Qurate Retail, Inc. v. qurate gro
Claim Number: FA2212002024336
Complainant is Qurate Retail, Inc. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is qurate gro (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qurategrp.com>, registered with Domain.com, LLC.
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 Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on December 16, 2022; Forum received payment on December 16, 2022.
On December 16, 2022, Domain.com, LLC confirmed by e-mail to Forum that the <qurategrp.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC 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 December 19, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2023 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@qurategrp.com. Also on December 19, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant made the following contentions.
Complainant owns retail companies in video commerce. Complainant asserts rights in the QURATE RETAIL GROUP Marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,921,649, registered November 26, 2019). See Compl. Ex. 5. The <qurategrp.com> domain name is confusingly similar to Complainant’s QURATE RETAIL GROUP Marks. The disputed domain incorporates the first and dominant word “QURATE” from Complainant’s mark, shortens the final descriptive word “group” to the abbreviation “grp”, and adds the generic top level domain (“gTLD”) “.com” to form.
Respondent lacks rights or legitimate interests in the <qurategrp.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the QURATE RETAIL GROUP mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to impersonate Complainant in connection with a fraudulent phishing scheme.
Respondent registered and uses the <qurategrp.com> domain name in bad faith. First, Respondent uses the disputed domain name in an attempt to pass off as Complainant. Further, Respondent uses the disputed domain name in connection with a fraudulent phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that owns retail companies in video commerce.
2. Complainant has established its rights in the QURATE RETAIL GROUP Mark based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,921,649, registered November 26, 2019) together with other registered marks for QURATE RETAIL GROUP.
3. Respondent registered the <qurategrp.com> domain name on August 4, 2022.
4. Respondent has used the disputed domain name to impersonate Complainant in connection with a fraudulent phishing scheme.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant can show that it has a trademark or service mark on which it can rely. Complainant submits that it has rights in the QURATE RETAIL GROUP Mark (e.g. Reg. No. 5,921,649, registered November 26, 2019) based upon registration with the USPTO together with other registered marks for QURATE RETAIL GROUP. See Compl. Ex. 5. Registration with a governmental trademark authority is sufficient to demonstrate rights in a mark per Policy 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established its rights in the QURATE RETAIL GROUP Mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s QURATE RETAIL GROUP Mark. Complainant argues that the <qurategrp.com> domain name is confusingly similar to Complainant’s QURATE RETAIL GROUP Mark. The inclusion of the dominant portion of a complainant’s mark as well as an abbreviated version of the mark may not defeat an argument of confusing similarity per Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”); see also Sainato's Restaurant and Catering Limited v. chen xue ming, FA 1781748 (Forum June 4, 2018) (finding the <sainatos.com> domain name is confusingly similar to the SAINATO’S RESTAURANT mark as it “appends the gTLD “.com” to an abbreviated version of the mark.”). Further, per Policy ¶ 4(a)(i), the elimination of spaces and the addition of a gTLD is similarly insufficient to defeat a finding of confusingly similarity. See Pullman & Comley, LLC v. JONATHAN REICH., FA 1703742 (Forum Dec. 13, 2016) (”Respondent arrives at the disputed domain name by merely eliminating spacing between words of the mark, the addition of the “.com” generic top-level domain (“gTLD”), and the incorporation of “and” in place of the ampersand. These are not alterations that distinguish the disputed domain name from the Complainant’s trademark.”). The <qurategrp.com> domain incorporates the first and most dominant word from Complainant’s mark “QURATE” and shortens the final descriptive word “group” to the abbreviation “grp”. Additionally, the disputed domain name includes the “.com” gTLD and eliminates all spaces. Therefore, the Panel agrees with Complainant and finds that the <qurategrp.com> domain name is confusingly similar to Complainant’s QURATE RETAIL GROUP mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s QURATE RETAIL GROUP Mark and to use it in its domain name and shorten the final descriptive word “group” to the abbreviation “grp” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <qurategrp.com> domain name on August 4, 2022;
(c)Respondent has used the disputed domain name to impersonate Complainant in connection with a fraudulent phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent is not commonly known by the <qurategrp.com> domain name. Where there is no response, WHOIS information can substantiate a finding that a respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Also, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record names “qurate gro” as the registrant of the disputed domain name. Additionally, there is no other evidence to suggest that Respondent was authorized to use the QURATE RETAIL GROUP mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant contends Respondent fails to use the <qurategrp.com> domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use. Use of a disputed domain name to impersonate and create a false connection with Complainant for purposes of a scam is not a legitimate use of the domain name or bona fide offering of goods and services per Policy ¶ 4(c)(i) and (iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Here, Complainant provided screenshot evidence that the Respondent uses the disputed domain name in connection with a fraudulent scheme to impersonate Complainant in order to scam a factoring company out of significant sums of money with fake purchase orders. See Compl. Ex. 7. As the Panel agrees, it finds Respondent failed to use the <qurategrp.com> domain name in connection with a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent uses the <qurategrp.com> domain name in furtherance of a phishing scheme, which does not qualify as a bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Phishing has been defined by past panels as a practice that defrauds Internet users by convincing them to share valuable personal information through the use of emails, pop-ups, or other methods. See Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”). Additionally, use of a domain name to facilitate a phishing scheme by impersonating a complainant may not be described as either a bona fide offering of goods or services, nor or a legitimate non-commercial or fair use. See Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (concluding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel recalls that Complainant provided evidence that Respondent uses the disputed domain name in connection with a fraudulent scheme to impersonate Complainant and issue fake purchase orders. See Compl. Ex. 7. As the Panel agrees, it finds that Respondent is not using the disputed domain name for any bona fide offer of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <qurategrp.com> domain name in bad faith because the Respondent used the disputed domain name in connection with a scheme to impersonate Complainant and sought to suggest falsely that it was somehow affiliated with Complainant. Such passing off in furtherance of a phishing scheme is evidence of bad faith per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Here, Complainant attached evidence that Respondent uses the email address associated with the confusingly similar disputed domain name to impersonate Complainant. See Compl. Ex. 7. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Secondly, Complainant contends that Respondent uses and registered the <qurategrp.com> domain name in a bad faith attempt to perpetrate a phishing scheme. Using a disputed domain name to phish fraudulently for information is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). As previously noted, Complainant contends that Respondent used the disputed domain name to deceive a factoring company out of significant sums of money via fraudulent emails. See Compl. Ex. 7. As the Panel agrees, it finds that Respondent used and registered the domain name in bad faith in order to facilitate a phishing scheme under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the QURATE RETAIL GROUP mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <qurategrp.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: January 11, 2023
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