ER Marks, Inc. and QVC, Inc. v. Hongyu Liu
Claim Number: FA1304001496523
Complainant is ER Marks, Inc, and QVC, Inc. (“Complainant”), represented by Sean W. Dwyer, Pennsylvania, USA. Respondent is Hongyu Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <qvcshoppingonline.com> and <qvcbankruptcy.com>, registered with GODADDY.COM, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2013; the National Arbitration Forum received payment on April 25, 2013.
On April 26, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <qvcshoppingonline.com> and <qvcbankruptcy.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 April 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2013 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@qvcshoppingonline.com and postmaster@qvcbankruptcy.com. Also on April 29, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
1. Complainant, ER Marks, Inc., is a wholly-owned subsidiary of QVC, Inc. Since 1996, Complainant has offered home shopping services online.
2. Complainant has over twenty-five trademark registrations comprised in whole or in part of QVC with the United States Patent and Trademark Office (“USPTO”) for the QVC mark (e.g., Reg. No. 1,455,889, registered September 1, 1987).
3. Respondent’s domain names are confusingly similar to Complainant’s QVC marks because Respondent merely added generic terms to Complainant’s mark. Also, the addition of the generic top-level domain (“gTLD”) extension “.com” to <qvcshoppingonline.com> and <qvcbankruptcy.com> does not have any legal significance because a domain name is required to have a top-level extension such as “.info,” “.com,” “.net,” etc.
4. Respondent lacks rights or legitimate interests in the domain names <qvcshoppingonline.com> and <qvcbankruptcy.com>.
i. Respondent cannot produce evidence that it is commonly known as QVC or by the <qvcshoppingonline.com> and <qvcbankruptcy.com> domain names.
ii. Respondent is using the disputed domain names in competition with Complainant.
5. Respondent registered and is using the domain name in bad faith.
i. Respondent is using the disputed domain names to disrupt Complainant’s business and create consumer confusion.
ii. Respondent is using the disputed domain names that are confusingly similar to Complainant’s QVC marks to create confusion regarding the affiliation of its website in order to attract users for profit.
iii. Respondent is presumed to have had constructive notice of the QVC marks at the time the disputed domain names were registered.
6. On March 11, 2013, Respondent registered the domain names <qvcshoppingonline.com> and <qvcbankruptcy.com>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE—MULTIPLE COMPLAINANTS
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: ER Marks, Inc. and QVC, Inc. Complainant contends that ER Marks, Inc., is a wholly owned subsidiary of QVC, Inc., and as such, Complainant should be treated as a single entity for the purposes of this proceeding.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and treats them all as a single entity in this proceeding. throughout this Decision , the Complainants will be collectively referred to as Complainant.
1. Complainant has rights in its QVC mark.
2. Respondent’s <qvcshoppingonline.com> and <qvcbankruptcy.com> domain names are confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain names.
4. Respondent registered and used the domain names 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.
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.”).
Complainant asserts that it has offered home shopping services online since 1996. Complainant contends that it has numerous trademark registrations with the USPTO for the QVC mark (e.g., Reg. No. 1,455,889, registered September 1, 1987). The Panel notes that although Respondent appears to reside in China, the Panel holds that Complainant is not required to register its mark in the country in which Respondent operates pursuant to Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant’s registration of the QVC mark with the USPTO proves its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s domain names are confusingly similar to Complainant’s QVC marks because Respondent merely added generic terms to Complainant’s mark. The Panel notes that Respondent adds the generic terms “shopping online” and “bankruptcy” to Complainant’s mark to form the domain names. The Panel determines that Respondent’s addition of generic terms does not differentiate the domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Complainant also argues that the addition of the gTLD extension “.com” to <qvcshoppingonline.com> and <qvcbankruptcy.com> does not have any legal significance because every domain name is required to have a top-level extension such as “.info,” “.com,” “.net,” etc. The Panel agrees that Respondent’s addition of gTLDs to its domain names is inconsequential to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel find that Respondent’s <qvcshoppingonline.com> and <qvcbankruptcy.com> domain names are confusingly similar to Complainant’s QVC mark under Policy ¶ 4(a)(i).
Complainant 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 shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent cannot produce evidence that it is commonly known as QVC or by the <qvcshoppingonline.com> and <qvcbankruptcy.com> domain names. Complainant claims that the WHOIS information lists the registrant as “Hongyu Liu,” which does not indicate that Respondent is commonly known as the disputed domain names. See Exhibit 4. Complainant argues that it has not granted Respondent permission to use the QVC marks and certainly has not granted Respondent permission to register domain names that infer a false association with Complainant. Consequently, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(a)(i). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent is using the disputed domain names in competition with Complainant. The Panel notes that Respondent’s <qvcshoppingonline.com> and <qvcbankruptcy.com> domain names links to hyperlink directories featuring competing links titled “Best Online Shopping,” “Workboots Qvc Shopping,” “Shopping,” and others. See Exhibit 3. The Panel determines that Respondent’s use of the disputed domain names to provide competing hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Complainant claims that Respondent is using the disputed domain names to disrupt Complainant’s business and create consumer confusion. Complainant argues that Respondent is using the disputed domain names in competition with Complainant. The Panel notes that Respondent’s <qvcshoppingonline.com> and <qvcbankruptcy.com> domain names link to hyperlink directories featuring competing links titled “Best Online Shopping,” “Workboots Qvc Shopping,” “Shopping,” and others. See Exhibit 3. The Panel holds that Respondent’s use of the disputed domain names to provide competing hyperlinks disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant alleges that Respondent is using the disputed domain names, which are confusingly similar to Complainant’s QVC marks, to create confusion regarding the affiliation of Respondent’s website in order to attract Internet users for profit. Complainant argues that Respondent is using the disputed domain names in competition with Complainant. Complainant argues that the disputed domain names are intended to confuse consumers into visiting Respondent’s websites, allowing Respondent to generate click-through revenue thereon. The Panel determines that Respondent is using the domain names to attract Internet users to its websites for its own commercial gain, showing bad faith use and registration under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant asserts that Respondent is presumed to have had constructive notice of the QVC marks at the time the disputed domain names were registered. Complainant claims that given the substantial public recognition and reputation of the QVC marks in relation to retail and outlet store services, there is no doubt whatsoever that Respondent selected the disputed domain names for the sole purpose of taking advantage of such recognition and reputation. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the reputation of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel may hold that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <qvcshoppingonline.com> and <qvcbankruptcy.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 12, 2013
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