Complainants are QVC Inc. and ER Marks Inc. of United States of America (hereinafter referred to jointly and severally as “Complainant”).
Respondent is PRIVATE WHOIS FOR QVCPRODUCT.COM of India and Kevin Daste of United States of America (hereinafter referred to jointly and severally as “Respondent”).
The domain name at issue <qvcproduct.com> is registered with Lead Networks Domains Pvt. Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2009. On February 3, 2009, the Center transmitted by email to Lead Networks Domains Pvt. Ltd a request for registrar verification in connection with the domain name at issue. On February 12, 2009, after several follow-up emails from the Center, Lead Networks Domains Pvt. Ltd transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 13, 2009 providing the registrant and contact information disclosed by the registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint on February 18, 2009 (hereinafter referred to as the “Complaint”). The Center verified that the Complaint (together with the Amended Complaint) satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on February 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 18, 2009.
The Center appointed M. Scott Donahey as the sole panelist in this matter on April 2, 2009. 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.
Complainant is engaged in, inter alia, electronic retailing services for in-home shopping. Complainant markets its products on television and over the Internet. Complainant has used its QVC mark continuously since 1986 and is the owner of numerous trademark and service mark registrations with the United States Patent and Trademark Office, the earliest of which issued on September 1, 1987. Complainant also holds QVC marks and marks which include “QVC” in 39 other countries and the European Union. Complainant holds a European Union registration for the mark QVC THE NEW WAY OF SHOPPING. Complaint, Annex E.
Complainant sells its products and ships its goods worldwide. It is truly a giant in electronic retailing and home shopping, with 2005 net revenues in excess of USD 6.5 billion. Complainant has shipped more than 870 million packages to customers around the globe, and employs more than 15,000 people worldwide. Complaint, Annex E.
In addition, Complainant owns hundreds of domain names incorporating its QVC marks, including <qvc.com>. Complaint, Annex H. Complainant uses its domain names to link to interactive web sites at which it offers its products for sale to Internet users.
Respondent registered the domain name at issue on May 15, 2005. Respondent uses the domain name at issue to connect to a web site on which links to web sites of Complainant's competitors are featured. The links are described on Respondent's web site as “sponsored links for QVC shopping”. Complaint, Annex J.
On October 16, 2008, upon learning of the existence of Respondent's web site, Complainant sent a cease and desist letter to the address listed in the WhoIs for the registrant of the domain name at issue. Complainant received no response to this letter.
On January 30, 2009, Complainant filed its Complaint in this matter, naming Private Whois for QVCPRODUCT.COM (“Privacy Whois”), listed by the Registrar Lead Networks Domains Pvt. Ltd. (hereinafter “Lead Networks”) in the WhoIs maintained by the registrar. On February 3, 2009, the Center transmitted a letter to the registrar seeking confirmation that the domain name was registered in the name of Respondent Privacy Whois. The registrar Lead Networks took nine days to respond to the Center's email1, informing the Center that in fact the registrant was not Privacy Whois, but instead one Kevin Daste. Kevin Daste has been a respondent in numerous UDRP proceedings (Complaint, Annex N).2
Complainant contends that the domain name at issue is confusingly similar to its QVC marks that Respondent is not authorized or licensed to use the QVC marks and has offered no justification or asserted rights to use the QVC marks, and that Respondent has registered and is using the domain name at issue in bad faith.
The Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs the panel as to the principles the panel is to use in determining the dispute: “A panel shall 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 directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A domain name has been found to be confusingly similar to a mark where a common descriptive term such as “product” in the present case has been appended to the mark as part of the domain name. Serta, Inc. v. Maximum Investment Corporation, WIPO Case No. D2000-0123 (<buyserta.com> and <buyaserta.com> held confusingly similar to the SERTA trademark). Accordingly, the Panel finds that the domain name at issue is confusingly similar to Complainant's QVC service marks and trademarks.
The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of a domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name at issue and Respondent has failed to assert any such rights or legitimate interests. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
Complainant's name is well known around the world. In the Panel's view, it is impossible to believe that Respondent did not know of Complainant at the time it registered the domain name at issue. Moreover, use of the domain name at issue to offer for sale goods allegedly related to Complainant, but in reality sold by competitors of Complainant, is further evidence that Respondent registered the domain name with full knowledge of Complainant and its business.
The Panel finds that Respondent's use of Complainant's QVC mark in its domain name was done for the purpose of attracting Internet users to the site. Respondent's prominent use of Complainant's QVC and QVC [THE NEW WAY OF] SHOPPING marks on its web site in order to entice Internet users to purchase competitive merchandise constitutes bad faith registration and use in violation of the Policy, paragraph 4(b)(iv). Lilly ICOS LLC v. Lei Lu, WIPO Case No. D2005-0436. Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.
While the great majority of ICANN-accredited registrars conduct its business judiciously, there seem to be a number of “rogue registrars” who would appear to be “gaming the system” by using their status as registrars to either register and use domain names which deliberately profit from their confusing similarity to (well-known) trademarks and service marks or to otherwise materially contribute to such conduct by registrants. The Panel would note that the UDRP was not designed to, nor does it address such registrar conduct, since at the time the UDRP was adopted it did not appear to be contemplated (at least in the UDRP itself) that there would be a blurring of registrar / registrant roles such that registrars themselves would engage in (or else materially contribute to) conduct designed to profit from the good will inherent in third party (distinctive and famous) marks, nor did registrars of this type have privacy services at their disposal. For the credibility of the UDRP as well as the DNS in a broader sense, it is important that ICANN assert its contract rights with registrars. Failure to do so, especially in the face of the contemplated expansion of the DNS would likely see trademark owners resort to court litigation in order to hold registrars and possibly registries to compliance obligations they have undertaken vis-à-vis ICANN.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <qvcproduct.com> be transferred to Complainant.
M. Scott Donahey
Dated: April 9, 2009
1 In fact a UDRP panel recently documented the consistently late response by Lead Networks to the Center's requests for registrar confirmation, listing more than twenty-five recent cases in which the response by Lead Networks was inexcusably delayed, sometimes by as long as 22 days and in one instance where Lead Networks failed to respond at all. Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited/ COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1675. Cf., among others, the Center's recent letter to ICANN available at https://www.wipo.int/amc/en/docs/icann090409.pdf.
2 The Panel would also note that it would appear from publicly-available resources that Kevin Daste has also been a party to court proceedings in the United States under the Anticybersquatting Consumer Protection Act. See, e.g., Verizon California Inc., et al. v. Lead Networks Domains Private Limited, Naresh Malik a/k/a Nick M, Mahesh Malik, and Kevin Daste, (CV09-0613 CAS, Central District of California, filed Jan. 27, 2009). The Panel also notes that in this recent federal court case, the Verizon plaintiffs allege that the registrar Lead Networks is controlled by Naresh Malik and Mahesh Malik, that Lead Networks is the registrar of record for over 129,000 domain names, the majority of which are confusingly similar to famous or distinctive trademarks owned by others. Mr. Daste is alleged to be the registrant of record for more than 8,000 such names. Verizon alleges and offers proof that the three named individuals are in fact the real registrants of many of the identified domain names. Verizon alleges that the defendants set up shell entities to list as registrants of the identified domain names. It is also relevant to note that in Western Union Holdings, Inc., supra, the panel found that the domain names at issue registered in the names of various entities were in fact controlled by a single entity.