national arbitration forum

 

DECISION

 

ER Marks, Inc. and QVC, Inc. v. ICS INC.

Claim Number: FA1202001428474

 

PARTIES

Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Sean W. Dwyer, Pennsylvania, USA.  Respondent is ICS Inc. (“Respondent”), Cayman Islands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <qvcqvc.com>, registered with Enom, Inc.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2012; the National Arbitration Forum received payment on February 7, 2012.

 

On February 7, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <qvcqvc.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 February 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2012 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@qvcqvc.com.  Also on February 10, 2012, 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 March 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <qvcqvc.com> domain name is confusingly similar to Complainant’s QVC mark.

 

2.    Respondent does not have any rights or legitimate interests in the <qvcqvc.com> domain name.

 

3.    Respondent registered and used the <qvcqvc.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, ER Marks, Inc., is a wholly owned subsidiary of Complainant, QVC, Inc. As this relationship is adequate to establish a sufficient nexus or link between the Complainants, the Panel will treat the Complainants as a single entity in this proceeding and allow them to bring this Complainant jointly. The Complainants will be collectively referred to as “Complainant.” Complainant operates a home-retail shopping business, primarily through television broadcasts aired internationally. Complainant owns many trademark registrations for its QVC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,455,889 registered September 1, 1987).

 

Respondent, ICS, Inc., registered the <qvcqvc.com> domain name on December 7, 2011. Respondent’s domain name resolves to a website that displays hyperlinks to and advertisements for Complainant’s competitors. 

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant owns many trademark registrations for its QVC mark with the USPTO (e.g., Reg. No. 1,255,889 registered September 1, 1987). The Panel holds that by registering the QVC mark with the USPTO, Complainant has demonstrated its rights in the mark under 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 Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Additionally, in Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), the panel found that it is irrelevant where a complainant has its trademark registered, so long that it can establish rights in any jurisdiction. See also  KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant alleges Respondent’s <qvcqvc.com> domain name is confusingly similar to Complainant’s QVC mark because the domain name uses the QVC mark in its entirety twice, with the generic top-level domain (“gTLD”) “.com” being the only additional change. The panel in Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), stated that including a gTLD in a mark is immaterial when analyzing a claim under Policy ¶ 4(a)(i). Likewise, in Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), the panel emphasized that it is established that adding a gTLD to a mark is irrelevant when examining a claim of confusing similarity under the Policy.

 

Panels have also found that domain names comprised of two of a complainant’s marks are confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark). The Panel finds that combining two of Complainant’s marks to form a disputed domain name is analogous to repeating Complainant’s single mark two times in a disputed domain name and therefore holds that Respondent’s <qvcqvc.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent holds no rights or legitimate interests in the <qvcqvc.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After Complaint successfully makes a prima facie case, Respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Because Respondent has failed to submit a reply to these proceedings, the Panel may infer that Respondent admits to having no rights or legitimate interests in the domain name. In Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002), the panel held similarly, stating that “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.” 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). The Panel will, however, determine if Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c) based on evidence provided in the record.

 

Complainant claims that Respondent is not commonly known by the <qvcqvc.com> domain name, based on the WHOIS information, which lists the domain name registrant as “ICS Inc.” In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel held that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply. Likewise, the panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), found that based on the WHOIS information, the respondent was not commonly known by the disputed domain name. Accordingly, the Panel here finds that Respondent is not commonly known by the <qvcqvc.com> domain name based on the WHOIS information and absent other supporting evidence.

 

Complainant argues that Respondent’s disputed domain name links to a website “replete with links to Complainant’s competitors.” The screenshots provided show that Respondent’s web page displays hyperlinks to businesses that are in direct competition with Complainant’s business. Under Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), operating a “pay-per-click” website at a confusingly similar domain name is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the domain name to fail to offer goods or services other than links to competing third-party websites is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).


The Panel finds that Policy ¶ 4(a)(ii) is satisfied.  

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s use of the <qvcqvc.com> domain name disrupts Complainant’s business because it uses the disputed domain name to divert Internet users to other third-party websites in competition with Complainant. The Panel holds that use of a confusingly similar domain name to attract and mislead consumers to competitors demonstrates bad faith registration and use under Policy ¶ 4(b)(iii). See 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)); see also ER Marks, Inc. v. O’Connor, FA 1357984 (Nat. Arb. Forum, December 19, 2010) (stating that using a confusingly similar name to draw Internet traffic to a competitor is disruptive and serves as evidence of bad faith under Policy ¶ 4(b)(iii)).

 

Complainant argues that Respondent uses the confusingly similar domain name to suggest an affiliation with Complainant’s business in order to lure consumers to its website, and as a result, Respondent gains revenue from the “click-through” fees generated. The Panel holds that by attracting and misleading Internet traffic to a website to create profit, Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

 

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 <qvcqvc.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  March 20, 2012

 

 

 

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