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and Mediation Center
QVC, Inc. v. NetworkWebsites.com and John T. Clark
Case No. D2006-0349
1. The Parties
The Complainant is QVC, Inc., West Chester, Pennsylvania, United States of America, represented by Caesar, Rivise, Bernstein, Cohen, & Pokotilow, Ltd., United States of America.
The Respondents are NetworkWebsites.com Dallas, Texas, United States of America
and John T. Clark, Irving, Texas, United States of America.
2. The Domain Names and Registrar
The disputed domain names <qvcsecrets.com> and <qvcsurplus.com>
are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2006. On March 22, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On March 22, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants of the domain names and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 March 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 18, 2006.
The Center appointed Sandra J. Franklin as the sole
panelist in this matter on May 16, 2006. 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
Complainant QVC, Inc., which operates a well-known
home shopping television program, holds many U.S. Trademark Registrations for
QVC, dating back to 1987. It also holds 75 registrations in 39 other countries.
5. Parties’ Contentions
A. Complainant contends that:
1. Respondent’s <qvcsecrets.com> and <qvcsurplus.com> domain names are confusingly similar to Complainant’s QVC mark.
2. Respondent does not have any rights or legitimate interests in the <qvcsecrets.com> and <qvcsurplus.com> domain names.
3. Respondent registered and used the <qvcsecrets.com> and <qvcsurplus.com> domain names in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
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,
WIPO Case No. D2000-0009 (February 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.
As a preliminary point, the Panel notes that the registrants of the domain names are NetworkWebsites.com (<qvcsurplus.com>) and John T. Clark (<qvcsecrets.com>). The Panel, due to the fact that the administrative and technical contacts for both domain names are the same entity (John Clark), accepts that there is a sufficient connection between the registrants for them to be named joint Respondents in this proceeding. All references to “Respondent” in this decision are references to both Respondents.
A. Identical or Confusingly Similar
Complainant has established rights in the QVC mark, pursuant to Policy paragraph 4(a)(i), through registration of the mark with the USPTO and other trademark authorities. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum February 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”)
Respondent’s <qvcsecrets.com> and <qvcsurplus.com> domain
names are confusingly similar to Complainant’s QVC mark because they incorporate
the salient and dominant portion of Complainant’s mark with the addition
of descriptive terms. The Panel finds that the mere addition of a descriptive
term to Complainant’s registered mark does not adequately distinguish
Respondent’s domain names from Complainant’s mark pursuant to Policy
paragraph 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, WIPO
Case No. D2000-1214 (November 26, 2000) (finding that the domain name <bodyshopdigital.com>
is confusingly similar to the complainant’s THE BODY SHOP trademark.)
The Panel finds that Policy paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
There is no evidence that Respondent has ever been commonly known by the
<qvcsecrets.com> and <qvcsurplus.com> domain names, and Complainant
asserts that Respondent has never been known by those names. Respondent has
not answered the Complaint with any information contradicting Complainant’s
assertion. The WHOIS database contains no information implying that Respondent
is commonly known by the <qvcsecrets.com> and <qvcsurplus.com> domain
names. The Panel infers that Respondent has no rights or legitimate interests
in these domain names under Policy paragraph 4(c)(ii). See RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy paragraph 4(c)(ii)
“to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail”); See also Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum February 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 paragraph 4(c)(ii) does not apply).
It is apparent from the evidence in the case file, and from the use made by Respondent of the disputed domain names, that Respondent was most likely aware of the trademark QVC, which Complainant has used for a number of years, at the time it registered the disputed domain names.
The Panel presumes that Respondent earns payment in exchange for exposing Internet users seeking Complainant to unrelated advertisements. Therefore, Respondent is taking advantage of the confusing similarity between its domain names and Complainant’s mark for its own financial gain. Such use of the disputed domain names is not in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum September 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 paragraph 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii).”); See also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum December 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy paragraph 4(c)(i), nor does it represent a noncommercial or fair use under Policy paragraph 4(c)(iii).”).
The Panel finds that Policy paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Respondent uses the <qvcsecrets.com> and <qvcsurplus.com> domain names, which are confusingly similar to Complainant’s QVC mark, to present Internet users with paid advertisements for services unrelated to Complainant. Given the likelihood that Respondent was aware of Complainant’s trademark when it registered the domain names such use of the disputed domain names constitutes bad faith registration and use pursuant to Policy paragraph 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum November 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy paragraph 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum March 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent.)
Complainant asserts that Respondent has registered many domain names that incorporate
other parties’ trademarks. Additionally, Respondent has been involved
in previous disputes in which Respondent’s domain names were transferred
because the domain names infringed on the complainant’s trademark rights.
See, for example, Wal-Mart Stores, Inc. v. John Clark, WIPO
Case No. D2004-0636 (ordering the transfer of the <walmartsurplus.com>
domain name from Respondent to the complainant.) The Panel finds that this pattern
of behavior also indicates bad faith registration and use pursuant to Policy
paragraph 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234
(Nat. Arb. Forum August 17, 2000) (finding that the respondent violated Policy
paragraph 4(b)(ii) by registering multiple domain names that infringe upon others’
famous and registered trademarks); See also Am. Online, Inc. v. iDomainNames.com,
FA 93766 (Nat. Arb. Forum March 16, 2000) (finding a bad faith pattern of conduct
where the respondent registered many domain names unrelated to its business
which infringe on famous marks and websites).
The Panel finds that Policy paragraph 4(a)(iii) has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the <qvcsecrets.com> and <qvcsurplus.com> domain names be transferred to the Complainant.
Sandra J. Franklin
Dated: May 29, 2006