ER Marks, Inc.; QVC, Inc. v. Sticky Dicky

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

QVC, Inc. and ER Marks, Inc. v. Sticky Dicky (also known as

Sticky Dickys)

Case No. D2001-0774

1. The Parties

Complainants are QVC, Inc., a corporation of the State of Delaware, USA, with

a principal place of business at Studio Park, West Chester, Pennsylvania, 19380,

USA, and its wholly-owned subsidiary, ER Marks, Inc., a corporation of the State

of Delaware, USA, with a principal place of business at 222 Delaware Avenue,

Suite 1448, Wilmington, Delaware, 19899, USA. Complainants are represented

by Stanley C. Macel III, of Connolly Bove Lodge & Hutz LLP, 1220 Market

Street, P.O. Box 2207, Wilmington, Delaware, 19899, USA.

Respondent is Sticky Dicky (also known as Sticky Dickys) whose address is Long

Acre, Hinckley Road, Wolvey, Leicestershire, LE10 3HQ, United Kingdom.

The registrant for one of the disputed domain names, <as-seen-on-qvc.com>,

is identified as Richard Hawcutt of Sticky Dickys, under the same address.

Complainants state that Mr. Hawcutt has not been named as an individual Respondent

since he appears to be a representative of the Respondent, Sticky Dickys.

The Panel agrees with this assumption and considers Respondent to be Sticky

Dicky for all four domain names in issue.

2. The Domain Name and Registrar

2.1 The domain names in dispute ("Domain Names") are:

<justlikeqvc.com>

<just-like-qvc.com>

<asseenonqvc.com>

<as-seen-on-qvc.com>

2.2 The Registrar with which all the domain names are registered is Capital

Networks Pty Ltd, a member of the CORE Internet Council of Registrars (CORE),

P.O. Box 383, Dickson, ACT, 2602, Australia.

3. Procedural History

The Complaint which is dated June 12, 2001 was filed in electronic format on

that date and hard copies were received by the WIPO Arbitration and Mediation

Center (the "Center") on June 14, 2001. On June 13, 2001, the Center transmitted

an acknowledgment of receipt of the Complaint. On June 14, 2001 and June 19,

2001, the Center transmitted requests for registrar verification respectively

to Capital Networks Pty Ltd and to CORE in connection with this case. On June

19, 2001, CORE sent via email to the Center a verification response confirming

that Respondent is the registrant as well as the administrative, technical and

zone contact. On June 20, 2001, the Center verified the Complaint satisfies

the formal requirements of the ICANN Uniform Domain Name Dispute Resolution

Policy (the "Policy"), the Rules for Uniform Domain Name Resolution Policy (the

"Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution

(the "Supplemental Rules").

On June 20, 2001, the Center formally commenced this proceeding and sought

to notify Respondent that its Response would be due by July 9, 2001. Notification

was attempted electronically, by facsimile and by DHL courier. Electronic communications

were sent to the email address of the registrant of each of the disputed domain

names, as notified by CORE, and to the email address of the administrative contact

of the domain names' registrant, Mr. Julian Horsey. Not all of the electronic

communications were delivered and some mail was returned with annotations that

the host was not found or that there was no such user. However, the file, as

transmitted to the Panel, does not indicate that the notification sent by email

to the administrative contact for the domain names registrant, Mr. Julian Horsey,

was not received. The facsimile transmission of the Notification was unsuccessfull.

Notification was also sent by DHL courier to Mr. Julian Horsey at

5 Freemans Lane, Burbage, Leicestershire, LE10 2HZ, United Kingdom.

This is the address provided by CORE. This notification apparently was unsuccessful

and an annotation on the shipment airway bill provides 'CNEE MOVED' - indicating

that the consignee had moved. I am satisfied that the provisions in the Rules

dealing with communications, which require the employment of reasonably available

means calculated to achieve actual notice to Respondent, have been complied

with. No Response has been filed by Respondent. On July 10, 2001,

the Center notified Respondent of failure to comply with the Response deadline.

On August 6, 2001, the Center notified the parties that an Administrative Panel

had been appointed consisting of a single member: Professor Michael Charles

Pryles, who had submitted a Statement of Acceptance and Declaration of Impartiality

and Independence.

4. Factual Background

Complainants state that QVC, Inc. began providing electronic retail services

for in-home shopping in connection with its QVC mark in 1986 and continued to

do so, without interruption, to the present date. During the last 15 years,

QVC, Inc.’s business expanded rapidly. Its net revenue increased from $112,000,000

(112 million U.S. Dollars) in 1987 to a global business with a net revenue in

2000 of $3,536,000,000 (3.536 billion U.S. Dollars).

QVC, Inc. sells both by television shopping channels and by means of interactive

Internet sites on the worldwide web. It started as a business in the United

States but now has a significant international presence through its foreign

affiliates such as QVC UK, QVC Deutchland and others.

Complainant QVC, Inc. began obtaining United States service mark registrations

for its QVC and QVC formative marks as early as 1987. In 1999, QVC, Inc. assigned

certain of its marks and registrations to its wholly owned subsidiary and Co-Complainant,

ER Marks, Inc. These marks almost all pertain to in-home shopping via television,

telephone and/or the Internet.

Complainant QVC, Inc. also protected its trademarks internationally. QVC formative

registrations exist in Algeria, Argentina, Australia, Austria, Bahrain, Brazil,

Canada, Chile, China, Egypt, European Union, Germany, Hong Kong, Hungary, Indonesia,

Israel, Japan, Morocco, New Zealand, Norway, Saudi Arabia, South Korea, Spain,

Switzerland, Taiwan, Tangier Zone, Tunisia, Turkey, United Kingdom and Yemen.

In addition, Complainants state that QVC, Inc. is the registrant of hundreds

of QVC formative domain names. These include top level domains and country code

domains. They include domain names that are critical to QVC's national and international

business, and even include domain names which QVC has no intention of using

but has obtained to protect its own reputation (i.e., <adultqvc.com>).

5. Parties’ Contentions

A. Complainants

Complainants contend as follows:

(1) The confusing similarity of the disputed domain names and respondent’s

bad faith registration and use of them

In October, 2000, long after QVC had achieved recognition as an electronic

in-home shopping network via television and the Internet, Respondent registered

the four Domain Names. Respondent has no license from Complainants nor any other

relationship with Complainants or any affiliates of Complainants. Respondent

is using the four Domain Names in connection with electronic in-home shopping.

The four infringing Domain Names are confusingly similar on their face to the

famous and well-respected QVC marks used in connection with electronic in home

shopping. They all include the QVC mark in toto as the key element of the Domain

Name. The QVC portion of the Domain Names are prefaced by the descriptive generic

phrases 'just like' and 'as seen on' in hyphenated form and also

without spaces between the letters. The addition of these generic terms and

the addition of ".com" is legally insufficient to avoid a finding of confusing

similarity. It is certain that any consumer observing any of the four infringing

Domain Names would believe those names and sites had some association with or

sponsorship by Complainants.

Under the Policy, Paragraph 4(b)(iv), a respondent’s bad faith is established

by a showing that by use of the infringing domain name, the respondent has intentionally

attempted to attract, for commercial gain, Internet users to its website by

creating a likelihood of confusion with the complainant’s mark as to the source,

sponsorship, affiliation or endorsement of the respondent’s website or a product

offered on such site.

There can be no question that Respondent, by using 'just like' and 'as seen on'

in connection with Complainants’ QVC mark, has committed conduct that fits squarely

within the Policy’s established definition of bad faith. Respondent’s use for

commercial gain of <justlikeqvc.com> and <asseenonqvc.com> and their

hyphenated versions for the exact same services provided by QVC, Inc. under

its famous mark, constitutes bad faith of the highest order.

By the time Respondent registered its four QVC formative Domain Names, Complainants’

QVC marks had achieved such distinction that no one would have selected it without

having the bad faith intention to trade off Complainants’ rights.

Additional evidence of Respondent’s bad faith is the fact that it has registered

four different infringing Domain Names to widen its sweep of unwary QVC customers.

If Respondent’s intent was to engage in a good faith home shopping service,

it could have selected from a myriad of domain names that would not be confusingly

similar to the QVC marks.

(2) There is no evidence that Respondent had any prior rights in any QVC formative

mark

In late 2000, Complainants informed Respondent of their position about its

offending use (See Annex J), but Respondent has never responded to Complainants’

letters nor given any explanation of any legitimate rights it has in QVC or

any QVC formative marks. These communications were sent by e-mail and also by

courier, return receipt requested. The return receipts indicate the communications

were delivered.

The facts discussed above further buttress Respondent’s lack of any legitimate

rights in any QVC formative mark. There is no evidence that Respondent ever

used or had any connection with any QVC formative mark or domain name prior

to registering the infringing Domain Names in October 2000. This was years after

Complainants’ QVC mark had become famous and at a time when no one would have

elected to use QVC in connection with electronic home shopping except with a

bad faith attempt to profit from Complainants’ rights.

B. Respondent

Respondent failed to submit a Response to the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the complainant must prove each

of the following:

(i) The domain names are identical or confusingly similar to a trademark or

service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests in respect of the

domain names; and

(iii) The domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that,

if proved, constitute evidence of bad faith as required by Paragraph 4(a)(iii)

referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that,

if proved, constitute evidence of a right or legitimate interest as described

in Paragraph 4(a)(ii) referred to above.

Domain Names Identical / Confusingly Similar

It is clear that the Domain Names incorporate, as their later part, the phrase

'QVC'. The question which then arises is whether the addition of a descriptive

or generic element to the trademark is sufficient to render it 'not identical'

or 'confusingly similar'.

The Domain Names are not identical to the trademarks of Complainants. But they

are similar. Complainants refer to previous WIPO decisions in Quixtar Investments,

Inc. v. Dennis Hoffman, WIPO Case No.

D2000-0253 (May 29, 2000) and Telstra Corporation Limited v. Peter

Lombardo et al, WIPO Case No. D2000-1511

(March 23, 2000) where the Panel found that the addition of generic

words to the complainant's mark was not sufficient to escape the finding of

similarity. This Panelist finds that these previous Panel decisions are highly

persuasive. The only non-generic term in each of the Domain Names is 'QVC' which

is a registered trademark of Complainants and forms part of Complainants' domain

names. The addition to the Domain Names of generic terms such as 'asseenon'

or 'justlike' do little to distinguish them from Complainants' domain names

and registered trademark and indeed emphasise their similarity or identity.

The Panel concludes that the Domain Names are confusingly similar.

No Rights or Legitimate Interests

In the absence of any contrary evidence submitted by Respondent (Paragraph 4(c)),

the Panel is sufficiently persuaded that Respondent has no rights or legitimate

interests in respect of the Domain Names and therefore the Panel finds accordingly.

Domain Names Registered and used in Bad Faith

The phrases 'as seen on', 'just like', etc provide obvious connotations

that Respondent has sought to capitalise on the QVC brand. In essence, the Domain

Names have been phrased in such a way that Respondent have sought to benefit

from domain names belonging to Complainants.

There can be little doubt that Respondent has intentionally attempted to attract,

for commercial gain, Internet users to its website, by creating a likelihood

of confusion with Complainants' mark.

In view of the above, the Panel finds that the Domain Names were registered

and are being used in bad faith.

7. Decision

The Domain Names should be transferred to the Complainant, QVC, Inc.

Michael Charles Pryles

Sole Panelist

Dated: August 20, 2001

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