QVC Inc & Anor v Davis (t/a M Davis) [2004] DRS 02039 (09 December 2004)

Nominet UK Dispute Resolution Service
DRS 02039
QVC, Inc and QVC –v– Maggie Davis (t/a M Davis)
Decision of Independent Expert
1	Parties
Complainant:
QVC, Inc and QVC
Studio Park
West Chester
19380, PA
United States of America
Respondent:
Maggie Davis
(trading as M Davis)
26 Vespasian Way
Ashford
Kent
TN23 3QX
2	Domain Name
QVCUK.CO.UK
3	Procedural Background
A Complaint in respect of qvcuk.co.uk (the “Domain Name”) under Nominet UK's Dispute Resolution Service Policy (the “Policy”) was filed on 27 September 2004 and received from the Complainant in full on 29 September 2004.  Nominet forwarded the Complaint to the Respondent on 4 October 2004.  A response was received on 25 October 2004 and a reply from the Complainant on 1 November 2004.  Mediation did not prove successful and on 10 November 2004 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”).  The applicable fees were received from the Complainant on 17 November 2004.  I was appointed as Independent Expert as of 24 November 2004 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.  
4	Formal/procedural issues 
The Complaint was filed on 27 September 2004 and Version 1 of the Policy and Procedure therefore applies.  
Version 1 of the Policy and Procedure made no provision for the filing of joint complaints by more than one complainant.  In view of the uncertainty as to whether multiple complainants were permitted, Versions 2 of the Policy and Procedure that were adopted by Nominet and apply to all complaints filed with Nominet after 24 October 2004 allow more than one person to make a joint complaint subject to certain requirements laid down by paragraph 3b of the new Procedure.  In this case, the Complainants are both represented by a single representative, US law firm Connolly Bove Lodge & Hutz LLP, who signed the Complaint on their behalf and the Complaint specifies that in the event that it is successful the Domain Name should be transferred to QVC, Inc.  All the formal requirements under Version 2 of the Policy and Procedure would therefore have been met.
It appears from the Complaint that QVC, Inc is the registered proprietor of a number of trade marks on which the Complainants rely and that QVC is the UK affiliate company carrying on business under the QVC mark in the UK.  In the circumstances, I find that it would be inequitable to refuse to allow the Complaint to proceed at all or to allow it to proceed with only one of the Complainants.  They both have proper rights and interests in making the Complaint and I cannot see that the Respondent could possibly suffer any prejudice in the Complaint being allowed to continue in the joint names of the Complainants as is now expressly permitted under Version 2 of the Policy and Procedure.
The response from the Respondent was in the form of a short letter sent by email and by post and, in particular, failed to conclude with the required statement provided for by paragraph 5c(v) of the Procedure that:
	“The information contained in this response is to the best of the Respondent’s knowledge true and complete and the matters stated in this response comply with the Procedure and applicable law”.
Paragraph 15c of the Procedure provides that if, in the absence of exceptional circumstances, a Party fails to comply with any provision of the Policy or Procedure then the Expert will draw such inferences from the Party’s non compliance as he considers appropriate.  I find that there are no exceptional circumstances justifying the failure by the Respondent to comply with the Procedure in this case.
5	The Facts
The Complainants are QVC, Inc and its UK affiliate company QVC.  They provide electronic retail services for in-home shopping through television shopping channels and Internet web sites.  They also sell through various retail outlets and by catalogue.
According to the Nominet WhoIs database, the Respondent is an individual who has elected to have their address omitted from the database.  She wrote to Nominet on notepaper headed “m davis  You’ll get on with us!” stating that the Domain Name was registered on behalf of a customer.  On 4 October 2004, the Domain Name resolved to a web site at www.kentdirect.co.uk.
The Parties’ Contentions
Complainant
(a)	QVC, Inc is the registered proprietor of three UK trade marks and three Community Trade Marks all having effect in the UK in respect of the mark QVC in numerous classes, registered as of dates from February 1996.
(b)	QVC, Inc is also the registered proprietor of numerous trade marks in respect of the mark QVC in most other countries including Argentina, Australia, Brazil, Canada, China, Indonesia, Israel, Japan, Saudi Arabia, Turkey and Yemen.
(c)	A wholly owned subsidiary of QVC, Inc - ER Marks, Inc - is the registered proprietor of numerous further trade marks in respect of the mark QVC and other marks including QVC.
(d)	QVC, Inc began providing electronic retail services for in-home shopping in connection with its QVC mark in 1986 and has continued to do so, without interruption, to the present date.  During that time, QVC, Inc’s business has expanded dramatically and its net revenue has increased from $858 million in 1990 to a global business with net revenue in 2003 of $4,889 million.
(e)	In-home shopping under the QVC mark now reaches over 130 million homes worldwide.  In the UK, QVC began television sales in October 1993 and its net sales for 2002 were $297 million.  It reaches 11.6 million UK homes and it is on-air live 17 hours each day.  In 2002 it shipped almost 8.3 million packages and answered over 14.7 million telephone calls.
(f)	QVC, Inc launched its website at www.qvc.com in Autumn 1996 and QVC has sold on the internet through the www.qvcuk.com website since 1997.
(g)	The Domain Name was registered by the Complainant on 24 October 2003.  On 25 August 2004, an individual calling himself “Philip” sent an email to the Managing Director of QVC, purportedly on behalf of the owner of the Domain Name.  Philip stated that the qvcuk.co.uk website was receiving traffic and emails probably intended for QVC.  He offered to sell or lease the Domain Name to QVC.
(h)	On 30 August 2004, the attorney for the Complainants wrote to Philip and to the Respondent describing the Complainants’ worldwide and UK rights in the QVC mark and how the registration of the Domain Name infringed those rights.  The Complainants requested transfer of the Domain Name and offered to reimburse the Respondent’s expenses in registering the Domain Name.
(i)	In a crude response on 31 August, Philip confirmed that the public was confused by the qvcuk.co.uk website and was contacting it while attempting to contact the Complainants’ website.  He refused to transfer the Domain Name for the reimbursement offered by the Complainants, describing the offer as “taking the piss”.  He suggested instead a “reasonable offer” which would not “insult our intelligence”.
(j)	The Domain Name resolves to a website at www.kentdirect.co.uk also registered by the Respondent that is associated with an active web page which offers businesses such as hotels, restaurants, pubs, estate agents and the like the opportunity to advertise on the site for a set fee.
(k)	The Respondent did not register the Domain Name until late 2003 which was 17 years after the Complainants began registering and using the QVC mark, more than 10 years after QVC UK began using QVC in the UK and six years after the domain name qvcuk.com was registered by the Complainants.  There can be no doubt that the Respondent was aware of the famous QVC mark when she registered the Domain Name.
(l)	The Respondent has no licence from the Complainants or from any affiliate of the Complainants.
(m)	The Doman Name is confusingly similar to the QVC marks.  It includes all of the QVC mark and adds only the generic term uk.co.uk to QVC.  As has been held by both Nominet experts and WIPO panellists (determining disputes under the ICANN UDRP), the addition of a generic term to the Complainants’ mark is legally insufficient to avoid confusing similarity.
(n)	The Domain Name is an Abusive Registration because:
(i)	Where a Respondent cannot use a domain name without violating the Complainant’s rights, as is the case here, the registration is an Abusive Registration even if the Respondent has done nothing but register the Domain Name (Harrods Ltd v DJV Associates DRS 1758);
(ii)	The Respondent has gone further in that the facts and documents relied on indicate that the Respondent’s primary purpose was to sell the Domain Name to the Complainants for a price in excess of what it paid to register the domain.  The Respondent first contacted QVC offering to sell the Domain Name, refused the Complainants’ offer of registration costs and sought an offer that would not “insult our intelligence”.
(iii)	The Respondent’s own admissions show that the public has confused the Domain Name with the Complainants and that the Respondent has therefore used the Domain Name in a way that has confused people or businesses into believing that the Domain Name is associated with the Complainants.  This unfairly disrupts the business of the Complainants.
(iv)	Even if the user does not associate the www.kentdirect.co.uk website with QVC, the Respondent has generated business traffic to its website by creating initial interest confusion using a domain name that infringes the famous QVC marks.
(v)	There is no indication that the Respondent ever legitimately used or was known by QVC prior to Complainants’ use of that mark.  The Respondent’s use of the Domain Name constitutes an attempt to profit by taking unfair advantage of the goodwill established by the Complainants’ famous marks or to extract unjust payment from the Complainants.
In support of the Complaint, the Complainants provided a number of documents including evidence of its business, the various trade mark registrations and correspondence.  
Respondent
The Respondent did not submit a formal response to the Complaint but instead wrote to Nominet in answer to it stating that:
(a)	the Domain Name was registered in good faith on behalf of a customer who simply wanted it for their own use regarding a small concern thery were setting up under the name QV Consulting (UK);
(b)	the Domain Name was freely available to register and neither the Respondent nor her customer had ever heard of QVC;
(c)	the customer would like to reach an amicable agreement with QVC and had even offered to put a link to QVC’s own website from the front page when they set up their own site.
Reply
In their reply to the Response, the Complainants pointed out that there was no evidence of QV Consulting (UK) being established or as to who the proprietors of any such entity might be.  They also produced an email from a Ray Vaney dated 20 October 2004 to the attorney for the Complainants referring to the Complaint, claiming to be the owner of the Domain Name and offering to sell it for £600.
6	Discussion and Findings
The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities that:
i	the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii	the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights
“Rights” are defined in the Policy and in the Procedure.  Rights “includes, but is not limited to, rights enforceable under English law.”  The Respondent does not dispute that the Complainant is the registered proprietor of numerous trade marks in respect of QVC, a number of which are registered in or have effect in the UK.  The Complainants have carried on a very substantial business under the QVC mark and have done so in the UK for 11 years.  
I consider that when assessing the similarity between the name in which the Complainants have rights and the Domain Name it is appropriate to ignore the domain name suffix “.co.uk” and the descriptive and non-distinctive generic “uk” addition to QVC.
Accordingly, I find that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.  
Abusive Registration
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.
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy.  These include:
3ai  Circumstances indicating that the Respondent has registered …the Domain Name:
A.  primarily for the purposes of selling, renting or otherwise transferring the Domain Name to 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; and
3aii  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.
As it appears from the Complainants’ submissions, the action that provoked the making of this Complaint was an email from Philip writing on behalf of the owner of the Domain Name informing QVC that it was receiving traffic to the site and emails that were probably intended for QVC.  Philip gave as a contact email address “kd@ashford.co.uk”.  The Respondent’s email address appears from her response to be “md@ashford.co.uk” and I therefore infer that Philip was associated with the Respondent.  Philip’s email went on to offer to sell or lease the Domain Name to QVC.
When QVC’s attorneys responded setting out QVC’s rights in the name QVC, asserting that the registration and use of the Domain Name infringed QVC’s rights and offering to reimburse registration costs in return for a transfer of the Domain Name this provoked a crude reply from Philip indicating that this offer was an insult to their intelligence.
The Respondent has chosen not to make a formal response to the Complaint or to verify it.  In her informal response, the Respondent did not attempt to address any of the indicative factors set out in the Policy that may demonstrate that the Domain Name is not an Abusive Registration.  She did not dispute any of the submissions made by the Complainants save only to assert that the Domain Name was registered in good faith on behalf of a customer who wanted it for their own use.
There is no suggestion, however, that the Respondent has been commonly known by a name identical or similar to the Domain Name and she did not identify her customer who was allegedly proposing to set up a small concern called QV Consulting (UK).  She did not put forward any evidence that she or her customer had used or made any demonstrable preparations to use the Domain Name in connection with a genuine offering of goods or services whether under the name QV Consulting (UK) or otherwise.  The Respondent also failed to give any explanation for the Domain Name resolving to her website at www.kentdirect.co.uk.
In my view, the initial approach to QVC on behalf of the Respondent offering to sell the Domain Name, the crude insistence that the Complainants’ offer to reimburse registration costs in return for the transfer was insulting, the admission on behalf of the Respondent that they were receiving internet traffic and emails probably intended for the Complainants and the Respondent’s failure to put forward any convincing explanation as to a legitimate reason for registering the Domain Name all point to an Abusive Registration.
In all the circumstances, I consider that the Domain Name was registered and has been used by the Respondent in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights in the name QVC and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.
7	Decision
Accordingly, I find that the Complainants have Rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.  I therefore determine that the Domain Name be transferred to the Complainant QVC, Inc.

……………………………….
Ian Lowe
9 December 2004