ER Marks, Inc. and QVC, Inc. v. Chor Thao
Claim Number: FA1104001382567
Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Jeffrey H. Epstein of Cowen, Liebowitz & Latman, P.C., New York, USA. Respondent is Chor Thao (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qvccoupons.com>, registered with eNom, 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 April 8, 2011; the National Arbitration Forum received payment on April 8, 2011.
On April 11, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <qvccoupons.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 April 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 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@qvccoupons.com. Also on April 13, 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 May 5, 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 <qvccoupons.com> domain name is confusingly similar to Complainant’s QVC mark.
2. Respondent does not have any rights or legitimate interests in the <qvccoupons.com> domain name.
3. Respondent registered and used the <qvccoupons.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 Complainant, QVC, Inc., and owns the rights to the QVC marks inside the U.S. Complainant, QVC, on the other hand, owns the QVC marks outside the U.S. The Panel finds that the Complainants are sufficiently related and thus will be treated as a single entity and referred to as “Complainant” for the remainder of this proceeding. Complainant owns a trademark registration for the QVC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,455,889 issued Sept. 1, 1987).
Respondent, Chor Thao, registered the <qvccoupons.com> domain name on September 16, 2010. The disputed domain name resolves to a website that displays Complainant’s QVC marks; provides information on Complainant; and features links to Complainant’s own website, to the websites of Complainant’s competitors, like the Home Shopping Network, and to other unrelated third-party websites.
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 owns a trademark registration for the QVC mark with the USPTO (Reg. No. 1,455,889 issued Sept. 1, 1987). The Panel finds that this USPTO trademark registration is conclusive evidence of Complainant’s rights in the QVC mark for the purposes of Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Complainant contends that Respondent’s <qvccoupons.com> domain name is confusingly similar to Complainant’s QVC mark because the disputed domain name only differs from Complainant’s mark in the additions of the generic term “coupons” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic term to Complainant’s mark does not remove the disputed domain name from the realm of the confusingly similar. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel also determines that a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See 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). The Panel accordingly concludes that Respondent’s <qvccoupons.com> domain name is confusingly similar to Complainant’s QVC mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name, and the evidence put forth by Complainant to support this assertion establishes the prima facie case against Respondent required by Policy ¶ 4(a)(ii). Respondent now bears the burden of proving the existence of its rights and legitimate interests, but its failure to respond allows the Panel to conclude that Respondent has not met this burden and lacks rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). In order to make a full determination on Respondent’s rights and legitimate interests, however, the Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors.
Complainant argues that Respondent is not commonly known by the <qvccoupons.com> domain name. Complainant contends that Respondent is not a licensee of Complainant and has never been authorized by Complainant to use the QVC mark or register the disputed domain name. Complainant alleges that Respondent has no relationship whatsoever with Complainant. The WHOIS information for the disputed domain name is “Chor Thao,” which does not indicate any nominal association between Respondent and the disputed domain name. The Panel thus concludes that Respondent is not commonly known by the disputed domain name and accordingly lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 20060 (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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that the <qvccoupons.com> domain name resolves to a website that features links to Complainant’s own website, to the websites of Complainant’s competitors, such as the Home Shopping Network, and to unrelated third-party websites. The Panel finds that Respondent’s use of the disputed domain name in connection with such a website does not comport with a bona fide offering of goods or services or a legitimate noncommercial or fair use as required by Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods or services unrelated to complainant).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that the website resolving from Respondent’s <qvccoupons.com> domain name displays links to competitors of Complainant, such as the Home Shopping Network. Complainant argues that by directing consumers to a competitor’s website at a domain name using Complainant’s mark, Respondent is disrupting Complainant’s business. The Panel finds Respondent’s disruption of Complainant’s business by providing links to competitors supports a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).
Complainant contends that Respondent uses the QVC mark in the <qvccoupons.com> domain name in order to attract Internet users and drive traffic to its website. Complainant argues that Respondent hopes to create a likelihood of confusion as to the source or affiliation of Respondent’s website through its use of Complainant’s mark. Complainant alleges that the links featured at the disputed domain name are presumably pay-per-click links that generate revenue for Respondent when clicked, so Respondent likely intends to attract and confuse Complainant’s intending customers in the hopes of profiting from the links. The Panel finds that Respondent’s attempt to attract Complainant’s customers for Respondent’s own commercial gain is in violation of Policy ¶ 4(b)(iv) and shows bad faith registration and use. See Univ. 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <qvccoupons.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 16, 2011
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