national arbitration forum

 

DECISION

 

ER Marks, Inc. and QVC, Inc. v. masanori takani

Claim Number: FA1107001398216

 

PARTIES

Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Sujata Chaudhri of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is masanori takani (“Respondent”), Japan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <qvcマリンフィールド.com> (translated <xn--qvc-pi4bphqc0c2el1f3e.com>), registered with Gmo Internet, Inc. d/b/a Onamae.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically July 12, 2011; the National Arbitration Forum received payment July 12, 2011The Complaint was submitted in both Japanese and English.

 

On July 17, 2011, Gmo Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the National Arbitration Forum that the <qvcマリンフィールド.com> domain name (translated <xn--qvc-pi4bphqc0c2el1f3e.com>) is registered with Gmo Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name.  Gmo Internet, Inc. d/b/a Onamae.com verified that Respondent is bound by the Gmo Internet, Inc. d/b/a Onamae.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 28, 2011, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of August 17, 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@qvcマリンフィールド.com.  Also on July 28, 2011, the Japanese language 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 August 22, 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.

 

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.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement was satisfied through the Japanese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    The domain name that Respondent registered,  <qvcマリンフィールド.com>, (translated <xn--qvc-pi4bphqc0c2el1f3e.com>) is confusingly similar to Complainant’s QVC mark.

 

2.    Respondent has no rights to or legitimate interests in the <qvcマリンフィールド.com> domain name (translated <xn--qvc-pi4bphqc0c2el1f3e.com>).

 

3.    Respondent registered and used the <qvcマリンフィールド.com> domain name in bad faith (translated <xn--qvc-pi4bphqc0c2el1f3e.com>).

 

B.  Respondent failed to submit a Response in this proceeding.

 

Preliminary Issue: Multiple Complainants

 

In the instant proceedings, there are two Complainants.  Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.”  The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”  The Panel finds there is a sufficient nexus between Complainant, ER Marks, Inc., and Complainant, QVC, Inc., due to Complainants’ subsidiary-parent company relationship.  Hereinafter, both Complainants will be jointly referred to as Complainant.

 

Preliminary Issue:  Internationalized Domain Name

 

The domain name in dispute, <qvcマリンフィールド.com>,  is an internationalized domain name (“IDN”) with the PUNYCODE translation of <xn--qvc-pi4bphqc0c2el1f3e.com>.  An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters.  In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE.  For Complainant to display the <xn--qvc-pi4bphqc0c2el1f3e.com> domain name properly in the <qvcマリンフィールド.com> domain name, it first had to encode it into the <xn--qvc-pi4bphqc0c2el1f3e.com> domain name.

 

In the past, panels have found IDNs and their PUNYCODE translations to be equivalent.  See Damien Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name).  This Panel finds that the <qvcマリンフィールド.com> domain name is the same as its PUNYCODE translation, <xn--qvc-pi4bphqc0c2el1f3e.com>, for purposes of this proceeding.

 

FINDINGS

Complainant, QVC, Inc., was founded in 1986 and offers direct response television retail shopping under its QVC mark.  Complainant holds trademark registrations for its QVC mark with both the Japan Patent Office (“JPO”) (e.g., Reg. No. 4,985,032 registered September 8, 2006) and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,455,889 registered September 1, 1987).  Complainant, ER Marks, Inc., is a wholly owned subsidiary of Complainant, QVC, Inc.

 

Respondent, masanori takani, registered the <qvcマリンフィールド.com> domain name (translated <xn--qvc-pi4bphqc0c2el1f3e.com>) December 27, 2010.  The disputed domain name resolves to a website containing hyperlinks to third parties unrelated to Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant claims rights in the QVC mark originating from its trademark registrations with the JPO (e.g., Reg. No. 4,985,032 registered September 8, 2006) and USPTO (e.g., Reg. No. 1,455,889 registered September 1, 1987). A trademark registration with a federal trademark agency is sufficient to establish rights for purposes of Policy ¶ 4(a)(i).  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). As Complainant has provided substantial evidence of its trademark rights, the Panel finds that Complainant owns rights in its QVC mark pursuant to Policy ¶ 4(a)(i).

 

Complainant urges that Respondent’s <qvcマリンフィールド.com> domain name (translated <xn--qvc-pi4bphqc0c2el1f3e.com>) is confusingly similar to Complainant’s QVC mark because it consists of the QVC mark combined with additional characters and the generic top-level domain (“gTLD”) “.com.”  According to Complainant, the added characters “マリンフィールド” translate to “Marine Field” in Katakana, a form of Japanese.  Complainant claims that the terms “marine” and “field” are descriptive of Complainant’s stadium that it sponsors in Japan, in which the Chiba Lotte Marines play. The addition of such descriptive terms fails to sufficiently distinguish a disputed domain name from a complainant’s mark.  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).  The disputed domain name also contains the generic top-level domain (“gTLD”) “.com.” Addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis as a top-level domain is required in every domain name.  See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). 

 

Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s QVC mark pursuant to Policy ¶ 4(a)(i); Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the  <qvcマリンフィールド.com> domain name (translated <xn--qvc-pi4bphqc0c2el1f3e.com>).  Once Complainant makes a prima facie case to support its allegations, the burden of proof shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant made a prima facie case.  Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel still examines the record to determine whether evidence there suggests that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  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 Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”).

 

Complainant alleges that Respondent is not commonly known by the <qvcマリンフィールド.com> domain name (translated <xn--qvc-pi4bphqc0c2el1f3e.com>).  Complainant asserts that Respondent is not a licensee of Complainant and that Respondent has never been authorized to use Complainant’s QVC mark.  The WHOIS information lists the domain name registrant as “masanori takani,” which the Panel finds is not nominally similar to the disputed domain name.  Respondent failed to respond to the Complaint and failed to contradict any of Complainant’s arguments or the evidence in the record. The Panel finds that Respondent is not commonly known by the disputed domain name.  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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Complainant satisfied Policy ¶ 4(c)(ii). 

 

Complainant contends that Respondent uses the <qvcマリンフィールド.com> domain name (translated <xn--qvc-pi4bphqc0c2el1f3e.com>) to resolve to a website that contains hyperlinks to third parties unrelated to Complainant and Complainant’s retail shopping business.  The Panel finds that such a use 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 pursuant to Policy ¶ 4(c)(iii).  See 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 and services unrelated to the complainant); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).

 

Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

According to Complainant, Respondent’s <qvcマリンフィールド.com> domain name (translated <xn--qvc-pi4bphqc0c2el1f3e.com>) resolves to a website that contains hyperlinks to third parties that have no relation to Complainant.  Complainant argues that Respondent receives click-through fees from these hyperlinks and that, therefore, Respondent is profiting from its use of the confusingly similar disputed domain name.  Complainant claims that, because the disputed domain name is confusingly similar to Complainant’s QVC mark, Internet users are likely to become confused as to Complainant’s affiliation with Respondent’s website. A respondent’s attempt to profit from the creation of Internet user confusion by offering unrelated pay-per-click links is evidence that supports findings of bad faith registration and use.  See 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)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).  The Panel finds that Respondent’s registration and use are evidence of bad faith under Policy ¶ 4(b)(iv).

 

Complainant further asserts that Respondent registered the <qvcマリンフィールド.com> domain name (translated <xn--qvc-pi4bphqc0c2el1f3e.com>) December 27, 2010, which is the same day that the city of Chiba announced the renaming of “Chiba Marines Stadium” to “QVC Marines Stadium.” Evidence that a respondent took advantage of a public announcement to register a disputed domain name is evidence of opportunistic bad faith under Policy ¶ 4(a)(iii).  See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do.  The panel finds a negative inference from this.”).  Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the QVC mark.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because the Panel finds that Respondent had actual notice of Complainant’s trademark rights.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

    

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant has satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <qvcマリンフィールド.com> domain name (translated <xn--qvc-pi4bphqc0c2el1f3e.com>) be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated:  September 5, 2011.

 

 

 

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