Hungry Machine, Inc. v. feng zhou
Claim Number: FA1106001395220
Complainant is Hungry Machine, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is feng zhou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <livinsocial.com> and <livngsocial.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2011; the National Arbitration Forum received payment on June 30, 2011.
On June 23, 2011, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <livinsocial.com> and <livngsocial.com> domain names are registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names. 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 July 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@livinsocial.com and postmaster@livngsocial.com. Also on July 5, 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 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns the LIVINGSOCIAL service mark and uses the mark in connection with its marketing of online discounts for a wide variety of local and national products and services.
Complainant holds registrations for its LIVINGSOCIAL service mark on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 3,668,455, registered August 18, 2009; filed July 14, 2008).
Respondent registered the <livinsocial.com> domain name on April 3, 2009 and the <livngsocial.com> domain name on March 13, 2010.
The disputed domain names resolve to directory websites which contain links to Complainant’s official site and to third-party sites, including some that directly compete with Complainant’s business in online discounts and coupon offers.
Respondent’s <livinsocial.com> and <livngsocial.com> domain names are confusingly similar to Complainant’s LIVINGSOCIAL mark.
Respondent is not commonly known by either the <livinsocial.com> or the <livngsocial.com> domain names.
Respondent does not operate a business or other organization under the LIVING SOCIAL mark or either of the disputed domain names.
Respondent does not have any rights to or legitimate interests in the domain names <livinsocial.com> and <livngsocial.com>.
Respondent registered and uses the <livinsocial.com> and <livngsocial.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the LIVINGSOCIAL service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. 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).
See also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its national trademark registrations).
So long as a complainant has registered its mark within some jurisdiction, it is unnecessary to register the mark in the country where respondent resides or does business. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence).
Under Policy ¶ 4(a)(i), Complainant’s rights in its LIVINGSOCIAL service mark run from the filing date of its application for registration of the mark with the USPTO, July 14, 2008. Because that date predates the registration of both of Respondent’s domain names, Complainant’s rights in its mark are senior to any rights Respondent might have in either of its domain names. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of a complainant’s trademark rights date from the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003):
As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.
Respondent’s <livinsocial.com> and <livngsocial.com> domain names are confusingly similar to Complainant’s LIVINGSOCIAL service mark. The disputed domain names are comprised of Complainant’s entire mark and only differ by the deletion of a single letter and the addition of a generic top-level domain (“gTLD”) “.com.” These alterations of the mark in forming the contested domain names does not adequately distinguish the disputed domain names from the mark for purposes of Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark was confusingly similar to the mark).
Similarly, the addition of a gTLD to the mark of another does not remove the resulting domain name from the realm of confusing similarity. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
The Panel therefore concludes that Respondent’s domain names are confusingly similar to Complainant’s LIVINGSOCIAL service mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights to and legitimate interests in the disputed domain names. Once Complainant has made out a prima facie showing on this point, the burden shifts to Respondent to demonstrate that it has such rights or interests. See F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007):
Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.
Complainant has presented a prima facie case supporting its claims under this head of the Policy. Therefore, and given Respondent’s failure to respond to the allegations of the Complaint filed in this proceeding, we may presume that Respondent has no rights to or legitimate interests in the contested domain names. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate its rights to or legitimate interests in a domain name).
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the <livinsocial.com> and <livngsocial.com> domain names, and that Respondent does not operate a business or other organization under the LIVING SOCIAL mark or either of the disputed domain names. Moreover, the pertinent WHOIS information identifies the domain name registrants only as “feng zhou,” which is not similar to the disputed domain names. On this record, we are compelled to conclude that Respondent is not commonly known by either of the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in them pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that that respondent was commonly known by the domain names there in dispute).
We next note that Complainant alleges, without objection from Respondent, that the disputed domain names resolve to directory websites which feature links offered to reroute Internet users to third-party websites related to and in competition with Complainant’s business of online sales of discounted goods and services. In the circumstances here presented, we may comfortably presume that Respondent collects click-through fees from the visits of Internet users to the websites resolving from these links. Respondent’s use of the contested domain names in this manner is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domains under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a contested domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself profiting commercially from the click-through fees); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses domain names confusingly similar to Complainant’s LIVING SOCIAL service mark to host directory websites featuring various third-party links, some competing with Complainant’s business. Internet users may therefore find Respondent’s website and become confused as to the possibility of Complainant’s sponsorship of, or affiliation with, the disputed domain names and related third-party links. Respondent presumably receives click-through fees from the visits of Internet users to the websites resolving from these links. Respondent thus attempts to gain commercially from the confusion by collecting click-through fees. Respondent’s registration and use of the <livinsocial.com> and <livngsocial.com> domain names in this manner constitutes bad faith registration and use of the domain names pursuant to Policy ¶ 4(b)(iv). See, for example, 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).
See also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iv) by using them to operate a search engine with links to websites featuring the products of a complainant and to those of that complainant’s commercial competitors).
For this reason, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <livinsocial.com> and <livngsocial.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 3, 2011
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