Hungry Machine, Inc. v. Jing Ren
Claim Number: FA1106001395592
Complainant is Hungry Machine, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Jing Ren (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwlivingsocial.com> and <livingscial.com>, registered with GUANGZHOU MING YANG INFORMATION TECHNOLOGY CO., LTD.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2011. The National Arbitration Forum received payment on July 6, 2011. The Complaint was submitted in both Chinese and English.
On June 28, 2011, GUANGZHOU MING YANG INFORMATION TECHNOLOGY CO., LTD confirmed by e-mail to the National Arbitration Forum that the <wwwlivingsocial.com> and <livingscial.com> domain names are registered with GUANGZHOU MING YANG INFORMATION TECHNOLOGY CO., LTD and that Respondent is the current registrant of the names. GUANGZHOU MING YANG INFORMATION TECHNOLOGY CO., LTD has verified that Respondent is bound by the GUANGZHOU MING YANG INFORMATION TECHNOLOGY CO., LTD 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 11, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 1, 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@wwwlivingsocial.com, postmaster@livingscial.com. Also on July 11, 2011, the Chinese language 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 August 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwlivingsocial.com> and <livingscial.com> domain names are confusingly similar to Complainant’s LIVINGSOCIAL mark.
2. Respondent does not have any rights or legitimate interests in the <wwwlivingsocial.com> and <livingscial.com> domain names.
3. Respondent registered and used the <wwwlivingsocial.com> and <livingscial.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hungry Machine, Inc., is a large web-based provider of discounts and coupons related to a variety of retail goods and services. Complainant owns multiple federal trademark registrations for the LIVINGSOCIAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,668,455 registered August 18, 2009), as well as, the Office for Harmonization of the Internal Market (“OHIM”) (e.g., Reg. No. 9,082,141 registered November 19, 2010). Complainant uses the mark as its domain name. through which it operates its business.
Respondent, Jing Ren, registered the disputed domain names on March 12, 2010. The disputed domain names resolve to a website that offers links to Complainant’s competitors in the online coupon and discount market.
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 and is being used in bad faith.
Complainant contends that it has established its rights in the LIVINGSOCIAL mark by registering that mark with federal trademark authorities, both the USPTO (e.g., Reg. No. 3,668,455 registered August 18, 2009) and OHIM (e.g., Reg. No. 9,082,141 registered November 19, 2010). Previous panels have determined that registering a mark with federal trademark authority gives the registrant defendable rights in the mark registered. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel finds that even though Complainant has not registered the LIVINGSOCIAL mark in Resident’s country of residence, it has established its rights in the mark under Policy ¶ 4(a)(i). 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).
Complainant also contends that Respondent’s disputed domain name are confusingly similar to its LIVINGSOCIAL mark. Both of Respondent’s disputed domain names are what the Panel finds to be examples of typosquatting. In both disputed domain names, Respondent has merely omitted a letter, as in the <livingscial.com> domain name, or necessary punctuation for the domain itself, as in the <wwwlivingsocial.com> domain name. In neither instance, does the Panel find the changes made to Complainant’s mark sufficient to mitigate a finding of confusing similarity under Policy ¶ 4(a)(i), which also includes the addition of the generic top-level domain (“gTLD”) “.com.” See Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also 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 finds that Complainant has established Policy ¶ 4(a)(i).
Complainant has made what the Panel finds to be a prima facie case, showing Respondent’s apparent lack of rights or legitimate interests in the disputed domain names. Because of that showing, Respondent now bears the burden of proving that it has rights or legitimate interests in the disputed domain names. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). However, Respondent has failed to file any Response in this matter, let alone rebut Complainant’s prima facie case, which allows the Panel to assume Respondent lacks all rights or legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will still examine the entire record before making such a determination regarding Respondent’s rights or legitimate interests in the disputed domain name in accordance with the factors enumerated in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain names. Respondent has offered no evidence to contradict Complainant’s assertion. The WHOIS information also bears against Respondent in that the registrant of the disputed domain names is identified as “Jing Ren,” which the Panel finds does not suggest a relationship between Respondent and the disputed domain name other than owner. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also asserts that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain names. Respondent’s disputed domain names resolve to a site offering links to third parties, many of which are Complainant’s competitors. Prior panels have determined that this use does not satisfy Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor is it making a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s disputed domain names disrupt its business constituting bad faith registration and use. Internet users seeking out Complainant online may arrive at Respondent’s website, using the disputed domain names, and then click-through to Complainant’s competitors. At that point, they may purchase goods from one of those competitors instead of Complainant. The Panel finds that this usage disrupts Complainant’s business, providing affirmative evidence of Respondent’s bad faith registration and use under 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)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also argues that Respondent is using the disputed domain names for its own commercial gain constituting bad faith registration and use. Respondent’s disputed domain names resolve to a directory site offering links to third-parties, most of which are Complainant’s competitors. In this instance, Internet users are diverted to these linked sites and each time they “click-through” Respondent collects a fee. The Panel finds that this use constitutes bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent is attempting to gain commercially from the operation of the confusingly similar domain names. See 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 the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwlivingsocial.com> and <livingscial.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 8, 2011
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