national arbitration forum

 

DECISION

 

LivingSocial, Inc. v. Andrew Dennis

Claim Number: FA1209001463272

 

PARTIES

Complainant is LivingSocial, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is Andrew Dennis (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <livingsocialcreditcards.com>, registered with Network Solutions, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 19, 2012; the National Arbitration Forum received payment on September 25, 2012.

 

On September 19, 2012, Network Solutions, LLC confirmed by e-mail to the Nat-ional Arbitration Forum that the <livingsocialcreditcards.com> domain name is registered with Network Solutions, LLC and that Respondent is the current regis-trant of the name.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 September 26, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of October 16, 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, adminis-trative, and billing contacts, and to postmaster@livingsocialcreditcards.com.  Also on September 26, 2012, the Written Notice of the Complaint, notifying Re-spondent 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 22, 2012, pursuant to Complainant's request to have the dispute de-cided 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 Not-ices, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant is the owner of the LIVINGSOCIAL service mark, and uses the mark in connection with the marketing of online discounts for a wide variety of local products and services to customers in the U.S., Canada, Australia, the United Kingdom and Ireland.

 

Complainant owns domain names consisting of the LIVINGSOCIAL mark, includ-ing <livingsocial.com>, <livingsocial.co.uk> and <livingsocial.ca>.

 

Complainant has registered its LIVINGSOCIAL service mark with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 3,668,455,registered August 18, 2009.

 

Respondent registered the disputed domain name on May 1, 2012.

 

Respondent is a cyber-squatter and is engaged in a pattern of bad faith regis-tration of domain names that are confusingly similar to trademarks in which Respondent has no rights.

 

Respondent’s <livingsocialcreditcards.com> domain name is confusingly similar to Complainant’s LIVINGSOCIAL mark because the domain name.

 

Respondent uses the LIVINGSOCIAL mark in the domain name, as well as in the title and body of the resolving website.

 

Respondent uses the disputed domain name to resolve to a pay-per-click web-site that diverts consumers to other websites not associated with Complainant.

 

Respondent has not been commonly known by the disputed domain name and does not operate a business or other organization under that name.

 

Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

 

Respondent gains commercially from its use of the website at the disputed do-main name by providing a directory of pay-per-click links, some of which lead to the websites of Complainant’s commercial competitors.

 

Respondent has neither any rights to nor any legitimate interests in the contested domain name.

 

Respondent employs the LIVINGSOCIAL mark in its domain name in order to attract Internet users searching for Complainant’s website by creating confusion among such users.

 

Respondent knew of Complainant and its rights in the LIVINGSOCIAL mark when it registered the disputed domain name.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is 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 name; and

(3)  the domain name has been registered and is being used in bad faith.

 

 

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:

 

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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal 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 reason-able inferences of fact in the allegations of a UDRP 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.”

 

Identical and/or Confusingly Similar

 

Complainant has rights in its LIVINGSOCIAL service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.  See, for example, Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007):

 

Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i).

 

Respondent’s <livingsocialcreditcards.com> domain name is confusingly similar to Complainant’s LIVINGSOCIAL mark because the domain name contains the entire mark, merely adding the generic terms “credit” and “cards,” which together relate to an aspect of Complainant’s business, and the generic top-level domain (“gTLD”) “.com.”  These alterations of the mark, made in forming the domain name, do not escape a finding of confusing similarity under the standards of the Policy.  See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (find-ing the <westfieldshopping.com> domain name to be confusingly similar to the WESTFIELD mark because the mark was the dominant element of the domain name);  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.

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name.  Nonetheless, we will ex-amine 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 Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy. 

 

We begin by noting that Complainant alleges, and Respondent does not deny,

that Respondent has not been commonly known by the disputed domain name and does not operate a business or other organization under such mark or name. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Andrew Dennis,” which does not resemble the disputed do-main name.  On this record, we conclude that Respondent has not been com-monly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent did not have rights in a domain name where that respondent was not commonly known by the mark from which it was derived). 

 

We next observe that Complainant also asserts, without objection from Respond-ent, that Respondent uses the <livingsocialcreditcards.com> domain name to operate a website hosting links to third-party websites not associated with Com-plainant to confuse and mislead consumers while profiting from click-through fees.  Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that a re-spondent’s use of a disputed domain name to redirect Internet users to com-mercial websites unrelated to the business of a UDRP complainant and with the evident purpose of receiving a commission or pay-per-click referral fee did not demonstrate rights to or legitimate interests in the domain name).

 

The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

We are persuaded from the record that Respondent registered and uses the disputed domain name in bad faith by intentionally attempting to attract, for its own commercial gain, Internet users to the resolving website by creating a likelihood of confusion with Complainant’s mark as to the possibility of Com-plainant’s sponsorship of, affiliation with or endorsement of the website, and that Respondent gains commercially from the operation of the resolving website.  This employment of the domain name stands as evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (finding that a respondent’s use of a dis-puted domain name to maintain a pay-per-click website displaying links to web-sites unrelated to the business of a UDRP complainant and to generate click-through revenue suggested bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).

 

We are also satisfied from the evidence that Respondent knew of Complainant and of its rights in the LIVINGSOCIAL service mark when it registered the con-tested domain name.  This further demonstrates that Respondent registered the domain name in bad faith.  See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was “well-aware” of a UDRP complainant’s mark at the time of its registration of a domain name which was confusingly similar to the mark).

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

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 <livingsocialcreditcards.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  November 5, 2012

 

 

 

 

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