ER Marks, Inc. and QVC, Inc. v. Toby Greer
Claim Number: FA1104001383676
Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Sujata Chaudhri of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Toby Greer (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qvcshopping.us>, registered with 1&1 Internet Ag.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 14, 2011; the Forum also received a hard copy of the Complaint on April 14, 2011.
On April 18, 2011, 1&1 INTERNET AG confirmed by e-mail to the Forum that the <assurantdata.us> domain name is registered with 1&1 INTERNET AG and that Respondent is the current registrant of the name. 1&1 INTERNET AG has verified that Respondent is bound by the 1&1 INTERNET AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 19, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 9, 2011, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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:
Complainant owns the exclusive rights to the QVC mark, which it uses in connection with its home shopping business through the Internet and television.
Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for its QVC service mark (including Reg. No. 1,455,889, issued September 1, 1987).
Respondent registered the <qvcshopping.us> domain on November 20, 2010.
The disputed domain resolves to a website featuring third-party links, some of which resolve to websites of Complainant’s competitors and to Complainant’s own website.
Also displayed there is a link which offers the disputed domain name for sale.
Respondent’s <qvcshopping.us> domain name is confusingly similar to Complainant’s QVC mark.
Respondent does not have any rights to or legitimate interests in the domain name <qvcshopping.us>.
Respondent registered and uses the disputed <qvcshopping.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP decisions, as applicable, in rendering its decision in this proceeding.
Complainant has rights in its QVC service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
Respondent’s <qvcshopping.us> domain name is confusingly similar to Complainant’s QVC service mark. The disputed domain name contains the entire QVC mark, and merely adds the descriptive term “shopping,” which relates to an aspect of Complainant’s business, plus the country code top-level domain (“ccTLD”) “.us.” These alterations of the mark in forming the disputed domain name do not avoid a finding of confusing similarity under the standards of the Policy. See, for example, Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005):
Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.
See also Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”).
Accordingly, the Panel finds that Respondent’s <qvcshopping.us> domain name is confusingly similar to Complainant’s QVC service mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights to and legitimate interests in the <qvcshopping.us> domain name. Under Policy ¶ 4(a)(ii), the initial burden falls on a complainant to make out a prima facie case in support of its allegations as to Respondent’s rights to or legitimate interests in its domain name. Thereupon the burden shifts to a respondent to show that it does have such rights or legitimate interests. 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 UDRP.
Complainant has made out a prima facie case on the point of Respondent’s rights to or legitimate interests in the contested domain name. Therefore, and because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we may presume that Respondent does not have any rights to or legitimate interests in the <qvcshopping.us> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint filed under the Policy).
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed <qvcshopping.us> domain name which are cognizable under the Policy.
We first observe that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Respondent has no relationship with Complainant and has never been authorized to register or use Complainant’s QVC service mark in a domain name. Moreover, the pertinent WHOIS information indicates that the registrant of the <qvcshopping.us> domain name is “Toby Greer,” which does not resemble the domain name. On this record, we conclude that Respondent is not commonly known by the contested domain name so as to have rights to or legitimate interests in the domain sufficient to satisfy Policy ¶ 4(c)(i). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in a contested domain name under Policy ¶ 4(c)(i), where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so had no rights to or legitimate interests in a contested domain name under Policy ¶ 4(c)(i), where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We next note that Complainant alleges, without objection from Respondent, that the disputed domain name resolves to a website which offers click-through links both to Complainant’s own website and the websites of Complainant’s commercial competitors. Such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because that respondent was using the domain name to operate a website containing links to various websites competing with the business of a complainant, which the panel found to be a use not in connection with a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent had failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)).
It is also undisputed on this record that Respondent uses the disputed domain name to display a link which takes Internet users to a website offering the <qvcshopping.us> domain name for auction. Respondent’s willingness to sell the disputed domain at auction does not constitute 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name suggests that that respondent has no rights to or legitimate interests in that domain name under UDRP ¶ 4(a)(ii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007):
…precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <qvcshopping.us> domain name displays a link which redirects Internet users to a website offering the disputed domain name for sale. In the circumstances here presented, the willingness to sell is evidence of Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(i). See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering a domain name for sale site can be evidence of its bad faith registration and use); see also Step2 Co. v. Softastic.com Corp., D2000-0393 (WIPO June 26, 2000) (finding that a respondent’s attempt to sell the domain name there in question on <greatdomains.com>, a domain name auction site, for $100,000 constitutes bad faith).
Respondent uses the disputed domain name to display pay-per-click links which resolve to websites of Complainant’s commercial competitors. This disrupts Complainant’s business, and stands as evidence of bad faith use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to UDRP ¶ 4(b)(iii) by using them to operate a search engine with links to the products of the complainant and to complainant’s commercial competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name which was confusingly similar to a complainant’s mark to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represented bad faith registration and use of the domain under UDRP ¶ 4(b)(iii)).
Respondent’s use of the <qvcshopping.us> domain name, which is confusingly similar to Complainant’s QVC service mark, to attract Internet users who are looking for Complainant’s official site creates a likelihood of confusion as to the possibility of an affiliation between Complainant and Respondent. Respondent likely profits from this confusion when Internet users utilize the displayed links. This is evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv). 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 UDRP ¶ 4(b)(iv).
See also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under UDRP ¶ 4(b)(iv)).
For all of these reasons, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <qvcshopping.us> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 20, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page