WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
QVC Inc. and ER Marks Inc. v. WhoisGuard
Case No. D2007-1872
1. The Parties
The Complainants are QVC Inc., West Chester, Pennsylvania, United States of America and ER Marks Inc., Wilmington, Delaware, United States of America, represented by Connolly Bove Lodge & Hutz, LLP, United States of America.
The Respondent is WhoisGuard of Westchester, California, United States of America.
2. The Domain Name and Registrar
The disputed domain names, , , and (the “Domain Names”), are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2007. On December 18, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 7, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 7, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The deficiency in the Complaint, which resulted in the Center calling for an amendment to the Complaint related to the identity of the Respondent. On December 4, 2007 in response to a series of letters sent to the Respondent by the Complainant’s lawyers, Namecheap, a registrar of domain names, having the same address as the Respondent, informed the Complainant’s lawyers that the Respondent is a privacy service offered by them to their clients. They identified the ‘registered owner’ of the Domain Names as being one individual named Emmanuel Kwong of an address in Ontario, Canada.
Accordingly, when lodging the Complaint herein, the Complainants’ lawyers identified the registrant as Emmanuel Kwong. However, when the Center sought verification from the Registrar of the identity of the Respondent, the Registrar identified not Mr. Kwong, but the Respondent.
The Complainants by their amendment seek to join Mr. Kwong as a co-respondent alongside the Respondent. The Panel finds it more convenient to treat the entity identified by the Registrar as the Respondent, but all references herein to the “Respondent” shall, where applicable, include Mr. Kwong.
4. Factual Background
The Complainants are associated companies, the Second Complainant being a subsidiary of the First Complainant and the proprietor of certain of the trademarks upon which the Complainants rely in this proceeding. The First Complainant is the main trading entity and uses the said trademarks under license of the Second Complainant. The two Complainants are treated as one in this decision.
The Complainants commenced business in 1986 under and by reference to the name and mark QVC.
The Complainants are widely-known providers of electronic retail services for in-home shopping. The Complainants sell both by way of television shopping channels and by means of interactive Internet shopping sites. The unchallenged evidence of the Complainants, which the Panel is ready to accept as fact, is that the Complainants’ in-home shopping services have now reached over 160 million homes worldwide and that their net revenue in 2005 exceeded $6.5 billion.
The Complainants are the proprietors of a very large number of trade/service mark registrations worldwide including (i) US Registration No. 1,455,889 dated September 1, 1987 QVC in class 42 for at-home shopping services in the field of general merchandise by means of cable television and (ii) US Registration No. 2,738,611 dated July 15, 2003 QVC.COM in class 35 for interactive retail services provided via computer, television and the Internet, featuring general merchandise.
The Domain Names were all registered in July and August 2007 as follows: on July 15, 2007, on July 19, 2007, on July 21, 2007 and on August 8, 2007.
As of October 2, 2007, the first three of the Domain Names (i.e. all but ) were connected to sites concerned with online shopping. The Complainant was not at that stage aware of the existence of the fourth Domain Name. As of December 5, 2007, was connected to a webpage containing a link entitled “offers”, which invited the visitor to enter his/her email address.
5. Parties’ Contentions
A. Complainants
The Complainants contend that the Domain Names are identical or confusingly similar to their QVC registered trademarks and service marks.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Finally, the Complainants contend that the Domain Names were registered and are being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainants must prove that:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.
B. Identical or Confusingly Similar
Apart from the generic domain suffix, which may be ignored for this purpose, each of the Domain Names comprises the Complainants’ registered service mark, QVC, in combination with an ordinary dictionary word apt for use in relation to the Complainants’ business (i.e. ‘coupon’, ‘giftcard(s)’ and ‘shops’).
The Panel finds that the Domain Names are confusingly similar to a trademark or service mark in which the Complainants have rights.
C. Rights or Legitimate Interests
The Complainants assert that they have conducted US trademark searches and have found no sign of the Respondent having any registered rights in respect of the QVC mark. They further assert that they have not granted the Respondent any licence to use their mark.
The fame of the Complainants’ business under the QVC mark in relation to electronic shopping services is such that the Domain Names can only have been selected with the Complainants’ business firmly in mind. Section 4 above gives an idea of the wide market coverage achieved by the Complainants under their QVC mark.
The Complainants have made out a prima facie case under this head, calling for an answer from the Respondent, but the Respondent has not responded.
In the particular circumstances of this case, namely the fame of the Complainants’ mark, the fact that the Domain Names are clearly referable to the Complainants’ business and the fact that the Domain Names have been connected to websites related to Internet shopping in general (further details of which appear below), the Panel is unable to conceive of any rights or legitimate interests that the Respondent could reasonably be said to have in respect of the Domain Names or any of them.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
The Complainants contend that in registering and using the Domain Names in the way that the Respondent has, the Respondent has set out to deceive Internet users and has prevented the Complainants from registering those names. The Complainants are concerned that Internet visitors to the Respondent’s sites will have been deceived into believing that the sites are sites of the Complainants. The Complainants further contend that they are proud of their reputation for excellence and are concerned that the Respondent will have tarnished that reputation. The Complainants are concerned that those who realize that the Respondent’s sites are not those of the Complainants will be annoyed at the time-wasting that the Respondent has caused them.
The Domain Names are not currently connected to active sites, but initially they were connected to active sites.
Initially, the Domain Name, , was connected to a ‘yourtopbrands’ site, which featured the prominent banner “Enjoy A $1,000 QVC Shopping Spree On Us” and a reference to a “$1,000 QVC Gift Card”. While the small print includes a disclaimer, the immediate impression is that this is a site associated in some way with the Complainants.
The site to which the Domain Name, was originally connected offered grocery coupons. Again, the small print contained a disclaimer, this time identifying the operator of the program as “ComputerPromotionC”, but the Panel is satisfied that a substantial proportion of visitors to the site will have been deceived into believing that the promotion was in some way associated with the Complainants.
The Domain Name, , was connected to a site featuring the heading “QVC Shopping” and published articles on online shopping and a variety of other topics. The pages exhibited by the Complainants seem also to feature directory links to other sites. The Panel is in no doubt that visitors to this site will have been under the impression that they were at a site of or associated with the Complainants.
The site to which the Domain Name, , was connected contained a link entitled “offers”, which invited the visitor to enter his/her email address. The exhibited pages relating to this site are not in a form indicative of an active site, but they would appear to the Panel to indicate plans for an “offers” page of some kind.
While the Respondent is not mentioned on any of the exhibited pages copied from these sites, it is to be inferred that the Respondent will have been deriving a commercial benefit of some kind from the entities operating the sites.
As indicated above, the Panel has concluded that the Respondent had the Complainants firmly in mind when registering the Domain Names. The Panel has also concluded that the use to which the Domain Names were originally put will have deceived Internet users and that the deception will have led directly or indirectly to a commercial benefit for the Respondent.
The Panel is not impressed with the suggestion that the Respondent registered the Domain Names with a view to blocking the Complainants, but the Panel is satisfied that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The fact that the sites to which the Domain Names were connected have now been taken down is of no significance. If the Domain Names are left in the hands of the Respondent, there must be a significant risk that the original sites (or similar sites) will be reconnected.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, , , and , be transferred as requested by the Complainants to the First Complainant, QVC Inc.
Tony Willoughby
Sole Panelist
Dated: February 21, 2008
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