WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
QVC, Inc. v. HOSTSUAR, Brand Stock Outlet S.L. and Mr. Antonio Victoriano Quinto Segura
Case No. D2015-2373
1. The Parties
The Complainant is QVC, Inc. of West Chester, Pennsylvania, United States of America, represented by Elzaburu S. L. P., Spain.
The Respondents are HOSTSUAR of Huelva, Spain, Brand Stock Outlet S.L. of Alicante, Spain and Mr. Antonio Victoriano Quinto Segura of Alicante, Spain.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) <qvcdirecto.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2015. On December 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 31, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent HOSTSUAR is listed as the registrant and providing the contact details.
The Complaint, because HOSTUAR is an entity offering hosting services and therefore appears to be a mere intermediary, has noted that the administrative and technical contact is the entity BRAND STOCK OUTLET S.L. with a contact person being Antonio Quinto. The same physical person happens to be the sole administrator and legal representative of the entity BRAND STOCK OUTLET S.L. as noted in Spain’s Companies’ Registry. The latter appears to be the owner of the webpage existing under the Domain Name and the entity providing the retail services on the same. On the other hand, Antonio Quinto is the owner of Spanish trademark applications No. 3514365(7) QVC DIRECTO and No. 3514025(9) QVCDIRECTO QUINTO VENTA CATALOGO which have been refused as a result of the oppositions filed by the Complainant.
Therefore, in accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16 and previous UDRP decisions, see for example, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, the Complaint has indicated all the three entities as the Respondents.
The Center verified that the 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on January 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 28, 2016.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on February 5, 2016. 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
The Complainant, founded in 1986, is one of the world’s largest multimedia retailers and broadcasters with headquarters in the United States with subsidiary and/or related companies in the United Kingdom, Germany, Italy, France, Japan, and China. QVC offers direct response retail services primarily via television, cable, satellite and digital terrestrial broadcasts, as well as via the Internet.
Since 1996, QVC has also offered its direct response retail services via the Internet and in the same year it launched <qvc.com>. The websites of QVC and those of all of its subsidiaries and/or related companies are accessible globally and in 2014 over 880 million users visited the QVC ecommerce sites.
The QVC Companies have used QVC, both as their principal mark and trade name, since 1986 in the United States, since 1993 in the UK, since 1996 in Germany, and since 2010 in Italy.
In 2013, QVC reached 21 million global YouTube viewers; in 2014, QVC’s account with Google+ had received over 14.5 million views and is claimed to be among the best-known trademarks in the world.
The Respondents registered the Domain Name on October 9, 2011. The website is active and used for retail services via the Internet.
5. Parties’ Contentions
The Complainant contends the following:
a.) the Domain Name is confusingly similar to the prior trademark of the Complainant because:
- it reproduces the Complainant’s trademark in its entirety;
- the adding of a generic term such as “directo” and the generic Top-Level (“gTLD”) domain name “.com” are insufficient to distinguish it from the mark. The word “directo” is a Spanish word meaning “direct” which is generic and will be understood as such by the Spanish consumers to which the <qvcdirecto.com> webpage is directed.
b.) The Respondents have no rights or legitimate interests in respect of the Domain Name because:
- the Respondents tried to register two trademarks “qvcdirecto” at the Spanish Patent and Trademark Office (“PTO”) in June 2014; the Complainant opposed those applications in August 2014 and the oppositions were allowed. In January 2015, the Respondents filed appeals against the refusals which were rejected by the Spanish PTO. These decisions are final and the Respondents have no rights or legitimate interests in respect of the Domain Name which bears the trademark QVC, owned by the Complainant;
- the Respondents have not been commonly known as “QVC” or “QVC DIRECTO” and they do not appear to own any trademark or rights in those terms;
- the Complainant has never given to the Respondents any license or authorization to register or use the <qvcdirecto.com> Domain Name;
- the Respondents have no relationship whatsoever to the Complainant nor did they ever have any relationship with the Complainant.
c.) The Domain Name was registered and is being used in bad faith because:
- the Respondents could not ignore the strong notoriety and world renown of the Complainant’s trademark when they registered the Domain Name; it is unlikely that the Respondents were not aware of the Complainant’s rights in the QVC trademark at the time of the registration of the Domain Name;
- the Complainant tried to settle the matter amicably sending a cease and desist letter to the Respondents, without receiving any answer;
- the Respondents are not using the Domain Name in a bona fide manner; the Respondents have intentionally chosen the Domain Name based on the registered trademark in order to generate traffic and income through a website. The Domain Name is used for retail services via the Internet which exactly matches the activity of the Complainant and the services for which their trademarks are registered on a global level.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has trademark registrations for QVC all over the world. Therefore, it has been proven that the Complainant has rights in the QVC trademark.
The Domain Name <qvcderecto.com> incorporates QVC, which constitutes the Complainant’s trademark and company name.
The Panel finds that the combination of the Complainant’s trademark with the generic world “direceto” does not render the Domain Name dissimilar to the trademark of the Complainant.
There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark even if it is added to another term. In particular, there are UDRP decisions stating that the incorporation of the trademark and a generic word in a domain name is misleading and confusingly similar to the trademark owned by the complainant (LEGO Juris A/S v. Devin Steenberg, WIPO Case No. D2015-0394; QVC Inc. and ER Marks Inc. v. WhoisGuard, WIPO Case No. D2007-1872).
Additionally, the Panel does not typically consider, when analyzing the identity or similarity, the gTLD suffix – in this case “.com” – because it is a necessary component of the disputed domain name and does not give any distinctiveness (see, Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondents have not filed any response in this case. There is prima facie indication in the evidence provided to the Panel that there are no rights or legitimate interests on the part of the Respondents in the Domain Name.
Specifically, on the basis of the evidence filed before the Panel, the Respondents tried to registered “QVC Derecto” trademarks in Spain comprehensive of the trademark and company name of the Compliant without success (the applications have been rejected). Moreover, the Respondents have not received any license or authorization from the Complainant to register and use the Domain Name.
Under these circumstances, the Panel finds that the Respondents have no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Domain Name is exploited by the Respondents for retailing services via the Internet which matches the activity of the Complainant and the services for which their trademarks are registered on a global level.
The Respondents must have been aware of the existence of the QVC marks. It is quite predictable that only someone who was familiar with the Complainant’s marks would have registered a domain name inclusive of such mark.
The Panel is of the opinion that the Respondents have registered the Domain Name with the intent to profit from the reputation of the famous trademark of the Complainant by choosing a domain name that is confusingly similar to the Complainant’s mark.
Taken together with the fact that the Respondents have not filed any Response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <qvcdirecto.com> be transferred to the Complainant.
Date: February 23, 2016