LivingSocial, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1210001468667
Complainant is LivingSocial, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <livingsocialgolf.com>, registered with Register4less, Inc.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2012; the National Arbitration Forum received payment on October 29, 2012.
On October 25, 2012, Register4less, Inc. confirmed by e-mail to the National Arbitration Forum that the <livingsocialgolf.com> domain name is registered with Register4less, Inc. and that Respondent is the current registrant of the name. Register4less, Inc. has verified that Respondent is bound by the Register4less, 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 October 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@livingsocialgolf.com. Also on October 31, 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 November 20, 2012.
On December 4, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is engaged in the business of advertising, marketing and selling online discounts for a wide variety of local and national products and services under the name LIVING SOCIAL.
Complainant has numerous trademark registrations for its LIVING SOCIAL mark (the “LIVING SOCIAL Mark”) in the United States and the European Community. One of its U.S. trademark registrations for LIVING SOCIAL is No. 3,886,224, issued December 7, 2010, for IC 035, US 100 101 102 G & S (advertising and promotional services; promoting the goods and services of others, namely, providing information regarding discounts, coupons, rebates, vouchers and special offers for the goods and services of others. FIRST USE: July 22, 2009.)
Respondent registered the domain name <livingsocialgolf.com> (the “Domain Name”) on September 6, 2011.
The Domain Name is confusingly similar to Complainant’s LIVING SOCIAL Mark in that it incorporates the Mark verbatim and simply adds the generic term “golf.” Adding the term “golf” is insufficient to distinguish it from Complainant’s Mark.
Respondent has no rights or legitimate interests in the Domain Name. It is not commonly known by the name “living social golf” or any variation of it, and does not operate a business under that name.
The website resolving from the Domain Name automatically forwards the Internet user to the website <www.supremegolf.com> which contains “deal” offers for golf-related products and services as well as third-party advertisements which compete directly with Complainant. This is not a bona fide offering of goods or services for the purpose of establishing right or legitimate interest in a domain name. Nor is it a legitimate noncommercial or fair use of the Domain Name: Respondent receives payment each time its website forwards an Internet user to a third-party site, and it cannot be considered fair to use and trade upon the name and reputation of another party to generate revenues for oneself.
Complainant has not licensed or authorized Respondent to use its LIVING SOCIAL Mark or the Domain Name.
Respondent registered and is using the Domain Name in bad faith by using it to attract, for commercial gain, Internet searchers to its website or other on-line location by creating a likelihood of confusion with the Complainant’s Mark as to source, sponsorship, affiliation, or endorsement of the website, or location of a product or service on the website. Respondent’s use of the Domain Name also seeks to disrupt the business of Complainant.
Respondent’s bad faith is further evidenced by the fact that it had actual knowledge of Complainant’s Mark when it registered the Domain Name.
B. Respondent
Respondent’s entire response, which was filed by one W. Jonathan Wride, as Managing Partner for “The Wride Group,” of Dallas, Texas, is set forth below, verbatim:
I am a customer of Living Social and Living Social offers my golf deals to their data base for profit. We have had a business relationship on several occasions. Livingsocialgolf.com is not used for commerce. Living Social cannot claim every name that follows “Living Social”. If Living social would like to acquire the name from me then please have them submit me an offer. It has cost time and money to maintain the name. If not then I am permitted to hold on to the name. Sincerely, Jonathan Wride.
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.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant owns the LIVINGSOCIAL Mark that it uses in connection with its business of advertising, marketing, and selling online discounts for a variety of local and national products and services. Further, Complainant has registered its LIVING SOCIAL Mark with the USPTO (Reg. No. 3,886,224, issued December 7, 2010, and assigned by change of name July 27, 2011). See Complainant’s Exhibits E 3 & E 5. Complainant has thus established its rights in the LIVINGSOCIAL mark under Policy ¶ 4(a)(i). See Devitt Ins. Servs. Ltd. v. Stevens, FA 1257387 (Nat. Arb. Forum May 21, 2009) (“The Panel finds Complainant has established rights in the DEVITT mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the OHIM.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <livingsocialgolf.com> domain name is confusingly similar to the LIVINGSOCIAL Mark in that it incorporates the Mark verbatim and simply adds the generic term “golf.” Adding the term “golf” is insufficient to distinguish it from Complainant’s Mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Based upon the foregoing, the Panel concludes that the <livingsocialgolf.com> domain name is confusingly similar Complainant’s LIVINGSOCIAL Mark under Policy ¶ 4(a)(i), and that Complainant has substantial and demonstrated rights in that Mark.
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the Domain Name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 asserts that Respondent’s lack of rights or legitimate interests in the Domain Name is demonstrated by several circumstances present in this case: (1) Respondent has not been licensed or permitted to use the LIVING SOCIAL Mark or any domain names incorporating that mark, (2) Respondent is not commonly known by the Domain Name or any variation thereof, (3) Respondent’s use of the Domain Name to operate a website that provides links to competitors of Complainant is not a bona fide offering of goods and services, and (4) Respondent is not making any legitimate noncommercial fair use of the Domain Name, without intent for commercial gain. The evidence presented supports these allegations. It thus appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name, and it is incumbent upon Respondent to demonstrate that it does.
The Response does not address any of the factors that might demonstrate right or legitimate interest in the Domain Name. The only conceivably relevant assertion is that Respondent is not using the Domain Name for commerce, or, by extrapolation, for commercial gain, but there is virtually no evidence given upon this or any other fact or circumstance upon which a panel might base a finding of right or legitimate interest. Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
Respondent is using the Domain Name to offer discount golf services in a similar and competing manner to Complainant’s own offerings. This constitutes intentionally attempting to disrupt Complainant’s business and supports a finding of bad faith within the meaning of Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Similarly, Respondent is intentionally attempting to attract Internet users, for commercial gain, to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website, which also is evidence of bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
Lastly, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the LIVINGSOCIAL Mark at the time it registered the Domain Name. As of September 2011 when the Domain Name was registered, the Complainant’s Mark was well-known at least throughout the United States as representing Complainant’s business. Further, the name “Living Social” bears no resemblance whatever with any of the names actually associated with Respondent based upon the evidence presented in this case (i.e. Wride Group, Jonathan Wride, supreme golf). Finally, the Respondent’s website resolving from the Domain Name forwards the Internet user to a website offering competing services. All of these circumstances, taken together, lead to the conclusion that Respondent not only knew of Complainant and its Mark but selected “livingsocialgolf” for the operative portion of the Domain Name precisely because it does incorporate Complainant’s Mark and would attract to Respondent’s website Internet users thinking they had reached a website sponsored by Complainant. Registering and using a domain name that incorporates a known trademark of another is also evidence of bad faith under Policy ¶ 4(a)(iii). See, Minicards Vennootschap Onder FIrma Am e sterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
For the reasons set forth above, the Panel concludes that the Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <livingsocialgolf.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: December 14, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page