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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> QVC Inc -v- Sticky Dickys [2003] DRS 784 (21 March 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/784.html Cite as: [2003] DRS 784 |
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Nominet UK Dispute Resolution Service
DRS 0784
QVC Inc & QVC -v- Sticky Dickys
Decision of Independent Expert
Parties:
Complainant’s Details
Complainants: QVC Inc & QVC
Country: GB
Respondent’s Details
Respondent: Sticky Dickys
Country: GB
Domain Names:
ASSEENONQVC.CO.UK; JUSTLIKEQVC.CO.UK (“the Domain Names”)
1. Procedural Background:
The complaint was lodged with Nominet on 2 January 2003. Nominet validated the complaint and notified the Respondent of the complaint on 8 January 2003 by (1) email to the Administrative Contact listed for the Domain Names in Nominet's database; (2) email to postmaster@asseenonqvc.co.uk and postmaster@justlikeqvc.co.uk (these both had permanent fatal errors); (3) letter to the Administrative Contact; and (4) letter to the Respondent to an address provided by the Administrative Contact in a telephone conversation with Nominet, following his receipt of the email addressed to him. The letter to the Respondent advised him that he had 15 working days to respond to the Complaint, that is, until 30 January 2003.
A response was received from the Respondent by email on 31 January 2003. On that date Nominet amended the due date for the receipt of a Response by one day to 31 January 2003 in light of the fact that the Response was received very close to the deadline. Nominet also intimated a copy of the Response to the Complainants' representatives on the same day, giving until 7 February 2003 for the Complainants to file a Reply if they so wished. On 5 February 2003 the Complainants' representative duly filed a Reply on their behalf. Nominet acknowledged the Reply, intimated the same to the Respondent, and initiated mediation procedure on 5 February 2003. Nominet generated mediation documents on 26 February 2003 indicating by letter to the Complainants and the Respondent that mediation had been unsuccessful and that provided the Complainants paid the appropriate fees by 12 March 2003, Nominet would refer the case to an independent expert for a decision. The Complainants duly paid the fees on 3 March 2003. On 3 March 2003 the Respondent sent a further email to Nominet requesting that this be placed before the expert. This email does not appear to have been forwarded to the Complainants' representatives for comment.
On 5 March 2003, Andrew Lothian, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality. Nominet duly appointed the Expert with effect from 10 March 2003.
2. Outstanding Formal/Procedural Issues:
Joint Complainants
There does not appear to be anything in the Policy or Procedure to preclude the bringing of a complaint by joint complainants, as here. Paragraph 3(a) of the Procedure states 'Any person or entity may submit a complaint...'. In the present case the joint complainants are (1) a holder of a trade mark portfolio having effect in the UK, and (2) an exclusive licensee of those trade marks trading in the UK - effectively a UK operating company. Both complainants have relevant rights and interests in the DRS proceeding and in the Expert's view it would be grossly inequitable to either refuse the complaint against one or both complainants merely because they seek to be joined in making it. The only uncertainty arising is that the Complainants have not specified which one of them should receive a transfer of the Domain Names, should that be the outcome of the decision. The Expert assumes that the Complainants would be content with a transfer to either of them. In a case such as this, where it is relatively clear that one complainant is the principal rights holder and the other the licensee, the Expert considers that any transfer should be made in favour of the principal rights holder. The Expert is fortified in this view by a consideration of the licensee's own domain name registration which is in fact held in the name of the principal rights holder. If the Expert's assumptions are incorrect, the complainants can simply effect a transfer between themselves after the decision is implemented.
Response not in time (Procedure, para 5(a))
The Response was received one day after the expiry of the permitted period. In terms of paragraph 12(a) of the Procedure, Nominet or the Expert may in exceptional cases extend any period of time in proceedings under the Dispute Resolution Service. In this case, Nominet decided to extend the period for receipt of the Response by one day and the Complainants took no objection to this. Consequently, the Response may be treated as having been received on time.
Response not in hard copy (Procedure, para 5(c))
The Response consisted of a single short email which was not followed up by a duly signed hard copy. Consequently, the Response does not comply with paragraph 5(c) of the Procedure. The Complainants have taken no objection to this and the Expert takes the view that where the Respondent has not received the benefit of legal advice, unlike the Complainants, it would be inequitable to apply the hard copy rule so as to disqualify the Response. Accordingly, the Expert will take the Response into account.
Response does not contain the statement required (Procedure, para 5(c)(v))
Of greater concern is the fact that the Response does not contain the declaration and signature required by paragraph 5(c)(v). The declaration relates to the truthfulness of the Response and its compliance with the Procedure. Paragraph 15(c) of the Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate." In the view of the Expert the absence of a declaration of truthfulness within the Response is of greater importance than the more procedural issue of the failure to supply it in hard copy. The Expert considers that an inference can be drawn which would tend to reduce the weight to be given to the contents of the Response, and it will therefore be viewed accordingly.
Further non-hard copy Response (Procedure, para 13)
In addition to the Response, the Expert must deal with the additional email which the Respondent submitted on 3 March. Paragraph 13 of the Procedure states that the Expert is not obliged to consider any statements or documents from the Parties which he or she has not received according to the Policy or Procedure. The Expert considers that the Respondent has had a sufficient opportunity within the framework of the Policy and Procedure to submit a comprehensive response and furthermore, the Respondent has been allowed to submit its principal Response a day later than the maximum period of time allowed. Accordingly, the Expert will disregard this additional email.
3. The Facts:
1. The Complainants, QVC Inc and QVC operate an internationally known home shopping service via television shopping channels, interactive television services and on the Internet via sites on the world wide web.
2. QVC Inc (a company incorporated in the State of Delaware, USA) is the proprietor, and QVC (an unlimited company registered and trading in the UK) the exclusive licensee, of the following registered trade marks having effect in the UK:
(a) Community Trade Mark "QVC", no. 176917 in classes 35 38 41 42, registered on 25 June 1999;
(b) Community Trade Mark "QVC", no. 1663038 in classes 01 02 03 04 05 06 07 08 09 10 11 12 14 15 16 17 18 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 36 37 39 40, registered on 4 December 2001;
(c) UK Trade Mark: "QVC", no. 1584688 in class 38, registered on 31 October 1994;
(d) UK Trade Mark "QVC", 2000873 in class 41, registered on 31 October 1994; and
(e) UK Trade Mark "QVC", 2233017 in class 35, registered on 17 May 2000.
3. QVC Inc has also made trade mark registrations for "QVC" internationally, covering 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 and Yemen.
4. QVC launched its service in the UK on 1 October 1993 and now reaches over 10 million homes via digital satellite, cable and terrestrial platforms. QVC's turnover in the UK in 2001 was approximately £170 million.
5. The Domain Names were both registered by the Respondent on 21 October 2000.
6. In June 2001, QVC Inc and its wholly owned subsidiary ER Marks Inc made a complaint in accordance with the Uniform Domain Name Dispute Resolution Policy before the World Intellectual Property Organization Arbitration And Mediation Center ("WIPO") in respect of the domain names "justlikeqvc.com", "just-like-qvc.com", "asseenonqvc.com" and "as-seen-on-qvc.com", each of which were also registered to the Respondent in this case. For the reasons given in the decision for that case (No. D2001-0774) dated August 20, 2001, the WIPO panel ordered that the relative domain names be transferred to QVC Inc.
4. The Parties’ Contentions:
Complainants:
1. The Complainants have rights in respect of a mark which is identical to or similar to the Domain Names.
2. The Domain Names, in the hands of the Respondent, are abusive registrations.
3. The Complainant QVC wrote to the Respondent on 2 December 2002 concerning the Domain Names. This letter was sent to the address provided by Nominet for the Respondent. On the same day, a copy of this letter was also sent to Sticky Dickys, Long Acre, Hinckley Rd, Wolvey, Leics, LE10 3HQ, an alternative address for the Respondent which the Complainants are aware of. In the letter, QVC set out its trade mark rights, the Domain Names and the current uses thereof, together with a request for transfer and an offer to pay the Respondent's reasonable out of pocket expenses in transferring the Domain Names. No reply was received to this letter.
4. By the time that the Respondent registered (1) the Domain Names and (2) the domain names ultimately transferred by the WIPO panel, the Complainants' "QVC" marks had achieved such distinction that no one would have selected them without having the intention to trade off the Complainants' rights. Given the use which the Respondent made of the Domain Names, the Respondent must have known of the existence of the Complainants, and of their rights in the mark QVC at the time it registered the Domain Names. The registration took unfair advantage of the Complainants' rights.
5. Alternatively the Respondent has registered the Domain Names as a blocking registration against a mark in which it must have had knowledge that the Complainants have rights.
6. Alternatively the Domain Names have been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainants' rights. Although the websites at the Domain Names are now inactive they, and the websites relative to the domain names transferred by the WIPO panel, were used for electronic in-home shopping. This use is detrimental to the Complainants' rights because use of the Domain Names creates the impression that the relative websites are in some way sponsored, affiliated, endorsed or associated with the Complainants.
7. Use of the Domain Names also takes unfair advantage of the Complainants' rights in the mark because it must be the intention of the Respondent to benefit from use of a domain name which incorporates a mark in which the Complainants have established rights. Internet users who type in the Domain Names are almost certainly looking for a site operated by the Complainants, rather than the Respondent. The Respondent is not known by the name nor is it legitimately connected with the mark QVC and the Complainants have neither licensed nor authorised the Respondent to use the mark.
8. The Respondent's registration of the Domain Names and the domain names transferred by the WIPO panel demonstrates that the Respondent is engaged in a pattern of making abusive registrations. Having regard to the above the Complainants submit that the domain names "asseenonqvc.co.uk" and "justlikeqvc.co.uk" in the hands of the Respondent are abusive registrations.
Respondent:
1. When the Respondent registered the Domain Names, it was not done with any intention to upset any person or organisation. It was the first or foundation stone of a super structure.
2. The Respondent did not register the Domain Names to extort money from the Complainants.
3. The Respondent intends to create an Internet shopping channel, modelled specifically on the Complainants'. The Respondent believes that the Complainants have a fabulous organisation and stand as an example. The products that the Respondent intends to sell are similar and in some cases will be the same as the Complainants'.
4. As far as the Respondent was concerned, their products could best be marketed as 'as seen on QVC' and 'Just like QVC'.
5. The Respondent has no intention of trying to mislead the public, and, if requested, would put a link button on its index which would lead any browser towards the Complainants' website if they so desire.
6. The Respondent will be watching the Complainants closely and sourcing products that appear on their TV and Web channel with a view to competing for the Respondent's market share, but has no intention to mislead the general public or the Complainants' suppliers.
7. The Respondent had registered the .com domain names of the same name as the Domain Names, but the Complainants in America wrote to the Respondent and the next thing the Respondent knew, the .com domain names had gone. This is how the Complainants can say they own the same addresses.
Complainants' Reply:
1. The Respondent's acceptance that it intends to create an Internet shopping channel modelled specifically on QVC, with similar or identical products, best marketed as 'as seen on QVC' and 'Just like QVC' is evidence that such use is detrimental to the Complainants' rights because it creates the impression of association, endorsement, sponsorship or affiliation by the Complainants.
2. Such use also takes unfair advantage of the Complainants' rights because it is expressly the Respondent's intention to take advantage of domain names incorporating a mark in which the Complainants have established rights.
3. The Complainants adopt the reasoning of the expert in Nokia Corporation v Just Phones Limited [DRS 0058] regarding the Respondent's offer to place a disclaimer on its websites. The Complainants submit that a disclaimer on a website would be inadequate to avoid liability for the evident misappropriation of their goodwill and reputation, misappropriation being in the use of the trade mark to attract traffic to a site which otherwise would likely have gone elsewhere.
4. The Complainants submit that the same principle applies to the use of a hypertext link to the Complainants' own websites from the Respondent's websites. By using such a link the Complainants submit that the Respondent would increase the likelihood of Internet users believing that the website is in some way sponsored, affiliated, endorsed or associated with the Complainants.
5. The Complainants reiterate that the Respondent registered the corresponding .com domain names.
6. The Complainants submit that a trade mark owner must have control over its rights in order to ensure that such marks are only used in the manner which the owner prescribes. a mark may be used detrimentally out of the hands of the owner and if seen by the public as being associated with, for example, a 'downmarket' enterprise, this will have a detrimental effect on the owner's brand image.
5. Discussion and Findings:
General
In terms of paragraph 2(b) of the Policy the primary onus is on the Complainants to prove to the Expert on balance of probabilities each of the two elements set out in paragraph 2(a) of the Policy, namely that:
(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Names; and
(ii) The Domain Name(s), in the hands of the Respondent, [are] Abusive Registrations.
Complainants' Rights
Do the Complainants have Rights in respect of a name or mark which is identical or similar to the Domain Names? The Expert discounts the first (.uk) and second (.co) levels of the Domain Names for the purposes of comparison, on the basis that these are wholly generic.
The definition of Rights under the Policy "includes but is not limited to, rights enforceable under English law" but excludes rights in a name or term which is wholly descriptive of the Complainants' business.
Under English Law rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark. The Complainants have provided detailed evidence for their rights in the mark "QVC" by virtue of the registered trade mark portfolio as narrated above. The Respondent does not seek to contradict that evidence. Accordingly, the only remaining question here is whether the name or mark QVC is identical or similar to 'asseenonqvc' and 'justlikeqvc'. Clearly it is not an identical match in either case. However, both include the name QVC as the central element of the domain name prefaced by a generic phrase, either 'as seen on' or 'just like' (bearing in mind the fact that it is not permitted to use spaces in Internet domain names). Indeed, the Respondent's submission confirms this construction ("modelled specifically on the Complainants") and thus makes it clear that it is the Complainants' mark that is being referred to. The Expert considers that most web surfers coming across the Domain Names would see these as the Respondent intended - comprising the Complainants' QVC mark at the end of a descriptive phrase specifically intended to qualify that mark. The distinctive component of the Domain Names is the mark, not the descriptive qualification.
Consequently, the Expert finds that the Complainants have Rights in respect of a mark which is similar to the Domain Names.
Abusive Registration
Are the Domain Names, in the hands of the Respondent, Abusive Registrations? Paragraph 1 of the Policy defines “Abusive Registration” as:-
“a Domain Name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”
The Policy provides a non-exhaustive list of factors which may be evidence that a domain name is an Abusive Registration in paragraph 3(a) of the Policy. These are:-
“i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;
ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
iii. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv. It is independently verified that the Respondent has given false contact details to us."
The Complainants' submissions do not indicate that the Respondent registered the Domain Names primarily (or otherwise) for the purposes of sale to the Complainants. There is no evidence before the Expert that would indicate that the Respondent had this primary purpose. For example, there is no indication that the Respondent has been refusing to transfer the Domain Names to the Complainants until a substantial sum of money has been paid. Rather, it seems that the Complainants and Respondent have had no dialogue.
There is no evidence that the Domain Names were registered as blocking registrations. Although the Domain Names in effect block registration of identical domain names by the Complainants this will always be the case in any dispute under the Policy. To make out a case under this point there must be evidence of some deliberate intent to block the Complainants at the time of registration. The Complainants merely state that the Respondent has registered the Domain Names as a blocking registration against a mark in which it must have had knowledge that the Complainants have rights. This submission does not provide any evidence that the Respondent's actual motivation was to block the Complainants. Indeed, the Respondent's evidence shows a motivation to model itself on the Complainants rather than to block them.
While there may be a certain amount of disruption suffered by any complainant making a complaint under the Policy, there is no evidence in this case that the Domain Names were registered primarily to unfairly disrupt the business of the Complainants - once again the clearly expressed intention of the Respondent is to operate its own business and not to disrupt that of the Complainants. However, the Expert considers that, even if such disruption was not the Respondent's primary purpose, it is extremely likely that the Respondent's proposed operations would result in unfair disruption to the Complainants' business.
There is no evidence of confusion arising from an existing use of the Domain Names. The Complainants submit that the websites at the Domain Names are now inactive, although they were originally used for electronic in-home shopping. The Respondent does not deny this. However, it is clear to the Expert given the extent of the Complainants' presence in the UK and the well-known nature of their QVC trade mark that any use of the Domain Names for the purpose of an interactive website selling consumer goods would have a very high potential to cause confusion even if none is presently being caused. Furthermore, the Expert believes that it would be difficult to conceive of a commercial use for the Domain Names that would not cause any confusion. While paragraph 3(a)(ii) of the Policy calls for a current use of the Domain Names (meaning in the Expert's view at the time of the submission of the complaint) it is important to note that the factors in paragraph 3 as a whole are non-exhaustive. The Expert considers that the Respondent's clearly expressed intention to use the Domain Names for a commercial purpose in circumstances where any conceivable commercial use would give rise to confusion constitutes evidence of Abusive Registration.
The Complainants submit, and the Respondent does not deny, that the Respondent registered the Domain Names as part of a pattern of abusive registrations. The other registrations forming the pattern are, in the Complainants' submission, those covered by the Uniform Domain Name Dispute Resolution Policy case relating to justlikeqvc.com, just-like-qvc.com, asseenonqvc.com and as-seen-on-qvc.com. These domain names are, with the addition of hyphens in two cases, and the substitution in all of the generic top level domain .com for the second level domain/UK country code .co.uk, identical to the Domain Names. The Expert is reluctant to see these additional domain names as 'a pattern of making Abusive Registrations' - they are to all intents and purposes identical to the Domain Names such that there is no real pattern. The Complainants' case on this point would have been altogether stronger had they provided evidence of registrations made by the Respondent directed against third parties.
Paragraph 4 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Names are not Abusive Registrations. These are:
“i Before being informed of the Complainant's dispute the Respondent has:
A. used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;
B. been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
C. made legitimate non-commercial or fair use of the Domain Name; or
ii. The Domain Name is generic or descriptive and the Respondent is making fair use of it.
The Respondent does not directly submit that it had made preparations to use the Domain Name before being informed of the Complainants' dispute. Given that the response shows that the Respondent is well aware of the existence of the Complainants and indeed registered the Domain Names with the Complainants' 'fabulous organisation' in mind, the Respondent must or should have been well aware at the point of registering the Domain Names that the Complainants would take issue with the registrations. Furthermore, the Respondent's plans as set out in the response have at their core the use of the Complainants' marks and the appropriation of their reputation and goodwill. Such use cannot be conceived of as a use in connection with a genuine offering of goods and services.
The Respondent does not claim to have been commonly known by the name or legitimately connected with any mark similar to the Domain Names. The Respondent has not made legitimate non-commercial or fair use of the Domain Names. The use proposed, and which has already taken place, is both commercial and unfair to the Complainants' Rights. Furthermore, the Respondent seems to confuse legitimate use of the Complainants' marks in a descriptive sense, that is, to describe the goods and services of the Complainants, with its own proposed use. Using a third party's mark to liken one's own goods or services to the goods and services of that third party does not constitute fair use or use of a mark in descriptive sense.
In addition to the non-exhaustive factors which may evidence Abusive Registration in paragraph 3 of the Policy the Expert may consider whether, having regard to the definition of an Abusive Registration, the registration is otherwise abusive. The Complainants argue that by the time the Respondent registered the Domain Names the Complainants' QVC marks had achieved such distinction that no one would have selected them without having the intention to trade off the Complainants' rights. Whether or not the reference to 'no one' is correct here, it is clear from the Respondent's own submissions that it undoubtedly selected the Domain Names with a view to trading off the Complainants' rights. By proposing to model itself on the Complainants and to use websites receivable via the Domain Names to sell similar or the same products as the Complainants, the Respondent has placed itself squarely in a position where it took unfair advantage of the Complainants' Rights at the time when the registrations took place. Equally, the Respondent's operation of an e-commerce site under 'asseenonqvc.co.uk' leaves the Expert in no doubt that this in itself constitutes use in a manner which took unfair advantage of the Complainants' Rights.
The Expert agrees with the Complainants that neither a disclaimer nor a hyperlink on the Respondent's websites would make the registrations any less abusive. The use of the Complainants' trade marks in domain names registered for, on the Respondent's submission, the express purpose of competing with the Complainants cannot be justified by this means. The Expert considers that the use of the Complainants' trade marks in the Domain Names gives rise to a high likelihood that the Respondent will capture or lure Internet traffic which it would not otherwise receive. The attitude of those arriving at the Respondent's site to any proposed disclaimer or hyperlink is not important to this question as by this point the damage is done - the Respondent plans to sell identical or similar goods 'as seen on QVC' and the Complainants would undoubtedly lose some trade no matter how prominent the disclaimer or link.
In the above circumstances, the Expert finds that the Domain Names are Abusive Registrations within the meaning of paragraph 1 of the Policy on the grounds that, at the time the registrations took place, the Domain Names were registered in a manner which took unfair advantage of the Complainants' Rights.
6. Decision:
In light of the foregoing findings, namely that the Complainants have proved on balance of probabilities that they have Rights in respect of a mark which is similar to the Domain Names and that the Domain Names, in the hands of the Respondent, are Abusive Registrations, the Expert orders that the Domain Names be transferred to the first Complainant, QVC Inc.
Andrew D S Lothian
Date: 21 March 2003