ER Marks, Inc. and QVC, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1304001496727
Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Sean W. Dwyer, Pennsylvania, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qvcshopping.com>, registered with Internet.bs Corp.
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 26, 2013; the National Arbitration Forum received payment on April 26, 2013.
On May 8, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <qvcshopping.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2013 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@qvcshopping.com. Also on May 10, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 10, 2013, 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
i. Respondent cannot produce evidence that Respondent is commonly known as QVC or by the <qvcshopping.com> domain name.
i. Respondent has been subject to numerous adverse UDRP holdings.
ii. Respondent is using the disputed domain name in competition with Complainant.
iii. Respondent is using the disputed domain name that is confusingly similar to Complainant’s QVC marks to create confusion regarding the affiliation of its website in order to attract users for profit.
iv. Respondent is presumed to have had constructive notice of the QVC marks at the time that disputed domain names were registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE—MULTIPLE COMPLAINANTS
There are two Complainants in this matter: ER Marks, Inc. and QVC, Inc. Complainant contends that ER Marks, Inc., is a wholly owned subsidiary of QVC, Inc., as such, Complainant should be treated as a single entity for the purposes of this proceeding.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). 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.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
As the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, the Panel shall treat them all as a single entity in this proceeding. As a result, throughout this decision, Complainants shall be collectively referred to as “Complainant.”
Complainant, ER Marks, Inc. and QVC, Inc., offers shopping services via television, cable, satellite, and digital terrestrial broadcasts, and shopping online via the Internet and through social networking websites and mobile and electronic devices. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the QVC mark (e.g., Reg. No. 1,455,889 registered September 1, 1987).
Respondent, PPA Media Services / Ryan G Foo, registered the <qvcshopping.com> domain name on December 20, 2002. Respondent is using the disputed domain name in competition with Complainant.
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."
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.
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.”).
The Panel finds that Complainant’s registration of the QVC mark with the USPTO establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Although Respondent appears to reside in Chile, Complainant does not need to register its mark in the country that Respondent operates in under Policy ¶ 4(a)(i), so long as Complainant establishes rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant alleges that Respondent’s domain name <qvcshopping.com> is confusingly similar to Complainant’s QVC marks because Respondent merely added a generic term to Complainant’s mark. Complainant argues that Respondent simply added the generic term “shopping” to the famous QVC mark. The addition of a generic term does not negate confusing similarity under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Complainant also alleges that the addition of the gTLD name extension “.com” to <qvcshopping.com> does not have any legal significance. Respondent’s addition of a gTLD to a domain name is inconsequential under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Thus, the Panel finds that Respondent’s <qvcshopping.com> domain name is confusingly similar to Complainant’s QVC mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent cannot produce evidence that Respondent is commonly known as QVC or by the <qvcshopping.com> domain name. The WHOIS record for the disputed domain name lists “PPA Media Services / Ryan G Foo” as the registrant. Complainant argues that it has not granted Respondent permission to use the QVC marks and certainly has not granted Respondent permission to file for domain names that infer a false association with QVC. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends in its Policy ¶ 4(a)(iii) section that Respondent uses the website resolving from the <qvcshopping.com> domain name to click on hyperlinks displayed at the website in order to make a profit. The resolving webpage features hyperlinks to Complainant’s own website and the websites of Complainant’s competitors. Respondent’s webpage lists links titled “QVC Home Shopping,” “QVC,” “TV Shopping,” and more. The Panel finds that Respondent has not used the disputed domain name for a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, as Respondent is using the domain name to provide competing hyperlinks. 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)).
Complainant contends that Respondent has been subject to numerous adverse UDRP holdings. See Am. Sports Licensing, Inc. v. PPA Media Servs., FA 1426016 (Nat. Arb. Forum Mar. 2, 2012); see also Rodney Cobb Chevrolet v. PPA Media Servs., FA 1461908 (Nat. Arb. Forum Oct. 23, 2012); see also Google Inc. v. PPA Media Servs., FA 1468207 (Nat. Arb. Forum Dec. 12, 2012). As Respondent has been a party to prior UDRP proceedings resulting in findings of bad faith against Respondent, the Panel finds that Respondent has registered and is using the <qvcshopping.com> domain name in bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant alleges that Respondent is using the disputed domain name in competition with Complainant. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that the disputed domain names resolved to websites that list links to competitors of Complainant, evidence that Respondent intended to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii). Accordingly, the Panel finds that Respondent has registered and is using the domain name to disrupt Complainant’s business, proving bad faith use and registration under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent is using the disputed domain name that is confusingly similar to Complainant’s QVC marks to create confusion regarding the affiliation of its website in order to attract users for profit. Respondent’s disputed domain name resolves to a web page that provides links to Complainant’s website and the websites of Complainant’s competitors. Complainant claims that Respondent undoubtedly intends to confuse visitors to the websites, and attract traffic in order to generate click-through revenue. The Panel finds that Respondent’s use of the disputed domain name to provide links to Complainant’s website and Complainant’s competitors’ websites, for which it presumably commercially profits, shows that Respondent has registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Due to Respondent’s use of the domain name to provide links to Complainant and competitors of Complainant, Respondent had actual knowledge of the mark and Complainant's rights in the mark. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <qvcshopping.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 24, 2013
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