ER Marks, Inc. and QVC, Inc. v. Internet Solutions, LLC / Adam Stetzer
Claim Number: FA1305001497677
Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Sean W. Dwyer, Pennsylvania, USA. Respondent is Internet Solutions, LLC / Adam Stetzer (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qvcshoppingchannel.net>, registered with Enom, Inc.
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 1, 2013; the National Arbitration Forum received payment on May 1, 2013.
On May 2, 2013, Enom, Inc confirmed by e-mail to the National Arbitration Forum that the <qvcshoppingchannel.net> 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 May 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 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@qvcshoppingchannel.net. Also on May 6, 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 4, 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.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: ER Marks, Inc. and QVC, Inc. The Complaint argues that these entities should be treated as a single Complainant for the purposes of this proceeding, as ER Marks, Inc. is a wholly owned subsidiary of QVC, Inc. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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 Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. 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 Invs., 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 Am. Family Health Srvs. 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.
Complainant’s evidence is sufficient to establish a sufficient nexus or link between the Complainants; therefore, the Panel shall treat them as a single entity in this proceeding and shall collectively refer to the Complainants as “Complainant.”
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant contends it has rights in the QVC mark, used in connection with home shopping services. Complainant claims to be the owner of registrations for the QVC mark (e.g., Reg. No. 1,455,889 registered Sept. 1, 1987) with the United States Patent and Trademark Office (“USPTO”).
b) The disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <qvcshoppingchannel.net> domain name contains the QVC mark in its entirety, along with the generic terms “shopping” and “channel.” Additionally, Complainant notes the addition of the generic top-level domain (“gTLD”) “.net.” The addition of these elements does not distinguish a disputed domain name.
c) Respondent does not own any rights or have any legitimate interests in the <qvcshoppingchannel.net> domain name.
a. Respondent is not known by the term QVC or the disputed domain name.
b. Complainant contends that Respondent’s purpose in registering the disputed domain name was to take advantage of the recognition and reputation of Complainant’s famous mark. Thus, Respondent does not have legitimate rights or interests in Complainant’s mark.
d) Respondent registered and is using the <qvcshoppingchannel.net> domain name in bad faith.
a. Respondent is using the disputed domain name to disrupt Complainant’s business.
b. Respondent’s registration and use of the disputed domain name is evidence of bad faith because the <qvcshoppingchannel.net> domain name is confusingly similar to Respondent’s mark.
c. Respondent is using the confusingly similar disputed domain name to create confusion and attract Internet users for commercial gain.
i. Complainant alleges Respondent is obtaining click-through revenue for the advertisements and links displayed on the disputed domain name.
d. Complainant presumes Respondent had constructive notice of the QVC mark at the time the disputed domain name was registered.
e. Complainant contends that Respondent’s attempt to delay this proceeding by concealing its identity through the use of a proxy service is further evidence of bad faith.
e) Respondent registered the <qvcshoppingchannel.net> domain name on March 19, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the QVC mark, used in connection with home shopping services. Complainant is the owner of registrations for the QVC mark (e.g., Reg. No. 1,455,889 registered Sept. 1, 1987) with the United States Patent and Trademark Office (“USPTO”). Respondent registered the <qvcshoppingchannel.net> domain name on March 19, 2013.
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.”).
Complainant owns registrations for the QVC mark (e.g., Reg. No. 1,455,889 registered Sept. 1, 1987) with the USPTO. Therefore, the Panel finds that Complainant has rights in the QVC mark under 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).
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s mark. Complainant argues that the Respondent’s <qvcshoppingchannel.net> domain name contains the QVC mark in its entirety, along with the generic terms “shopping” and “channel.” Additionally, Complainant notes the addition of the gTLD “.net.” The addition of the generic terms “shopping” and “channel” do not make the disputed domain name distinct from Complainant’s QVC mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also QVC, Inc. v. Janice Liburd, FA 1341427 (Nat. Arb. Forum, Sept. 29, 2010) (addition of descriptive terms “shopping” and “channel” are insufficient to distinguish domain name <qvcshoppingchannel.com> from QVC mark). The addition of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <qvcshoppingchannel.net> domain name is confusingly similar to Complainant’s QVC mark under 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 argues that Respondent does not own any rights or have any legitimate interests in the <qvcshoppingchannel.net> domain name. Complainant contends Respondent is not known by the term QVC or the disputed domain name. The WHOIS record for the <qvcshoppingchannel.net> domain name lists ‘”Internet Solutions, LLC / Adam Stetzer” as the domain name registrant. The panel in Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) held that the WHOIS record is often determinative of whether a respondent is known by a domain name. Complainant also contends that it has not granted Respondent permission to use the QVC mark in any manner, especially in the registration of domain names that infer a false association with Complainant. Therefore, the Panel finds that Respondent is not commonly known by the <qvcshoppingchannel.net> domain name pursuant to Policy ¶ 4(c)(ii). See 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 contends that Respondent’s use of Complainant’s famous mark is intended to divert Internet users to the disputed domain name for Respondent’s commercial gain. Complainant alleges Respondent is obtaining click-through revenue for the advertisements and links displayed on the disputed domain name. Panels have found such use to be neither 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit 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 under Policy ¶ 4(c)(iii).”). Therefore the Panel finds that Respondent’s use of the disputed domain name is neither 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).
Complainant alleges that Respondent is using the disputed domain name to disrupt Complainant’s business. Complainant alleges that the website includes links to Complainant’s competitors. Such conduct is evidence of bad faith registration and use. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). The Panel finds that Respondent’s use and registration of the <qvcshoppingchannel.net> domain name constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii).
Complainant contends that Respondent is using the confusingly similar disputed domain name to create confusion and attract Internet users for commercial gain. Complainant alleges Respondent is obtaining click-through revenue from both competing and unrelated advertisements and links displayed on the website housed at the disputed domain name. Such conduct is evidence of bad faith registration and use. 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Therefore, the Panel finds that Respondent’s registration and use of the <qvcshoppingchannel.net> domain name in an attempt to obtain commercial gain constitutes bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant presumes Respondent had constructive notice of the QVC mark at the time the disputed domain name was registered. Panels have found constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel finds that Respondent had actual notice of Complainant’s mark; therefore, Respondent’s subsequent registration and use were 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 <qvcshoppingchannel.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 18, 2013
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