Hungry Machine, Inc. v. N/A / feng zhou
Claim Number: FA1106001394258
Complainant is Hungry Machine, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is N/A / feng zhou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <livingsocia.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2011; the National Arbitration Forum received payment on June 27, 2011.
On June 21, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <livingsocia.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@livingsocia.com. Also on June 28, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <livingsocia.com> domain name is confusingly similar to Complainant’s LIVINGSOCIAL mark.
2. Respondent does not have any rights or legitimate interests in the <livingsocia.com> domain name.
3. Respondent registered and used the <livingsocia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hungry Machine, Inc., advertises, markets, and sells discounted goods and services through direct mail, e-mail, and online channels. Complainant is also the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its LIVINGSOCIAL mark (Reg. No. 3,668,455 registered August 18, 2009).
Respondent, N/A / feng zhou, registered the <livingsocia.com> domain name on March 11, 2010. The disputed domain name resolves to a website providing a listing of hyperlinks, some of which lead to Complainant’s websites and some of which lead to the websites of Complainant’s competitors.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Complainant holds a trademark registration for its LIVINGSOCIAL mark with the USPTO (Reg. No. 3,668,455 issued August 18, 2009). Generally, registration of a mark with a federal trademark authority is enough to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Here, the Panel finds that Complainant’s registration of its LIVINGSOCIAL mark with the USPTO is sufficient to establish rights in the mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). The fact that Respondent operates in a different country than Complainant and Complainant’s trademark registration is irrelevant to Policy ¶ 4(a)(i) analysis. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant has established rights in its LIVINGSOCIAL mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <livingsocia.com> domain name is confusingly similar to its LIVINGSOCIAL mark. Outside of adding a generic top-level domain (“gTLD”), which is not relevant to Policy ¶ 4(a)(i) analysis, according to the panel in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the only change that Respondent has made to Complainant’s mark is the omission of the final letter “l” from the mark. Past panels have held that common misspellings such as this do not constitute unique marks, but rather represent a domain name which is confusingly similar to Complainant’s mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark). The Panel concludes that Respondent’s <livingsocia.com> domain name is confusingly similar to Complainant’s LIVINGSOCIAL mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Rights or Legitimate Interests
Complainant alleges that Respondent lacks rights and legitimate interests in the <livingsocia.com> domain name. Initially, Complainant carries the burden of making a prima facie case to support its claim. Once this has been done, as is the case here, the burden then shifts to Respondent to refute Complainant’s claims. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Previous panels have tended to construe Respondent’s failure to respond to the Complaint as strong evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). For the sake of fairness, however, the Panel will still examine the record to determine if such rights or legitimate interests exist for the purposes of Policy ¶ 4(a)(ii).
Complainant also contends that Respondent is not commonly known by the <livingsocia.com> domain name under Policy ¶ 4(c)(ii). The relevant WHOIS information for the disputed domain name identifies Respondent as “N/A / feng zhou,” which bears no resemblance to the disputed domain name. Furthermore, because Respondent has failed to produce a Response, there is nothing in the record that would suggest that Respondent had obtained a license, or any other type of authorization, to use Complainant’s mark. Absent even a scintilla of evidence to the contrary, the Panel must conclude that Respondent is not commonly known by the <livingsocia.com> domain name under Policy ¶ 4(a)(i). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The first indication that Respondent’s registration and use of the disputed domain name were in bad faith is Respondent’s offer to sell the disputed domain name to Complainant. According to the unrefuted Complaint, someone acting on behalf of Respondent and sharing Respondent’s address, replied to Complainant’s February 28, 2011 cease-and-desist e-mail, offering to sell the <livingsocia.com> domain for $6,000. After considering previous panels’ holdings on the issue, the Panel holds that evidence of such an offer constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(i) . See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Furthermore, previous panels have found that a respondent’s use of a disputed domain name to direct visitors to website featuring links to a complainant’s competitors as well as links to a complainant’s own products, as is the case here, to be per se evidence of bad faith registration and use for the purposes of Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). Such use of the disputed domain name constitutes a disruption of Complainant’s business, because Internet users intending to visit Complainant’s website in order to patronize its products and services may mistakenly visit Respondent’s confusingly similar domain name and patronize the services of Complainant’s competitors. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). The Panel finds Respondent’s registration and use of the disputed domain name to constitute bad faith disruption as envisioned by Policy ¶ 4(b)(iii).
Finally, Respondent’s use of the disputed domain name represents bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Respondent purposefully uses a confusingly similar domain name in order to draw Internet users to its site and to create confusion as to whether the products and services that can be accessed through its site are provided or endorsed by Complainant. This confusion likely draws more visitors to Respondent’s site, presumably creating more revenue for Respondent as it collects click-through fees from the links on its webpage. The Panel holds that creating such confusion in order to realize a personal commercial gain constitutes bad faith under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <livingsocia.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 5, 2011
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