ER Marks, Inc. and QVC, Inc. v. 6 Ideas
Claim Number: FA1111001417333
Complainant is ER Marks, Inc. and QVC, Inc. (“Complainant”), represented by Sujata Chaudhri of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is 6 Ideas (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <qvcbroker.com> and <selltoqvc.com>, registered with GoDaddy.com, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 28, 2011; the National Arbitration Forum received payment on November 28, 2011.
On November 29, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <qvcbroker.com> and <selltoqvc.com> 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 November 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@qvcbroker.com and postmaster@selltoqvc.com. Also on November 30, 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 Response was received and determined to be complete on December 20, 2011. The Response was technically deficient in that the annexes were not submitted separately; Respondent resubmitted the Response with separate annexes on December 22, 2011.
Complainant’s Additional Submission was received on December 27, 2011 and determined to be compliant with Supplemental Rule 7. Respondent’s Additional Submission was received on January 2, 2012 and determined to be compliant with Supplemental Rule 7.
On December 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant markets products via direct response television retail shopping under the QVC trademark. The mark is owned by ER Marks, Inc., a wholly owned subsidiary of QVC, Inc., within the United States and by QVC, Inc., elsewhere; for purposes of this proceeding, the Panel treats the two corporations as a single entity, pursuant to the Forum’s Supplemental Rule 1(e). The mark has been registered with the U.S. Patent & Trademark Office since 1987. Complainant claims worldwide revenues of over US$7 billion; its broadcast programs reach over 98 million households in the United States and many more elsewhere. Complainant contends that its mark is famous, having developed substantial goodwill and public recognition around the world.
Respondent registered the disputed domain names on August 24, 2011. The domain names resolve to websites that promote Respondent’s services, which involve assisting inventors and corporations to sell their products through Complainant. The websites prominently display Complainant’s mark and unique logo, and Complainant alleges that they falsely suggest that they are endorsed, authorized, or sponsored by Complainant.
Complainant contends that the disputed domain names are confusingly similar to Complainant’s QVC mark because the addition of “sell to” and “broker” are insufficient to distinguish them from the mark, and “QVC” remains the distinctive component of each domain name. Complainant further contends that Respondent lacks rights or legitimate interests in respect of the domain names, on the grounds that Respondent is not commonly known by the names; has not been licensed or authorized by Complainant to use its mark, and has never had any relationship with Complainant; and is not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Finally, Complainant alleges that the disputed domain names were registered and are being used in bad faith, on the grounds that Respondent registered the names without Complainant’s authorization, and uses them to confuse consumers into believing that Respondent connects inventors and corporations with Complainant with Complainant’s authorization, profiting from this confusion. Respondent also alleges bad faith on the basis that the domain names are confusingly similar to Complainant’s famous mark, and because Respondent should be presumed to have constructive notice of the mark based upon Complainant’s existing trademark registrations.
B. Respondent
Respondent states that it has, in fact, assisted inventors and corporations in selling products to Complainant “on at least 10 occasions,” and claims that Complainant’s revenues from these products exceed $2 million. Respondent concedes Complainant’s mark appears on its websites, but states that it removed the accompanying logo upon receiving notice from Complainant. Respondent denies that anything on its websites imply an endorsement or authorization from Complainant; to the contrary, Respondent states that the sites clearly communicate that Respondent serves as a broker, sales agent, and representative for inventors and others seeking to present products to Complainant.
Respondent contends that the domain names are not confusingly similar to Complainant’s mark, claiming that the words “sell to” and “broker” indicate that Respondent is separate from and seeks to sell products to Complainant. Respondent claims to have a legitimate interest in the domain names because Respondent serves as a broker/sales agent to Complainant, bringing vendors to Complainant several times per year. Respondent denies that its websites create a mistaken belief that Respondent is affiliated with Complainant, noting that Complainant has offered no evidence that any confusion has taken place. Respondent asserts that its use of the domain names qualifies as a legitimate and fair use. Respondent disputes Complainant’s allegations of bad faith on substantially the same grounds.
C. Additional Submissions
Complainant’s Additional Submission reiterates the allegations contained in the Complaint and responds to various allegations in the Response. Respondent’s Additional Submission similarly restates the allegations contained in the Response and responds to Complainant’s Additional Submission.
Paragraph 12 of the Rules confers upon the Panel the sole discretion to decide whether to receive supplemental material from the parties. As a general rule, a Panel should consider additional submissions only in exceptional circumstances, such as where they reflect newly discovered evidence not reasonably available to the submitting party at the time of its original submission, or rebut arguments by the opposing party that the submitting party could not reasonably have anticipated. America Online, Inc. v. Thricovil, FA 638077 (Nat. Arb. Forum Mar. 22, 2006); see also Sina.com Online v. CyberTavern, LLC, FA 1235499 (Nat. Arb. Forum Jan. 13, 2009) (Sorkin dissenting). Although the parties have presented their additional submissions in procedural compliance with the Forum’s Supplemental Rule 7, neither has identified any newly discovered evidence, arguments by the opposing party that could not have been reasonably anticipated, nor any other exceptional circumstances that would warrant the Panel’s consideration of additional material. (Nor, the Panel notes, did either party elect to provide supporting evidence accompanying its additional submission). The Panel therefore declines to consider the substance of the parties’ additional submissions.
The Panel finds that the disputed domain names are identical or confusingly similar to a mark in which Complainant has rights, and that Respondent lacks rights or legitimate interests in respect of the disputed domain names. The Panel further finds, however, that Complainant has not proved that the disputed domain names were registered and are being used in bad faith.
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.
The disputed domain names consist of Complainant’s registered mark combined with the terms “broker” and “sell to.” The Panel agrees with Complainant’s contentions that such terms are insufficient to distinguish the domain names from the mark, and that the mark is the dominant component of each domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions ¶ 1.9 (2d ed.), available at http://www.wipo.int/amc/en/domains/search/overview/#19. Contrary to Respondent’s assertion, it is quite plausible that a company like Complainant would use a domain name combining its mark with such terms as these (e.g., for the purpose of submitting product submissions). The Panel therefore considers the disputed domain names to be confusingly similar to Complainant’s mark.
Complainant’s allegations and supporting evidence suffice to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain names. The burden of production therefore shifts to Respondent to come forward with concrete evidence of its rights or legitimate interests. See, e.g., Shahrad Yazdani v. Domain Deluxe, FA1219173 (Nat. Arb. Forum Oct. 2, 2008).
Respondent claims that it has a legitimate interest arising from its role as an independent broker or sales agent that brings vendors to Complainant. In effect, Respondent is claiming that it is making a nominative fair use of Complainant’s mark. The U.S. Court of Appeals for the Ninth Circuit has described the applicable law as follows: “In cases where a nominative fair use defense is raised, we ask whether (1) the product was ‘readily identifiable’ without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder.” Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.2d 1171, 1175-1176 (9th Cir. 2010).
Nearly all of the content on Respondent’s websites that use the disputed domain names relates to Respondent’s QVC-related services—i.e., assisting inventors and corporations seeking to promote products to QVC. However, Respondent clearly does not need to use Complainant’s logo for this purpose; surely a textual reference to Complainant’s mark is sufficient to describe Respondent’s services to potential clients. Furthermore, the use of that logo, together with the lack of an explicit disclaimer on Respondent’s websites, increased the likelihood that those visiting the websites would be confused about whether Respondent was sponsored or endorsed by Complainant.
The Panel concludes that Respondent is not entitled to rely upon a nominative fair use defense, and accordingly finds that Complainant has met its burden with respect to the second element set forth in paragraph 4(a) of the Policy.
Respondent is operating what appears to be a legitimate business, and registered the disputed domain names for the purpose of marketing its services to potential clients. That the manner in which Respondent used the domain names turned out to be infringing (largely because of relatively minor aspects of that use, as described above) does not necessarily mean that the registration and use of the domain names must be deemed to be in bad faith. The Ninth Circuit held in Toyota Motor Sales, 610 F.2d at 1177, that the defendants in that case could not be enjoined from doing business at <lexusbroker.com>. Respondent similarly is entitled to use the domain names at issue here for its business. The Panel therefore is disinclined to infer bad faith from Respondent’s actions, notwithstanding the findings set forth above regarding rights or legitimate interests. Accordingly, the Panel finds that Complainant has failed to meet its burden of proving that the disputed domain names were registered and are being used in bad faith.
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <qvcbroker.com> and <selltoqvc.com> domain names REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: January 11, 2012
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