ER Marks, Inc. and QVC, Inc. v. Stuart Mckenzie
Claim Number: FA1103001377738
Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Sujata Chaudhri of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Stuart Mckenzie (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <qvc24.com> and <iqvc24.com>, registered with Tucows, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 14, 2011; the National Arbitration Forum received payment March 14, 2011.
On March 14, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <qvc24.com> and <iqvc24.com> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. verified that Respondent is bound by the Tucows, Inc. registration agreement and thereby has 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@qvc24.com and postmaster@iqvc24.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 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Respondent filed other correspondence by an email dated March 15, 2011; however, the Panelist finds that the other correspondence does not constitute a formal response and was accompanied by no evidence to counter any of the allegations in the Complaint.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <qvc24.com> and <iqvc24.com>, are confusingly similar to Complainant’s QVC mark.
2. Respondent has no rights to or legitimate interests in the <qvc24.com> and <iqvc24.com> domain names.
3. Respondent registered and used the <qvc24.com> and <iqvc24.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ER Marks, Inc., is a wholly owned subsidiary of Complainant QVC, Inc. ER Marks, Inc. is the owner of the QVC mark in the United States and QVC, Inc. owns the QVC mark outside the United States. For the purposes of this proceeding, the Panel elects to consider these two entities as a single Complainant. Complainant holds numerous trademark registrations for the QVC mark worldwide, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,455,889 issued September 1, 1987) and the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 1584688 issued October 31, 1994). Complainant uses the QVC mark in connection with its at-home shopping services.
Respondent, Stuart Mckenzie, registered the disputed domain names October 4, 2010. The disputed domain names resolve to websites featuring three links. When clicked on, none of the links appear to resolve to any website displaying active content.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 submits evidence of its multiple trademark registrations for the QVC mark with governmental trademark agencies such as the USPTO (e.g., Reg. No. 1,455,889 issued September 1, 1987) and the UKIPO (e.g., Reg. No. 1584688 issued October 31, 1994). The Panel finds that Complainant’s trademark registrations conclusively establish Complainant’s rights in the QVC mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also The Royal Bank of Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains, c/o C.S.C., FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established the complainant’s rights in the mark under the Policy).
Complainant argues that Respondent’s <qvc24.com> and <iqvc24.com> domain names are confusingly similar to Complainant’s QVC mark. Both disputed domain names contain Complainant’s entire mark, which previous panels have concluded is evidence of confusing similarity. See Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”). Additionally, both disputed domain names add the number “24” and the generic top-level domain “.com.” The Panel finds that neither of these additions is sufficient to distinguish the domain names from Complainant’s mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); 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.”). Respondent’s <iqvc24.com> domain name also adds the letter “i” to Complainant’s mark, which the Panel finds is also does not create a domain name distinct from Complainant’s mark. 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).”).
Therefore, the Panel finds that Respondent’s <qvc24.com> and <iqvc24.com> domain names are confusingly similar to Complainant’s QVC mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires Complainant to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant does so, the burden shifts to Respondent to bring affirmative evidence of its rights or legitimate interests in the disputed domain names. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).
While the Panel finds that Complainant made a prima facie case, the Panel notes that Respondent offered no evidence and filed no response in these proceedings. Therefore, the Panel may take that as evidence that Respondent lacks rights and legitimate interests in the disputed domain names. See 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.”). In the interests of fairness, however, the Panel still examines the record before making a determination as to whether or not Respondent has any rights or legitimate interests in the disputed domain names.
Complainant submits the WHOIS information for both of the disputed domain names, which indicates that “Stuart McKenzie” is the registrant of both names. Complainant argues that this is not even remotely nominally close to either of the disputed domain names. Complainant indicates that Respondent has claimed to have a business called International Quality Vacations Company and that Respondent purports that “IQVC” is intended to be an abbreviation of this alleged company. However, Complainant argues, in the absence of any evidence to support this claim, the Panel should hold that Respondent has no rights or legitimate interests in the disputed domain names. The Panel agrees. Therefore, the Panel finds that no evidence in the record supports any finding that Respondent is commonly known by either of the disputed domain names. See 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); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent’s <qvc24.com> and <iqvc24.com> domain names resolve to websites that display the same three links. Complainant indicates, and provides screenshots to support, that when clicked on, none of the links resolves to a website with any active content. The Panel finds that Respondent’s failure to make an active use of the disputed domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 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).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel notes that the examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith) Thus, the Panel may find bad faith beyond the perimeters of Policy ¶ 4(b). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
The Panel has already concluded that Respondent’s <qvc24.com> and <iqvc24.com> domain names fail to resolve to websites with any active content. The Panel finds that Respondent’s failure to link the disputed domain names to websites with any active content is conduct that supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); 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 Respondent registered and held the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <qvc24.com> and <iqvc24.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 19, 2011.
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