WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION QVC Inc. and ER Marks Inc. v. Unique Boutique, LLC / Domains by Proxy, Inc. Case No. D2009-0135 1. The Parties
The Complainants are QVC Inc., Pennsylvania, United States of America, and ER Marks Inc. of Delaware, United States, represented by Connolly Bove Lodge & Hutz, LLP, United States.
The Respondents are Unique Boutique, LLC, United States / Domains by Proxy, Inc., United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy. com, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2009. On February 3, 2009, the Center transmitted by email to GoDaddy. com, Inc. a request for registrar verification in connection with the disputed domain name. On February 3, 2009, GoDaddy. com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2009. On February 24, 2009, the Respondent wrote an email to the Center, inquiring on how to settle the matter. On February 25, 2009, the Center wrote to the parties informing them that the Complainant can suspend the proceeding to explore the possibility of settlement. The Complainants forwarded their signed request to suspend the proceeding on March 3, 2009, and the proceeding was suspended by the Center on March 4, 2009.
On April 3, 2009, the Complainants forwarded to the Center their request to institute the proceeding. On April 7, 2009, the Center notified the parties of the re-institution of the matter and due date for the Response was set as April 12, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on April 15, 2009.
The Center appointed Mr. Andrew Mansfield as the sole panelist in this matter on April 22, 2009. 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. 4. Factual Background
As discussed below, Complainants assert that they have a sufficient common interest to qualify for joinder. The Panel will discuss this assertion below. When one Complainant owns a mark or registered a mark that Complainant shall be referred to by name.
QVC Inc. began obtaining United States service mark registrations for its QVC trademarks as early as 1987. Since 1999, QVC Inc. has assigned certain of its marks and registrations to Co-Complainant, ER Marks Inc. These marks almost all pertain to in-home shopping via television, telephone and/or the Internet. The QVC United States registrations and applications now owned by ER Marks Inc. and licensed exclusively to QVC Inc. include:
Registration or Application Date Trademark or Service mark U. S. Reg. No. Goods/Services
11/12/96
QVC
2,015,779
Retail store services in the field of general merchandise, class 42
9/16/97
QVC
2,098,066
Interactive retail services provided via computer and television, featuring general merchandise, class 42
1/2/96
QVC
1,945,357
Catalog and mail order services in the field of general merchandise, class 42
10/31/95
QVC
1,930,782
Providing at home shopping services by means of television, class 42
9/1/87
QVC
1,455,889
Providing at home shopping services in the field of general merchandise by means of cable television, class 42
8/28/01
QVC
Experience
2,482,374
Providing home shopping services in the field of general merchandise by means of television; electronic retailing services via a global computer network featuring general merchandise, class 35
4/14/98
QVC Explorer
2,150,903
Home shopping services in the field of general merchandise through the use of television, class 35
6/3/97
QVC Factory & Tour Design
2,067,111
Home shopping services in the field of general merchandise by means of television, class 42
11/28/95
QVC Local
1,937,850
Home shopping services through the use of television, class 42
11/8/88
QVC Network & Design
1,512,144
Providing at-home shopping services in the field of general merchandise by means of television, class 42
4/18/00
QVC On Location
2,343,087
Providing home shopping services in the field of general merchandise by means of television; computerized on-line retail services in the field of general merchandise, class 35
10/16/01
QVC
ProductWorks
2,497,999
Business consulting services, namely design of marketing strategies for others involved in electronic retailing, product sourcing, manufacturing, videotape and animation production, class 35
8/3/99
The QVC Outlet Yard Sale
2,266,295
Retail store services in the field of general merchandise, class 42
12/29/98
The QVC Vendor Alliance
2,214,119
Periodic newsletter to suppliers who provide goods and services to providers of home television shopping services in the field of retail and wholesale merchandise, class 16
9/16/97
iQVC
2,098,015
Interactive retail services provided via computer and television, featuring general merchandise, class 42
8/24/99
IQVC. com
2,272,585
Interactive retail services provided via computer and television, featuring general merchandise, class 35
11/20/01
QVC@THE MALL
2,509,650
On-line retail store services in the field of general merchandise, class 35
11/27/01
QVC@THE MALL
2,512,386
Retail store services in the field of general merchandise at shopping malls, class 42
5/18/04
QVC@THE MALL WELCOME & Design
2,842,704
Online ordering services and retail store services in the field of general merchandise, class 35
10/4/05
QVC AMERICA'S HOST SEARCH & Design
3,004,828
Home shopping services in the field of general merchandise by means of television, telephone and the internet, class 35
11/8/05
QVC ACTIVE
3,012,812
Home shopping services in the field of general merchandise by means of interactive cable and satellite television, class 35
11/8/05
QVC ACTIVE
& Design
3,012,814
Home shopping services in the field of general merchandise by means of interactive cable and satellite television, class 35
07/15/03
QVC. COM
2,738,611
Interactive retail services provided via computer, television and the internet, featuring general merchandise, class 35
11/25/03
QVC (Stylized)
2,785,413
Credit card services, class 36
QVC Inc. has also protected its famous and valuable trademarks internationally. Complainants submitted evidence of trademark registrations in Algeria, Argentina, Australia, Austria, Bahrain, Brazil, Canada, Chile, China, Egypt, the European Union, Germany, Hong Kong, SAR of China, Hungary, Indonesia, Israel, Japan, Kuwait, Lebanon, Mexico, Morocco, New Zealand, Norway, Oman, Qatar, Russian Federation, Saudi Arabia, Singapore, South Africa, the Republic of Korea, Switzerland, Taiwan, (Province of China), Tangier Zone, Tunisia, Turkey, Ukraine, United Arab Emirates, the United Kingdom, Venezuela, and Yemen. 5. Parties' Contentions A. Complainant
Complainants assert that each Complainant has a sufficient common interest in the domain names in issue for joinder to be permissible because of their parent-wholly owned subsidiary relationship and because each owns valuable rights in the intellectual property at issue.
Complainants assert that QVC Inc. began providing electronic retail services for in-home shopping in 1986 and has done so to the present date. At present, it has worldwide net revenue of approximately USD6.5 billion. Complainants assert that QVC Inc. sells both through television channels and on the Internet. Complainants provide evidence that QVC has become a well-known and respected mark, not only in the United States but also globally.
Complainants assert that in June 2008 Respondent registered the domain name involved in this proceeding, . A copy of the WHOIS printout for this domain name is attached at Annex B. Complainants state that they sent a cease and desist letter by first class mail and email on October 17, 2008 to the registrant as listed in the WHOIS database but this information on the registrant turned out to be incorrect. Complainants allege that they then received a response from Domains by Proxy on November 5, 2008. This email disclosed the true registrant of the domain name , Unique Boutique, LLC. A cease and desist letter was sent on November 11, 2008 to Unique Boutique and went unanswered.
Complainants allege that Respondent used QVC marks on the website at the disputed domain name on the visible portion of the page and in the metatags. Further, Respondent sold goods that directly competed with the sales of Complainants. As of the time of the cease and desist letters and as late as January 27, 2009, the domain name allegedly connected the user to a website using “QVC Deals,” “QVC Products,” “QVC Items,” “QVC Closeouts,” and “QVC Shopping” in connection with an active website for on-line shopping which directly competes with QVC Inc. Further, Complainants state that as of January 9, 2009 the website also used “Unique Boutique/QVC Deals” in connection with this active website. Complainants allege that the use of the QVC marks in connection with Respondent Unique Boutique's name, on the website and in the domain name, implies QVC's sponsorship and affiliation with the website and is likely to confuse purchasers.
Complainants present evidence that the domain name registered by the Respondent is identical to or confusingly similar to trademarks in which the Complainants have rights. Complainants state that the domain name is confusingly similar to the famous QVC mark. The domain name includes the QVC mark in toto as the key element of the domain name. The domain name adds only a generic component, “deals”, to the QVC letters and the “.com” designation. The addition of a generic term and “.com” to Complainants' QVC mark, it is argued, is legally insufficient to avoid a finding of confusing similarity. Complainants allege that Respondent is on constructive notice of Complainants' federal registrations for the QVC formative marks. Registration in the face of such constructive notice (and the widespread fame of Complainants' marks), it is argued, constitutes bad faith registration. Complainants further contend that Respondent used the domain name in bad faith by seeking to divert users to Respondent's own on-line shopping site or other competing sites for which Respondent receives profits.
Complainants inform the Panel that they reviewed the U.S. Patent and Trademark Office records and are aware of no legitimate interest Respondent has in the mark and there is no evidence that Respondent is known by that name. Respondent is not licensed, according to Complainants, or authorized to use Complainants' marks.
Finally, Complainants argue that Respondent is using the disputed domain name in bad faith to intentionally attract users to Respondent's website by creating a likelihood of confusion with Complainants' marks. Complainants also allege that Respondent's use prevents Complainants from reflecting their mark in a corresponding domain name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Panel finds that Complainants have a sufficient common interest in the marks at issue that they shall be treated as joint Complainants. Complainants have the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, complainant must establish and carry the burden of proof on each of the three elements identified above. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383.
The Panel proceeds to deal with each of these elements in turn. A. Identical or Confusingly Similar
Many prior UDRP panels have found that a domain name that wholly incorporates the complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. Such a finding is based on the fact that the dominant and memorable part of the domain is a complainant's trademark. In this case, the disputed domain name contains one of Complainants' trademarks as its predominant portion.
Several prior UDRP panels have held that the addition of a non-distinctive, descriptive or generic term like “deals” does not change the overall impression of a mark. See The Ritz Hotel, Limited v. Damir Kruzicevic,WIPO Case No. D2005-1137. Indeed, the adjunct “deals” may tend, if anything, to increase the likelihood of confusion, because the word indicates endorsement of the domain name or official status of the domain name granted by Complainants.
For the above stated reasons the Panel finds that Complainants have satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainants assert that they are aware of no rights or legitimate interests that Respondent has in the disputed domain name. The disputed domain name is not, to the best of Complainants' knowledge, the name of Respondent. Complainants assert that they have not authorized Respondent to use any of their trademarks. The Panel is satisfied that Complainants have made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating a right or legitimate interest in the disputed domain names. By matter of default, Respondent has failed to do so, and Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 who 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 website 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 website or location or of a product or service on your website or location. ”
The Panel finds persuasive Complainants' allegation that Respondent must have been aware of Complainants' rights in the trademarks identified above when it registered the domain name. In addition, the Panel finds that Respondent was on constructive notice of the existence of at least the United States marks due to the Federal registrations presented by Complainants. The Panel agrees with Complainants that the fact that Respondent chose to register a domain name containing the trademark of a large company and its subsidiary shows that Respondent purposefully registered the disputed domain name based on knowledge of Complainants' marks. A respondent's knowledge of a complainant's trademark when registering a domain name containing said mark often constitutes evidence of bad faith registration. See ACCOR v. Eliah Zusstone,WIPO Case No. D2006-0362.
The disputed domain name directs users to a webpage that offers goods in competition with Complainants. Respondent is thus presumably profiting from the reputation and goodwill of Complainants. The use of a well-known name or trademark by someone with no connection with that name is evidence of bad faith where the domain name is used to intentionally attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on your web site or location.
Many prior UDRP panels have found that using famous trademarks to attract Internet users to a website for commercial gains constitutes bad faith use. See F. Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956.
For the above stated reasons, the Panel finds that Respondent has registered and used the disputed domain name in bad faith as defined in paragraph 4(a)(iii) of the Policy. 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 name be transferred to Complainant QVC. Inc.
Andrew Mansfield
Sole Panelist
Dated: May 6, 2009
Full & Egal Universal Law Academy