confusion among Internet users as to Complainant’s sponsorship of the Respondent’s website and retail goods. Respondent attempted to profit from this confusion through the receipt of sales profits. The Panel determines that Respondent’s registration and use of the <qvctelemall.com> domain name to operate a competing website was in bad faith according to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Complainant argues that Respondent’s disputed domain name currently resolves to an inactive website. The Panel finds that Respondent’s use of the <qvctelemall.com> domain name to hold a website without making any active use constitutes bad faith under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The Panel finds that Policy 4(a)(iii) has 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 <qvctelemall.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 27, 2011
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