national arbitration forum

 

DECISION

 

LivingSocial, Inc. v. chris jensen

Claim Number: FA1208001456244

 

PARTIES

Complainant is LivingSocial, Inc. (“Complainant”), represented by James Davis of Arent Fox, LLP, Washington, D.C., USA.  Respondent is chris jensen (“Respondent”), represented by David A. Plumley of Christie Parker & Hale LLP, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <livingsocal.com>, registered with Wild West Domains, Inc.

 

PANEL

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.

 

Hon. Nelson A Diaz (ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2012; the National Arbitration Forum received payment on August 6, 2012.

 

On August 3, 2012, Wild West Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <livingsocal.com> domain name is registered with Wild West Domains, Inc and that Respondent is the current registrant of the name.  Wild West Domains, Inc has verified that Respondent is bound by the Wild West Domains, Inc 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 August 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2012 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@livingsocal.com.  Also on August 6, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

 

A timely Response was received and determined to be complete on August 24, 2012.

 

On August 28, 2012 Additional Submission of Complainant and on September 4, 2012 and additional Submission of Respondent complying with Rule 7 as timely and appropriate.

 

On August 28, 2012 , pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A Diaz 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant owns the LIVINGSOCIAL mark and uses the mark in connection with advertising, marketing, and selling discounts for products and services online.  See Complainant’s Exhibit D.

 

Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the LIVINGSOCIAL mark (e.g., Reg. No. 3,668,455 filed July 14, 2008; registered August 18, 2009).  See Complainant’s Exhibit E.

 

Respondent’s <livingsocal.com> domain name is confusingly similar to Complainant’s LIVINGSOCIAL mark because the domain name is a minor misspelling of Complainant’s mark.

 

Respondent is not commonly known by the <livingsocal.com> domain name.

 

Respondent uses the <livingsocal.com> domain name to resolve to a pay-per-click website that features hyperlinks to third-party websites that provide services similar to those that Complainant provides.  See Complainant’s Exhibit F.

 

Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the <livingsocal.com> domain name.

 

Respondent had actual and constructive notice of Complainant’s rights in the mark due to Complainant’s extensive trademark registrations and Respondent’s use of the <livingsocal.com> domain name.

 

Respondent is ultimately responsible for the content of the resolving website.

 

B. Respondent

The trademark registrations provided by Complainant for the LIVINGSOCIAL mark list “Hungary Machine, Inc.” as the owner of the mark and not Complainant, LivingSocial, Inc.  Therefore, Complainant did not establish that it owns rights in the mark under Policy ¶ 4(a)(i).

 

Respondent uses the <livingsocal.com>  domain name to host a website describing the real estate market in Southern California and providing information regarding Respondent’s real estate practice.

The <livingsocal.com> domain name resolves to two different websites depending on how the Internet users access the website:

 

1.    If the Internet user types in “www.livingsocal.com,” Respondent’s real estate website will come up.

2.    If the Internet user types in “livingsocal.com,” the parking page comes up.

 

Respondent did not know that this was possible, did not have any control over the content of the parked page, and did not receive any commercial benefit.

 

The disputed domain name is made up of descriptive terms: “living” and “SoCal,” which is an abbreviation for “Southern California.”

Respondent did not register or use the <livingsocal.com> domain name in bad faith because it makes a legitimate use of the domain name in connection with Respondent’s real estate business.

 

The <livingsocal.com> domain name contains common and descriptive terms, which should prevent the Panel from finding any intent to create confusion about Complainant’s association with the disputed domain name.

 

C. Additional Submissions

           Complainant LivingSocial, Inc. (“LivingSocial”) submits a Reply Brief

Alleging Exclusive Rights To the Name and Mark, while Respondent argues reverse domain hijacking and that Complainant improperly attempts to expand its rights from the original complaint.

  

FINDINGS

The Complainant failed to establish the elements for Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) as required by the ICANN rules. 

 

DISCUSSION

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant claims that it owns the LIVINGSOCIAL mark and uses the mark in connection with advertising, marketing, and selling discounts for products and services online.  Complainant argues that it owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the LIVINGSOCIAL mark (e.g., Reg. No. 3,668,455 filed July 14, 2008; registered August 18, 2009).  The Panel notes that the owner of the USPTO trademark registrations is listed as “Hungary Machine, Inc.” and not Complainant, LivingSocial, Inc.  The Panel concludes that Complainant owns rights in the LIVINGSOCIAL mark pursuant to Policy ¶ 4(a)(i), dating back to the filing date of July 14, 2008.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).

 

Complainant contends that Respondent’s <livingsocal.com> domain name is confusingly similar to Complainant’s LIVINGSOCIAL mark.  Complainant argues that the disputed domain name contains a minor misspelling of Complainant’s mark, which the Panel notes is the removal of the letter “i.”  The Panel further notes that the disputed domain name also contains the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the removal of a letter and the addition of a gTLD both fail to sufficiently distinguish the disputed domain name from Complainant’s mark.  See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).  Therefore, the Panel holds that Respondent’s <livingsocal.com> domain name is confusingly similar to Complainant’s LIVINGSOCIAL mark under Policy ¶ 4(a)(i).

 

While Respondent argues that its registration of the <livingsocal.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007).

 

Rights or Legitimate Interests

 

The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

 

According to Respondent, he uses the <livingsocal.com>  domain name to host a website for the purpose of providing information about the real estate market in Southern California and Respondent’s real estate practice.  Respondent argues that this is a legitimate use of the <livingsocal.com> domain name that constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i).  The Panel agrees with Respondent and finds accordingly.  See Brasserie Alamaza S.A.L. v. Orbyt, D2004-0799 (WIPO Jan. 13, 2005) (finding that the respondent’s use of a disputed domain name was bona fide under Policy ¶ 4(c)(i) where the website only displayed links to jewelry products and the complainant used its mark to sell beverage products, including beer)

 

Respondent also claims that the <livingsocal.com> domain name resolves to two different websites depending on how the Internet users access the website.  According to Respondent, if the Internet user types in “www.livingsocal.com,” Respondent’s real estate website will come up, but if the Internet user types in “livingsocal.com,” the parking page comes up.  Respondent asserts that it did not know that this was possible, did not have any control over the content of the parked page, and did not receive any commercial benefit.  Thus, the Panel finds that Respondent is not responsible for the pay-per-click website and that this website is not evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).  See Elec. Arts. Inc. v. Abstract Holdings Int’l LTD, FA 1415905 (Nat. Arb. Forum Jan. 4, 2012) (concluding that the respondent established rights and legitimate interests in the disputed domain name when the respondent did not intend to host competing hyperlinks and quickly removed them once it was notified).

 

Respondent also argues that the disputed domain name is made up of descriptive terms: “living” and “SoCal,” which is an abbreviation for “Southern California.”  Respondent alleges that Complainant does not have an exclusive monopoly on the terms on the Internet.  The Panel agrees with Respondent, the Panel finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

             

Registration and Use in Bad Faith

 

The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

 

The Panel concludes that Respondent has rights or legitimate interests in the <livingsocal.com> domain name pursuant to Policy ¶ 4(a)(ii); the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007).

 

The Panel further finds that Respondent has not registered or used the <livingsocal.com> domain name in bad faith since the Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

 

Respondent alleges that it did not register or use the <livingsocal.com> domain name in bad faith because Respondent makes a legitimate use of the domain name in connection with Respondent’s real estate business.  Respondent alleges that it provides real estate services in the Southern California area and that Respondent uses the disputed domain name to provide information regarding the real estate services in this area.  The Panel determines that Respondent registered and uses the <livingsocal.com> domain name for a legitimate use without the intent to create confusion, the Panel holds that Respondent did not register or use the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created)

 

As noted above, Respondent asserts that, unbeknownst to Respondent, the <livingsocal.com> domain name resolved to two different websites based on how Internet users typed the domain name in to the website.  Respondent claims that, if the disputed domain name did not include the “www.” prefix, the domain name resolved to a parked website.  Respondent alleges that it had no knowledge of this second website and did not profit from the hyperlinks found on the website.  Therefore, the Panel holds that Respondent is not responsible for the content under Policy ¶ 4(a)(iii).  See Ansell Ltd. v. Kovar, FA 1421538 (Nat. Arb. Forum Feb. 1, 2012 (finding that the respondent did not register or use the disputed domain name in bad faith because the respondent only parked the domain name while it prepared its website and that the respondent did not commercially benefit from the parking).

 

Moreover, Respondent claims that, even if the Panel finds that Respondent is responsible for the parked page, the registration and use of a pay-per-click website is not necessarily done in bad faith. The Panel finds that Respondent’s use of the <livingsocal.com> domain name to host a parked website is a legitimate use, the Panel holds that Respondent did not register or use the disputed domain name in bad faith according to Policy ¶ 4(b)(iv).  See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business).

 

The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms. The Panel finds that Respondent did not register or use the <livingsocal.com> domain name in bad faith under Policy ¶ 4(a)(iii).  See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <livingsocal.com> domain name  REMAIN WITH Respondent.

 

 

Hon. Nelson A Diaz (ret.) Panelist

Dated:  September 10, 2012

 

 

 

 

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