ER Marks, Inc. and QVC, Inc. v. Samrat Dholakia / Adris Corporation
Claim Number: FA1103001375424
Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Sujata Chaudhri of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Samrat Dholakia / Adris Corporation (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <qvcsite.info> and <qvcshop.info>, registered with GoDaddy.com Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2011; the National Arbitration Forum received payment on March 1, 2011.
On March 1, 2011, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <qvcsite.info> and <qvcshop.info> domain names are registered with GoDaddy.com Inc. and that Respondent is the current registrant of the names. GoDaddy.com Inc. has verified that Respondent is bound by the GoDaddy.com 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 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2011 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@qvcsite.info and postmaster@qvcshop.info. Also on March 9, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 Houston Putnam Lowry, Chartered Arbitrator, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: (ICANN Rule 3(b) (ix))
I. Discussion of Facts
Complainants and Their Business
i. Complainant, QVC, Inc., was founded in 1986 in the United States. QVC, Inc. along with its affiliated companies in the United Kingdom, Germany, Italy and Japan offers direct response television retail shopping primarily via television, cable, satellite, and digital terrestrial broadcasts, as well as via the Internet and through mobile devices.
ii. By any standard—program reach, the number of customers served, or financial and sales revenues—QVC, Inc. and its affiliated companies are today among the largest at-home shopping retailers in the world. They broadcast their shopping programs to an enormous number of households worldwide, including in the United States. Today QVC, Inc. and its affiliated companies reach hundreds of millions of homes every year.
iii. Global sales and related numbers also establish QVC, Inc. and its affiliated companies as one of the world’s leading electronic and shop-at-home retailers. In 2001 the worldwide net revenues were approximately USD3.9 billion. Since then these revenues have steadily increased every year. In 2008, worldwide net revenues were USD7.3 billion and in 2009 they were USD7.4 billion.
iv. QVC, Inc. and its affiliated companies have used the mark QVC and marks that incorporate the mark QVC (collectively the “QVC Mark”) in connection with direct response television retail shopping services since at least as early as 1986.
v. The first live QVC broadcast took place in the United States on November 24, 1986. Initially running live for 16 hours a day, the channel extended its broadcast hours to 24 hours a day at the beginning of 1987. Today, QVC television programs in the United States and most QVC programs internationally are operational 24 hours a day, 7 days a week and are live 364 days a year.
vi. QVC, Inc. and its affiliated companies broadcast programs that reach more than 98 million households in the United States and more than 195 million cable and satellite television homes worldwide.
vii. Since 1996 QVC, Inc. has offered home shopping services via the Internet. In that year, QVC, Inc’s interactive division, iQVC, launched QVC.COM. QVC, Inc. initially registered the domain name IQVC.COM; and subsequently registered the domain name QVC.COM. Clearly both domain names were registered much prior to registration of the disputed domain names. The domain names QVC.COM and IQVC.COM resolve to the same active web site, accessible in the United States and all over the world, on which QVC, Inc. offers its at-home shopping services. As shown in the printouts, the QVC Mark is displayed the QVC web site. This web site attracts more than 6 million unique visitors each month and has received numerous honors and awards.
viii. QVC, Inc.’s at-home shopping services feature a wide variety of goods. Among the goods are jewelry, watches, fashion accessories, fragrances, home accessories, furniture, cooking equipment and food, linens and bedding and apparel.
ix. Complainant, ER Marks, Inc., is a wholly owned subsidiary of QVC, Inc.
Whereas QVC, Inc. owns the QVC Mark outside the United States, ER Marks, Inc. is the owner of the QVC Mark in the United States. ER Marks, Inc. acquired these marks by assignment from QVC, Inc. in 2003.
ER Marks, Inc. and QVC, Inc. are hereinafter collectively referred to as “Complainants.” Complainants should be treated as a single entity for the purposes of this proceeding. ER Marks, Inc and QVC, Inc. v. Janice Liburd, FA1008001341427 (Nat. Arb. Forum, September 29, 2010) (“The Panel finds both parties hold rights in the trademark contained in the disputed domain name, since an assignor-assignee relationship exists between the parties. Therefore, there is a sufficient nexus or link between the Complainants and they will be treated as a single entity in this proceeding”).
Complainants’ Rights in the QVC Mark
x. Complainants own rights in the QVC Mark in approximately forty-five (45) countries and jurisdictions all over the world, including in United States. In the United States, the first registration of the mark QVC, namely, Reg. No. 1,455,889, issued in 1987. Reg. No. 1,455,889 is incontestable. This registration issued in the name of QVC, Inc. and was assigned to its subsidiary ER Marks, Inc. in 2003. Besides Reg. No. 1,455,889, Complainant, ER Marks, Inc., owns several other incontestable registrations of the QVC Mark in the United States.
xi. QVC, Inc. and its affiliated companies have used the QVC Mark continuously and extensively in numerous countries worldwide, including in the United States, the United Kingdom, Germany, Italy and Japan. As a result of long and continuous use of the QVC Mark and substantial investment of time, money and effort in advertising and promotion, the QVC Mark has developed substantial public recognition and incalculable goodwill all over the world. In fact, the World Intellectual Property Organization has recognized QVC as a famous mark. QVC, Inc. and ER Marks Inc. v. WHOISGuard, D-2007-1782 (WIPO, February 21, 2008) (“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.”).
Complainants’ Domain Names and Web sites
xii. Complainant, QVC, Inc., registered the domain name IQVC.COM in the year 2000. Subsequently, in 2001, it registered the domain name QVC.COM. As discussed above, both domain names resolve to the same active web site on which Complainant offers its at-home shopping services. The web site displays the QVC Mark prominently.
xiii. In addition to the domain names IQVC.COM and QVC.COM, Complainant, QVC, Inc., either directly or through its affiliated companies, owns top-level domain names such as QVCUK.COM and country-code domain names such as QVC.CO.UK and QVC.DE. All of these domain names resolve to active web sites on which Complainant and its affiliated companies offer retail shopping services.
Respondent
xiv. The Disputed Domain Names have been registered by a corporation named Adris Corporation.
xv. Adris Corporation’s web site is located at www.adriscorp.com. As per this web site, Adris Corporation was established in 1962 and is engaged in the sale of jewelry and precious and semi-precious stones, primarily to jewelry wholesalers and retailers.
xvi. Adris Corporation offers jewelry, precious stones and semi-precious stones for sale through the above-named web site. In fact, Adris Corporation claims that “Adris’s Jewelry online is a true jewelry store -- providing custom and specialty items, the finest quality jewelry designs, outstanding customer service and -- best of all! -- competitive pricing with a wide range of designs to meet every taste and budget”.
xvii. Currently the Disputed Domain Names resolve to the web site located at www.adriscorp.com.
II. Discussion of three prongs of the ICANN Policy
a. The manner in which the domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights. (ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i))
i. As an initial matter, Complainants’ have unquestionably demonstrated rights in the mark QVC through registrations with the USPTO. U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum, Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”). In fact, the National Arbitration Forum has recognized Complainants’ rights in the mark QVC. ER Marks, Inc. and QVC, Inc. v. Ryan O’Connor, FA 1357984 (Nat. Arb. Forum, December 19, 2010) (“Complainant has sufficient rights in the mark to pursue this claim. Complainant has supplied the USPTO registration for the QVC mark (Reg. No. 1,455,889 issued Sept. 1, 1987. A registration with the USPTO establishes sufficient rights in the mark to satisfy Policy ¶4(a)(i)”); ER Marks, Inc and QVC, Inc. v. Janice Liburd, FA1008001341427 (Nat. Arb. Forum, September 29, 2010) (Complainant’s trademark registrations with the USPTO sufficiently prove Complainant’s rights in the QVC mark pursuant to Policy ¶4(a)(i)).
ii. The Disputed Domain Names are confusingly similar to Complainants’ QVC mark because addition of generic terms such as “shop” and “site” are insufficient to distinguish them from the mark. ER Marks, Inc and QVC, Inc. v. Janice Liburd, FA1008001341427 (Nat. Arb. Forum, September 29, 2010) (addition of descriptive terms “shopping” and “channel” insufficient to distinguish domain name QVCSHOPPINGCHANNEL.COM from the QVC mark); QVC Inc. v. ER Marks Inc. v. Whois Guard, D-2007-1872 (WIPO, February 21, 2008) (domain name QVC-SHOPS.COM held confusingly similar to QVC mark. Panel held that the domain name “comprises the Complainants’ registered service mark, QVC, in combination with an ordinary dictionary word apt for use in relation to the Complainants’ business…”).
iii. The addition of the generic top-level domain name extension “.info” to the Disputed Domain Names does not have any legal significance because a domain name is required to have a top-level extension such as .info, .com, .net, etc. QVC Inc. and ER Marks, Inc. and QVC, Inc. v. Tatyana Ivanova, FA1356451 (Nat. Arb. Forum, December 8, 2010) (addition of generic top-level domain name extension “.info” to domain name JEWELRYQVC.INFO insufficient to distinguish domain name from Complainants’ QVC mark).
iv. Thus, the panel should hold that the Disputed Domain Names are confusingly similar to Complainants’ mark QVC under Policy ¶4(a)(i).
b. Why Respondent should be considered as having no rights or legitimate interests in respect of the domain names that are the subject of the Complaint. (ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii))
i. Respondent does not have rights or legitimate interests in the Disputed Domain Names because, upon information and belief, QVC or QVCSTORE or QVCSITE are not Respondent's names. Respondent’s name is Adris Corporation, a name that has nothing to do with QVC or QVCSTORE or QVCSITE. Furthermore, upon information and belief, Adris Corporation is not commonly known by the names QVC, QVCSTORE or QVCSITE.
ii. Respondent’s use of the Disputed Domain Names is not a bona fide offering of goods or services under Policy ¶4(c)(i). Nor is such use a legitimate noncommercial or fair use under Policy ¶4(c)(iii). Respondent uses the Disputed Domain names to attract users from Complainants’ web site to its own web site located at www.adriscorp.com. Respondent presumably profits from such use. The direction of Internet users using a confusingly similar domain name for profits indicates that Respondent’s use 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). ER Marks, Inc. and QVC, Inc. v. Ryan O’Connor, FA 1357984 (Nat. Arb. Forum, December 19, 2010) (use of domain name QVCPETS.COM in connection with a web site that functions as an online retail store for pet supplies 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)).
iii. Given the substantial public recognition and reputation of Complainants’ QVC mark in relation to home shopping services particularly for jewelry, there is no doubt whatsoever that Respondent selected the Disputed Domain Names for the sole purpose of riding on such recognition and reputation. Thus, Respondent does not have any rights or legitimate interests in the Disputed Domain Names. QVC, Inc. and ER Marks Inc. v. WHOISGuard, D-2007-1782 (WIPO, February 21, 2008) (“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 web sites related to Internet shopping in general…, 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.” The panel held that the respondent did not have any rights or legitimate interests in the domain names QVC-COUPON.COM, QVC-GIFTCARD.COM, QVC-GIFTCARDS.COM and QVC-SHOPS.COM).
iv. Additionally, Respondent is not a licensee of Complainants, nor has Respondent ever been authorized by Complainants to register or use the Disputed Domain Names. Indeed, currently, Respondent has no relationship whatsoever to Complainants nor did he ever have any relationship with Complainants.
v. Given the prior use and registrations of the QVC Mark in the United States, Respondent should be held to have constructive knowledge of Complainants’ exclusive rights in the QVC Mark. It follows that Respondent cannot have any rights or legitimate interest in the Disputed Domain Names. Morgan Stanley v. Chan, No. FA 244123 (Nat. Arb Forum, Apr. 23, 2004) (respondents likely had knowledge of complainant’s MORGAN STANLEY marks due to complainant’s “long-standing use and fame” of marks, and fact that marks were registered with the USPTO provided constructive notice to respondent of complainant’s right in MORGAN STANLEY marks).
vi. The panel should hold that Respondent does not have established legitimate rights in the Disputed Domain Names, which were undoubtedly registered in order to capitalize on the fame and reputation of Complainants’ QVC Mark.
c. Why the domain names should be considered as having been registered and used in bad faith. (ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii))
i. As discussed above, the Disputed Domain Names resolve to the web site located at www.adriscorp.com that functions as an online retail store for jewelry. Thus, Respondent is using the Disputed Domain Names to sell jewelry via the Internet in competition with Complainants. It follows that Respondent is using the Disputed Domain Names to disrupt Complainants’ business and create consumer confusion. This is evidence of Respondent’s bad faith. ER Marks, Inc. and QVC, Inc. v. Ryan O’Connor, FA 1357984 (Nat. Arb. Forum, December 19, 2010) (use of domain name QVCPETS.COM to sell pet supplies in competition with Complainants is disruptive use and, consequently, evidence of Respondent’s bad faith).
ii. Respondent is using the Disputed Domain Names that are confusingly similar to Complainants’ QVC mark to create confusion regarding the affiliation of its web site in order to attract users for profit. Undoubtedly the Disputed Domain Names are intended to confuse the Internet users into believing that the web site is affiliated with Complainants. This increases the amount of traffic to the web site, which increases sales revenue. This type of attraction for gain is evidence of a bad faith registration and use. Id. Therefore, the Panel should find that that Respondent’s use of Disputed Domain Names to attract Internet users is an indication of bad faith pursuant to Policy ¶4(b)(iv).
iii. Respondent has also acted in bad faith because it engages in pattern of registering domain names that incorporate third-party marks that are well-known in connection with home shopping services. A reverse WHOIS search has revealed that in addition to the Disputed Domain Names, Respondent has registered the domain name HSNSITE.INFO. HSN is, of course, an abbreviation for Home Shopping Network, another US home shopping company that sells a wide variety of goods including jewelry. Like the Disputed Domain Names, this domain name resolves to the web site located at www.adriscorp.com. It is well-settled that a pattern of registering infringing domain names is evidence of bad faith. Thus, the panel should find that Respondent’s registration of the domain name HSNSITE.INFO is evidence that Respondent registered the Disputed Domain Names in bad faith under Policy ¶4(b)(ii). McAfee, Inc. v. QTK Internet/Name Proxy/Private Registration /Damian Macafee, FA1010001351950 (Nat. Arb. Forum, December 3, 2010) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks);
iv. Respondent has also registered and is using the Disputed Domain Names in bad faith because the Disputed Domain Names are identical and/or confusingly similar to Complainants’ famous QVC Mark. Costco Wholesale Membership Inc. v. Almantas Kakareka, WIPO Case No. D2007-1833 (Feb. 11, 2008) (“Substantial authority exists to the effect that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use.”).
v. Furthermore, as discussed above, the QVC Mark is registered in the United States. Accordingly, Respondent is presumed to have had constructive notice of the QVC Mark at the time the Disputed Domain Names were registered. This is further evidence of Respondent’s bad faith use and registration of the Disputed Domain Names. SPTC, Inc. v. Bonanzas.com, Inc., FA 0501000409895 (Nat. Arb. Forum, March 14, 2005) (bad faith found because respondent registered domain name despite SPTC, Inc’s trademark registrations for SOTHEBY’S).
vi. Thus, the Panel should hold that the Respondent registered and is using the Disputed Domain Names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ER Marks, Inc., is a wholly owned subsidiary of Complainant, QVC, Inc. Hereinafter, the Panel will refer to ER Marks, Inc. and QVC, Inc. collectively as “Complainant.” Complainant offers direct response television retail shopping primarily via television, cable, satellite, and digital terrestrial broadcasts, as well as via the Internet and mobile devices. Complainant owns trademark registrations for the QVC mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,455,889 issued September 1, 1987;
Reg. No. 1,930,782 issued October 31, 1995;
Reg. No. 1,945,357 issued January 2, 1996;
Reg. No. 2,015,779 issued November 12, 1996; and
Reg. No. 2,098,066 issued September 16, 1997.
Respondent, Samrat Dholakia / Adris Corporation, registered the <qvcsite.info> and <qvcshop.info> domain names on August 30, 2010. The disputed domain names redirect Internet users to Respondent’s own commercial website at the <adriscorp.com> domain name that sells jewelry and semi-precious stones primarily to wholesalers and retailers.
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."
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.”).
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.
Complainant owns trademark registrations for the QVC mark with the USPTO:
Reg. No. 1,455,889 issued September 1, 1987;
Reg. No. 1,930,782 issued October 31, 1995;
Reg. No. 1,945,357 issued January 2, 1996;
Reg. No. 2,015,779 issued November 12, 1996; and
Reg. No. 2,098,066 issued September 16, 1997.
The Panel finds that registering a mark with the USPTO firmly establishes Complainant’s rights in the QVC mark for the purposes of Policy ¶4(a)(i). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶4(a)(i).”); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Complainant alleges Respondent’s <qvcsite.info> and <qvcshop.info> domain names are confusingly similar to Complainant’s QVC mark because the disputed domain names only add the generic terms “shop” or “site” and the generic top-level domain (“gTLD”) “.info” to Complainant’s mark. The Panel finds the presence of a generic term does not distinguish the disputed domain names from Complainant’s mark. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶4(a)(i)); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The Panel also determines that attaching the gTLD “.info” is irrelevant under Policy ¶4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Accordingly, the Panel holds Respondent’s <qvcsite.info> and <qvcshop.info> domain names are confusingly similar to Complainant’s QVC mark under Policy ¶4(a)(i).
The Panel finds Complainant has established Policy ¶4(a)(i).
Complainant argues Respondent does not possess rights and legitimate interests in the <qvcsite.info> and <qvcshop.info> domain names. Policy ¶4(a)(ii) requires that Complainant establish a prima facie case against Respondent before Respondent must bear the burden to prove its rights and legitimate interests. In this instance, Complainant has adequately presented a prima facie case, but Respondent has failed to respond. As a result, the Panel may assume Complainant’s allegations Respondent lacks rights and legitimate interests in the disputed domain names are true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.’”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). Out of an abundance of caution, the Panel will consider the evidence in light of the Policy ¶4(c) factors to make a complete determination of whether Respondent has any rights and legitimate interests in the disputed domain name.
Complainant asserts Respondent’s name is not reflected in the <qvcsite.info> and <qvcshop.info> domain names. The WHOIS information identifies the registrant as “Samrat Dholakia / Adris Corporation,” a name that has no association with the disputed domain names. The Panel concludes Respondent is not commonly known by the disputed domain names and consequently has no rights and legitimate interests in the disputed domain names pursuant to Policy ¶4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Complainant contends Respondent is a company engaged in the sale of jewelry and semi-precious stones primarily to jewelry wholesalers and retailers and Respondent uses the <qvcsite.info> and <qvcshop.info> domain names to redirect consumers to Respondent’s commercial website. The Panel finds redirecting consumers away from Complainant to a competing company’s website via the <qvcsite.info> and <qvcshop.info> domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); see also 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).”).
The Panel finds Complainant has established Policy ¶4(a)(ii).
Complainant argues Respondent’s <qvcsite.info> and <qvcshop.info> domain names redirect to a commercial website that functions as an online retail store for jewelry. As Complainant enjoys substantial public recognition and reputation, especially in relation to jewelry, Complainant asserts Respondent’s use of the disputed domain names in connection with its commercial website competes with Complainant and disrupts Complainant’s business. The Panel finds such competition and disruption under Complainant’s mark is evidence of bad faith registration and use according to Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”); se also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Complainant contends Respondent’s registration of the <qvcsite.info> and <qvcshop.info> domain names are confusingly similar to Complainant’s QVC mark intended to capitalize on the fame and goodwill associated with Complainant, thereby attracting consumers seeking Complainant. Complainant argues the use of Complainant’s mark in the disputed domain names and the similarity of products sold on the resolving website creates a likelihood consumers will mistakenly perceive an affiliation between Complainant and Respondent and be confused as to their relationship. Complainant argues Respondent’s goal is to profit from this confusion as consumers redirected to Respondent’s website may become interested in Respondent’s own products for sale. The Panel finds Respondent’s goal to profit through misuse of Complainant’s mark and by intentionally creating confusion demonstrate bad faith registration and use pursuant to Policy ¶4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
The Panel finds Complainant has established Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <qvcsite.info> and <qvcshop.info> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: April 8, 2011
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