ER Marks, Inc. and QVC, Inc. v. Lustia VanRibbonMorson
Claim Number: FA1105001386770
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 Lustia VanRibbonMorson (“Respondent”), Nebraska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qvccoupon.net>, registered with Moniker.com.
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 May 3, 2011; the National Arbitration Forum received payment on May 3, 2011.
On May 4, 2011, Moniker.com confirmed by e-mail to the National Arbitration Forum that the <qvccoupon.net> domain name is registered with Moniker.com and that Respondent is the current registrant of the name. Moniker.com has verified that Respondent is bound by the Moniker.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 May 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 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@qvccoupon.net. Also on May 5, 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 31, 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 <qvccoupon.net> domain name is confusingly similar to Complainant’s QVC mark.
2. Respondent does not have any rights or legitimate interests in the <qvccoupon.net> domain name.
3. Respondent registered and used the <qvccoupon.net> 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. Complainant QVC, Inc. owns the QVC mark outside the United States, and Complainant ER Marks, Inc. owns the QVC mark inside the United States. As Complainants have established a sufficient nexus to bring this Complaint jointly, Complainants will hereinafter be referred to collectively as “Complainant.” Complainant offers direct response television retail shopping primarily via television, cable, satellite, and digital terrestrial broadcasts, as well as via the Internet and through mobile devices. Complainant owns a United States Patent and Trademark Office (“USPTO”) trademark registration for the QVC mark (Reg. No. 1,455,889 issued September 1, 1987).
Respondent, Lustia VanRibbonMorson, registered the <qvccoupon.net> domain name on March 6, 2011. The disputed domain name resolves to a website that prominently displays Complainant’s mark; links to Complainant’s competitors in core fields like jewelry, fashion, beauty, cookware, and home accessories; and links to unrelated third-party websites that specialize in coupons and deals, such as those located at the <groupon.com>, <dealfind.com>, <dealsground.com>, <couponmountain.com>, and <littlebirdie.com> domain names.
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 USPTO trademark registration for the QVC mark (Reg. No. 1,455,889 issued September 1, 1987). The Panel finds that this USPTO trademark registration establishes Complainant’s rights in the QVC mark for the purposes of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <qvccoupon.net> domain name is confusingly similar to Complainant’s QVC mark because the disputed domain name merely combines Complainant’s mark with the generic term “coupon” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a generic term to Complainant’s mark does not remove the disputed domain name from the realm of confusing similarity. See 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); see also 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)). The Panel also concludes that the added gTLD is of no consequence according to a Policy ¶ 4(a)(i) analysis. 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.”). The Panel accordingly determines that Respondent’s <qvccoupon.net> domain name is confusingly similar to Complainant’s QVC mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
According to Policy ¶ 4(a)(ii), Complainant must put forth a prima facie case against Respondent before Complainant can transfer the burden to show rights and legitimate interests to Respondent. In this case, the Panel finds that Complainant has met this obligation. Respondent, however, has not satisfied its burden of proof because it has defaulted and not responded to the Complaint. The Panel accordingly infers that Respondent does not have rights and legitimate interests in the disputed domain name as it has not contested Complainant’s allegations. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Nevertheless, the Panel will consider the evidence against the Policy ¶ 4(c) factors to independently determine whether Respondent possesses any rights and legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not a licensee of Complainant and has not been authorized by Complainant to register or use the disputed domain name. Complainant argues that Respondent has no relationship whatsoever with Complainant. The WHOIS information for the <qvccoupon.net> domain name lists the registrant as “Lustia VanRibbonMorson,” which has no facial connection with the disputed domain name. Based on this information, the Panel finds that Respondent neither is commonly known by the disputed domain name nor has rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant contends that Respondent’s website resolving from the <qvccoupon.net> domain name features links both to Complainant’s competitors in the fields of jewelry, fashion, beauty, cookware and home accessories, as well as to unrelated third-party websites featuring coupons unrelated to Complainant. The Panel finds that posting various related and unrelated links on a resolving website is not consistent with the Policy ¶ 4(c)(i) requirement for a bona fide offering of goods or services or the Policy ¶ 4(c)(iii) requirement for a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s website at the <qvccoupon.net> facilitates competition with Complainant by advertising links to Complainant’s competitors that offer similar products like jewelry, fashion, beauty, cookware and home accessories. The Panel finds that this competition disrupts Complainant’s business which is evidence of Respondent’s bad faith registration and use according to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); 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 argues that Respondent presumably uses the <qvccoupon.net> domain name to attract Internet users and drive traffic to Respondent’s pay-per-click directory web page. Complainant asserts that Respondent’s inclusion of Complainant’s mark in the disputed domain name intends to create a likelihood of confusion among Internet users as to the affiliation or sponsorship of Respondent’s website in order to commercially gain from the pay-per-click fees. The Panel finds this activity shows bad faith registration and use according to Policy ¶ 4(b)(iv). See 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); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
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 <qvccoupon.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 13, 2011
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