ER Marks, Inc. and QVC, Inc. v. Michelle Reid / SUNAQUA Properties, INC
Claim Number: FA1903001832303
Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Kieran G. Doyle, Esq of Cowan, Liebowitz & Latman, P.C., USA. Respondent is Michelle Reid / SUNAQUA Properties, INC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qvc3.com>, registered with Tucows Domains 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on March 1, 2019; the Forum received payment on March 1, 2019.
On March 4, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <qvc3.com> domain name (the Domain Name) is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 March 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 25, 2019 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@qvc3.com. Also on March 5, 2019, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
Multiple Complainants
Two parties, ER Marks, Inc. and QVC, Inc., filed this administrative proceeding as Complainants. The relevant rules governing multiple complainants are Rule 3(a) and the Forum’s Supplemental Rule 1(e). Rule 3(a) states “Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules.” The 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 (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 this case, the two named Complainants allege that ER Marks, Inc. is a wholly-owned subsidiary of QVC, Inc., that QVC, Inc. owns the QVC marks outside the U.S. and ER Marks, Inc. owns those marks in the U.S. They allege that ER Marks, Inc. acquired the QVC mark from QVC, Inc. by assignment in 2003. The registration certificate for the QVC mark issued by the U.S. Patent and Trademark Office (USPTO) shows QVC Network, Inc. as the registered owner as of the registration date, September 2, 1987, and an Acceptance of Renewal document issued by the USPTO on April 20, 2007 shows ER Marks, Inc. as the owner. See, Complaint Exhibit F. There is no documentary evidence of the alleged assignment but the documents issued by the USPTO are sufficient proof and corroboration of the ownership of the QVC mark as alleged. The Complaint is framed as being filed jointly by both entities, and Complainant’s allegations regarding the organizational relationship among the named Complainants are not disputed.
From this the Panel is satisfied that there is a sufficient nexus between the named Complainants to enable each of them to claim rights in the Domain Name. It is both procedurally efficient and equitable to all parties for a single Complaint to be permitted by all three Complainants, and the Panel will treat them as a single entity for the purposes of this proceeding. All references to “Complainant” in this Decision, even though in the singular, are to both named Complainants.
A. Complainant
Complainant offers direct response television retail shopping, primarily via television, cable, satellite, and digital terrestrial broadcasts, as well as via Internet and through mobile devices. Complainant has rights in the QVC mark through its trademark registrations with the USPTO (Reg. No. 1,455,889, registered September 1, 1987). Respondent’s Domain Name is confusingly similar to Complainant’s QVC mark as it incorporates the mark in its entirety, merely adding the number “3” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not licensed or otherwise authorized to use Complainant’s QVC mark and is not commonly known by the Domain Name. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the Domain Name resolves to an inactive website.
Respondent registered and uses the Domain Name in bad faith. Respondent has engaged in a pattern of bad faith registration as it has registered multiple domain names incorporating third party marks. Respondent also disrupts Complainant’s business by creating initial interest confusion. Finally, Respondent had actual knowledge of Complainant’s rights in the QVC mark when she registered the Domain Name.
B. Respondent
Respondent did not to submit a Response.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 (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 as follows with respect to the matters at issue in this proceeding:
The QVC mark was registered to Complainant with the USPTO (Reg. No. 1,455,889) on September 1, 1987). See, Complaint Exhibit F. Registration of a mark with the USPTO is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s Domain Name is confusingly similar to the QVC mark. It incorporates the mark in its entirety, merely adding the number “3” and the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from the Complainant’s mark for the purposes of Policy ¶ 4(a)(i) analysis. Twentieth Century Fox Film Corporation v Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”), Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name, and this establishes its confusing similarity to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the QVC mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not commonly known by the Domain Name, (ii) she is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because it resolves to an inactive web site, and (iii) Complainant has not authorized or licensed Respondent to use its QVC mark. These allegations are supported by competent evidence.
The WHOIS report submitted as Complaint Exhibit J lists the registrant of the Domain Name as “Michelle Reid,” and the registrant organization as “SUNAQUA Properties, Inc.” Neither of these names bears any resemblance to the Domain Name. UDRP panels have consistently held that, in the absence of evidence to the contrary, a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Names within the meaning of Policy ¶ 4(c)(ii).
Complaint Exhibit K is a screenshot of the web site resolving from the Domain Name. The only substantive or operative words on this page read “www.qvc3.com OUR WEB SITE IS UNDER CONSTRUCTION.” The web site is obviously inactive. Inactive holding of a domain name has often been held not to qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
Respondent’s registration and use of the Domain Name, described above in the rights or legitimate interests analysis, disrupts Complainant’s business by creating initial interest confusion. Diversion of users by creating initial interest confusion has been held to constitute disruption for the purposes of a Policy ¶ 4(b)(iii) analysis, even though, as here, Respondent’s web site being inactive, there is no evidence of actual competition. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)), Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).).
The cited decisions found that this conduct fell within the circumstances articulated in Policy ¶ 4(b)(iii), even though that paragraph seems to require that the respondent’s intent must be to disrupt “the business of a competitor.” Nevertheless, the examples of bad faith listed in Policy ¶ 4(b) is nonexclusive. Paragraph 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and causing initial interest confusion by using a domain name so nearly identical to a complainant’s mark as this one is, is strongly indicative of bad faith in and of itself. Similar to the facts in the Love City Brewing decision cited above, Respondent’s web site here is inactive. An Internet user reaching it thinking it was Complainant’s site would naturally question whether Complainant, who is known to depend heavily upon its Internet presence to do business, is still a viable, ongoing concern. This would be a substantial disruption of Complainant’s business and qualifies as bad faith registration and use, even in the absence of evidence of competition.
Secondly, it is evident from the extent to which Complainant’s mark is known and recognized throughout the world, and from the close similarity between Complainant’s mark and its domain names on the one hand and Respondent’s Domain Name on the other that Respondent had actual knowledge of Complainant’s mark on February 5, 2017, when she registered the Domain Name. See, WHOIS report submitted as Complaint Exhibit J registration date. Complainant has registered and uses its QVC mark with the numerals 2 and 3, e.g., QVC2, <QVC3.org>, for its own domain names, which resolve to web sites from which it offers goods for sale. See, Complaint Exhibits E and M. It is obvious that Respondent knew of this practice and registered her Domain Name with the intent and expectation that it would cause Internet users to believe that hers was one of Complainant’s domains. Given the nonexclusive, open-ended nature of Policy ¶ 4(b) the Panel may consider additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <qvc3.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
March 28, 2019
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