ER Marks, Inc. and QVC, Inc. v. Stuart Mckenzie
Claim Number: FA1103001375844
Complainants are ER Marks, Inc. and QVC, Inc. (“Complainants”), represented by Sujata Chaudhri of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Stuart Mckenzie (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iqvc.co>, registered with Tucows, 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.
Paul M. DeCicco as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on March 3, 2011; the National Arbitration Forum received payment on March 3, 2011.
On March 3, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <iqvc.co> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 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@iqvc.co. Also on March 4, 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.
A timely Response was received and determined to be complete on March 7, 2011.
Complainants’ timely Additional Submission was received on March 14, 2011, in compliance with the Forum’s Supplemental Rule 7. That submission is therefore also considered by the Panel.
On March 16, 2011, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainants request that the domain name be transferred from Respondent to Complainants.
A. Complainants
Complainants contend as follows:
Complainants own rights in the QVC Mark in approximately forty-five (45) countries and jurisdictions all over the world, including in United Kingdom, the European Union, the United States and Canada. Among the marks in which Complainants have rights is IQVC. Specifically, Complainants own registrations of the mark IQVC in the United States and Canada. The US registration for the mark IQVC issued in the year 1997 became incontestable in the year 2003 and continues to be valid to date. The Canadian registration issued in the year 1998 and continues to be valid to date. In addition to the IQVC mark, Complainant, QVC, Inc., owns registrations of the mark QVC Mark in the United Kingdom, Respondent's country of residence. Complainant, QVC, Inc., also owns Community Trademark registrations of the QVC Mark that predate Respondent's registration of the disputed domain name. 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, Complainant, ER Marks, Inc., in 2003.
Complainant, QVC, Inc., registered the domain name IQVC.COM in the year 2000. Subsequently, in 2001, it registered the domain name QVC.COM. In addition to the domain names IQVC.COM and QVC.COM, Complainant, QVC, Inc., either directly or through its affiliated companies/entities, owns top-level domain names such as QVCUK.COM and country-code domain names such as QVC.DE and QVC.CO.UK. All of these domain names resolve to active web sites on which Complainant offers its retail shopping services.
Respondent does not appear to be using the domain name in connection with an active web site.
Complainants have demonstrated rights in the marks IQVC and QVC through registrations with the United Kingdom Intellectual Property Office, the Office for Harmonization of the Internal Market, the Canadian Intellectual Property Office and the United States Patent and Trademark Office.
The disputed domain name, <iqvc.co >, is identical to the mark IQVC and to the domain name IQVC.COM. Furthermore, the disputed domain name is confusingly similar to the QVC mark and the domain name QVC.COM. The mere addition of a single letter to a complainant's mark does not remove a domain name from the realm of confusing similarity. The addition of the country-code top-level domain name extension .CO to the disputed domain name does not have any legal significance.
Respondent does not have rights or legitimate interests in the disputed domain name because, upon information and belief, IQVC or QVC are not Respondent's names. WHOIS information identifies Respondent as Stuart McKenzie. Furthermore Respondent is not commonly known by the names IQVC or QVC. Additionally, Respondent is not a licensee of Complainants, nor has Respondent ever been authorized by Complainants to register or use the domain name IQVC.CO. Respondent has no relationship whatsoever to Complainants nor did he ever have any relationship with Complainants.
Respondent does not have any rights or legitimate interest in the disputed domain name because he is not making active use of the disputed domain name.
Given the prior use and registrations of the IQVC and QVC marks, Respondent should be held to have constructive knowledge of Complainants' exclusive rights in these marks. It follows that Respondent cannot have any rights or legitimate interest in the domain name.
Respondent is based in the United Kingdom and in the absence of any conceivable reason for registering the disputed domain which has a country-code extension for Colombia, there can only be one conclusion, namely, that he registered the domain name in order to capitalize on the fame and reputation of Complainants' QVC Mark. This is equally so since an individual intending to access QVC's web site at IQVC.COM could easily mistype IQVC.CO.
Respondent has registered and is using the domain name in bad faith because he currently fails to make use of the domain name in connection with an active web site. Respondent has also registered and is using the domain name in bad faith because the domain name is identical and/or confusingly similar to Complainants' famous QVC mark.
Complainants own registrations of the IQVC mark in the United States and Canada as well as of the QVC mark all over the world, including in the United Kingdom and the European Union. Accordingly, Respondent is presumed to have had constructive notice of these marks at the time the disputed domain name was registered. This is further evidence of Respondent's bad faith use and registration of the domain name.
In the absence of any plausible reason as to why Respondent registered the disputed domain name, there can only be one conclusion, namely, that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent contents as follows:
It was never Respondent’s intention to purchase the domain name <iqcv.co> to pass off or infringe or for any other unlawful reason which may arise through the legal team of QVC. Before registering the domain name <iqcv.co> we carried out a UK trademark search which came up blank. Respondent’s reason to register <iqvc.co> came about during talks with a company named SKY incentives, their market being holiday vouchers, which fit in very nicely with the company domain name <iqvc.co> (International Quality Vacations company).
Respondent’s aim is to offer a unique service to corporate businesses thus offering great hotels holidays etc. QVC states Respondent has registered a domain name that has no relevance to our country, therefore could only have done this for financial gain. Respondent feels Complainants may have attached too much importance to themselves. An offer by a third-party was previously made for <iqvc.co> and IQVC24.com which we turned down as these domains are to be used by ourselves.
With regard to dot co being irrelevant in the UK, first dot co.uk was not available, second dot co is the next biggest worldwide premium domain. This is the reason QVC is pursuing the at-issue domain name with such a cold and vigorous arrogance. Should this not be the case then why have they not pursued the domain name attached IQVC.org.uk? Dot co domain is now seen to have its place among all other premium domains and is no longer recognized as a Columbian domain. It now holds its place with com, net, info, biz, etc.
C. Additional Submissions
Complainants contend in their Additional Submission as follows:
Although Respondent attempts to show that he has made "demonstrable preparations" to use the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶4(c)(i), he fails. Respondent informed Complainants that he intended to use the domain name in the financial industry. Subsequently, Respondent contended that he intended to use the domain name in connection with a travel and tourism business. Respondent allegedly decided to register <iqvc.co> during talks with a company called SKY Incentives that offers "holiday vouchers" "which fit in very nicely with the company domain name IQVC.co (International Quality Vacations company).” These inconsistent statements -- separated by just four (4) days-- are suspect and ought to be disregarded.
Respondent has not submitted any evidence in support of his alleged plans regarding the disputed domain name. In fact, Complainants’ Internet searches for International Quality Vacations Company did not show any results. Complainants also note that a search on the website of the Companies House, the official UK government registry of UK companies, did not reveal any results for International Quality Vacations Company. In the absence of evidence to support Respondent's claims, the Panelist should hold that Respondent has not made "demonstrable preparations" to use the disputed domain name.
Since the date of filing of the Complaint, Respondent has changed the content of the website to which the disputed domain name resolves. The website now bears the name International Quality Vacations Company and goes on to state that it is "currently down for essential maintenance and upgrades. A brand new web site will be here very shortly." There is space on the website for "current customers" to log on using a password and user name. Respondent has changed the content of the website in a lame attempt to give legitimacy to the statements made in his response. Respondent is attempting to show that there was once an active website associated with the disputed domain name, but as of this time the site has been shut down temporarily for maintenance and will be replaced by a brand new website. However, as shown in the Complaint, at the time of filing the Complaint, the domain name was associated with an inactive site. Without anything more, the new website does not constitute evidence of "demonstrable preparations" to use the disputed domain name. Even if the website on its own constitutes proof of "demonstrable preparations" to use the disputed domain name, the Panel should disregard the website because it does not satisfy Policy ¶4(c)(i) that requires proof of "demonstrable preparations" preceding the filing of a complaint.
Respondent contends that he did not register and use the disputed domain name in bad faith. For all the reasons set out in the Complaint, the Panelist should hold that Respondent's registration and use is in bad faith. Additionally, by Respondent's own admission, he has registered the domain name IQVC24.COM. A reverse WHOIS search has revealed that in addition to IQVC.CO and IQVC24.COM, Respondent has registered QVC24.COM (registered on the same day as IQVC24.COM). If Respondent's intention was/is to use domain names that reflect the abbreviation of his alleged company, International Quality Vacations Company, why did Respondent register QVC24.COM? There is no other plausible explanation, but bad faith.
The reverse WHOIS searches clearly demonstrate that Respondent is a cyber- squatter because he has registered domain names that incorporate famous marks such APPLE, MAC, COSMOPOLITAN, FERRARI and NIKE. It is notable that Respondent owns the domain name APPLESTORESCHINA.COM that resolves to a web site that purports to sell APPLE products. Respondent is in the business of cyber-squatting and exhibits a pattern of riding on the reputation of third-parties. This alone is indicative of Respondent's bad faith.
Another factor that supports Respondent's bad faith is his statement that he has received an inquiry from a Chinese company interested in purchasing the disputed domain name. It appears that Respondent was anticipating that, on reading this email, Complainants would feel pressured into offering him money for the domain name. This demonstrates Respondent's bad faith. Complainants note that in his response, Respondent again alluded to the alleged Chinese company, but this time he added that he did not entertain the alleged inquiry because he wanted to use the domain name for his own business. This explanation appears to be an afterthought made with the objective of trying to convince the Panel of his good faith. However, given the totality of the circumstances described in the complaint and this Additional Submission, the Panelist should hold that Respondent has acted in bad faith.
Respondent contends that before registering the domain name <iqvc.co>, he did a "UK trademark search" that "came up blank." This is just another example of a self-serving statement made by Respondent without supporting evidence. If Respondent did in fact register the disputed domain name after doing a search, Complainants’ bad faith argument is strengthened even further.
Complainants' search of the records of the UK Intellectual Property Office has revealed five registrations of the QVC mark and marks that incorporate the QVC mark, all owned by Complainant, QVC, Inc. Thus, Respondent appears to be arguing that he did not believe that IQVC was confusingly similar to QVC. Even assuming Respondent so believed, how can Respondent explain his registration of QVC24.COM just a day after he registered the disputed domain name? Clearly Respondent could not have believed that QVC24 was not similar to QVC. Given the results of the search done by Complainants, there can only be two possibilities, namely, that Respondent is not being truthful about the alleged search or he did the search and decided to register the disputed domain name in total disregard of Complainant QVC, Inc's rights in the QVC mark in the United Kingdom. Either way Respondent's bad faith is evident.
Respondent believes that "dot co" is the next biggest worldwide premium domain. This might explain why he decided to register the domain name IQVC.CO. Respondent likely hoped that he would register the domain name and contact Complainant, QVC, Inc., at an opportune time in the hope of making a quick buck. Given Respondent's pattern of registering domain names that incorporate famous marks owned by third-parties, this conclusion is inevitable.
Respondent has questioned why Complainants have not taken action against the domain name IQVC.ORG.UK. Such inaction does not have a bearing on this case. Trademark owners are not required to take action against each and every domain name that incorporates their marks.
Complainants have trademark rights in the mark IQVC by virtue of its trademark registration of the particular mark and otherwise.
At the time Respondent registered the domain name Respondent was aware of Complainants’ claim of rights in a similar trademark.
Respondent is a cyber-squatter whose business, at least in part, is to register and trade in domain names containing the trademarks of others.
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 Complainants 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.
The instant Complaint is submitted by two Complainants, ER Marks, Inc. and QVC, Inc. Complainants jointly contend that ER Marks, Inc. is a wholly owned subsidiary of QVC, Inc. and that QVC, Inc. owns the QVC mark outside of the United States and ER Marks, Inc. owns the QVC mark in the United States. The connection between the co-complainants is sufficient so that they may proceed in unity pursuant to the Forum’s Supplemental Rule 1(e).
Complainants have rights in a mark that is identical to Respondent’s domain name.
Respondent does not deny that Complainants have rights in the IQVC mark. Likewise, Respondent does not deny that the at-issue domain name is identical to the Complainants’ mark. Moreover, Complainants demonstrate that it has rights in the mark IQVC by virtue of its registration of the particular mark with the United States Patent and Trademark Office and otherwise.
The IQVC mark is identical to the at-issue domain name but for the inconsequential top level difference. See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain).
Respondent lacks rights or interest in respect of the at-issue domain name.
Complainants must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden, in effect, shifts to Respondent to show that he does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Complainants contend that Respondent is not commonly known by the <iqvc.co> domain name. WHOIS information identifies Respondent as “stuart mckenzie.” Respondent is not authorized to register or use Complainants’ IQVC mark. The record is also devoid of evidence indicating Respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, Complainants satisfy their slight initial burden regarding Respondent’s lack of rights and interests in the disputed domain name.
Although Respondent does not deny that he was aware of the Complainants and Complainants’ mark at the time of registering the domain name, he mentions that he did a trademark search in the U.K. relating to the domain name prior to registration. But, Respondent offers no corroborating evidence of the search or any clarification as to how such a search was carried out.
Respondent impliedly argues that he has made preparations to use the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(ii). However, Complainants show that since filing their Complaint, Respondent has changed the content of the disputed domain name’s website such that the site now contains the name “International Quality Vacations Company” and states that the site is down due to maintenance and operations and that a new website will be up shortly. There is no independent evidence of any such business or plans for such business involving that at-issue domain name.
Respondent does not deny that he has registered domain names incorporating famous trademarks or that he is a cyber-squatter as Complainants allege. Respondent’s contentions regarding the business use of the domain name are baseless and designed at deceiving the Panel. The Panel concludes that Respondent ginned up the vacation business yarn in an attempt to show that he has rights and interest in respect of the domain name and to support a conclusion that he registered and is using the domain in good faith.
Furthermore, Respondent’s inactive holding of the disputed domain name to operate a site that is under maintenance does not establish rights and legitimate interests in the <iqvc.co> domain name even if the claimed business use is credible. Proof of a party’s intent to use a disputed domain name must be shown before the filing of a Complaint. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out).
Respondent has registered and is using the domain name in bad faith.
As noted above concerning rights and interests, the Panel finds that the Respondent has deliberately attempted to deceive the Panel by concocting a fairy tale about his intending to use the domain name to reference a website vacation business which has the same initials as Complainants’ mark. The lack of any credible independent evidence regarding such a business, the Respondent’s flip and logically strained Response to the Complainant, as well as Respondent’s history of registering the trademarks of others in domain names shows that Respondent has been disingenuous with the Panel. Paragraph 4(b) of the Policy instructs that the enumerated bad faith circumstances thereunder are “without limitation.” Respondent’s intentional attempt to mislead the Panel in this proceeding indicates bad faith in both registering and using the domain name. See Vaga-lume Midia Ltda v. Kevo Ouz d/b/a/Online Marketing Realty, FA 1287151, (Nat. Arb. Forum December 7, 2009) (Respondent’s prevarication is sufficient grounds for finding bad faith registration and use.)
Although additional bad faith indicia is not required for finding bad faith registration and use, the Panel nevertheless finds that the Respondent’s deliberate attempt to mislead the Panel suggests that Respondent registered the domain name for the purpose of transferring it for valuable consideration pursuant to Policy ¶4(b)i.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be Granted.
Accordingly, it is Ordered that the <iqvc.co> domain name be TRANSFERRED from Respondent to Complainants.
Paul M. DeCicco, Panelist
Dated: March 30, 2011
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