WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hungry Machine, Inc. v. Zhou Xiangsheng
Case No. DCO2011-0041
1. The Parties
The Complainant is Hungry Machine, Inc. of Washington D.C., United States of America, represented by FairWinds Partners, LLC, United States of America.
The Respondent is Zhou Xiangsheng of Wuhan, Hubei, China.
2. The Domain Name and Registrar
The disputed domain name <livingsocial.co> is registered with INTERNETX GMBH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2011. On July 1, 2011, the Center transmitted by email to INTERNETX GMBH a request for registrar verification in connection with the disputed domain name. On July 1, 2011, INTERNETX GMBH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the Mutual Jurisdiction, the Complainant filed an amended Complaint on July 6, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2011.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 2, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a corporation with a place of business in Washington D.C., United States of America (“U.S.A.”). The Complainant operates in the field of direct, email and online sale of discounted goods and services and serves customers in over 100 cities in the U.S.A., Canada, Australia, France, United Kingdom of Great Britain and Northern Ireland and the Republic of Ireland. The Complainant is the owner of inter alia U.S.A. federal trademark LIVINGSOCIAL number 3668455 registered on August 18, 2009 in international classes 38, 41 and 42. The Complainant conducts extensive promotion of its trademark, notably with television advertisements, one of which received its première during the 2011 Super Bowl, the single largest annual television advertising event in the U.S.A. According to the website “www.alexa.com” the Complainant’s <livingsocial.com> domain name alone is ranked in the top 200 websites for traffic volume in the U.S.A.
The Respondent registered the disputed domain name on July 20, 2010. A screenshot taken by the Complainant shows that on or about June 30, 2011, the website associated with the disputed domain name displayed sponsored listings relating primarily to coupons, deals and social networking and also contained references to offshore investments and expatriate insurance.
5. Parties’ Contentions
The disputed domain name is confusingly similar to trademarks in which the Complainant owns rights; the Respondent has no right or legitimate interest in the disputed domain name; and the disputed domain name was registered and is being used in bad faith.
It has been held, in UDRP decisions too numerous to mention, that the mere addition of top-level domains or generic or other short words or letters to a trademark creates a confusingly similar domain name. The Respondent in the present dispute merely adds the top-level domain indicator “.co” to the Complainant’s LIVINGSOCIAL trademark. As such, the disputed domain name is identical to the Complainant’s trademark.
None of the circumstances in paragraph 4(c) of the Policy apply to the Respondent in the present dispute. The Respondent’s actions are not a bona fide offering of goods or services. Through the use of a classic pay-per-click page, the disputed domain name diverts the Complainant’s customers and potential customers to the goods and services of companies which are either not associated with the Complainant or, in some cases, are actually competitors of the Complainant.
The Respondent is not commonly known by the disputed domain name or the name Livingsocial. The Respondent does not operate a business or other organization under this mark or name and does not own any corresponding trademark rights. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Instead, the Respondent is using the disputed domain name to confuse and misleadingly divert consumers, or to tarnish the Complainant’s trademark. Searchers for the Complainant’s various goods and services, who found the disputed domain name, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were in a directory of links to competitors and other goods and services. Such use cannot be considered fair.
The Respondent’s use has tarnished and diluted the Complainant’s trademark. The Respondent has diminished consumers’ capacity to associate the Complainant’s trademark with the quality products offered under the trademark by the Complainant by using the trademark in association with a pay-per-click site which offers products and services not associated with or related to the Complainant’s quality branded services. The Respondent’s use creates the very real risk that the Complainant’s trademark is not only being associated with numerous products and services not related to the Complainant’s branded products, but also to products and services over which the Complainant has no quality control.
The Respondent intentionally used the Complainant’s trademark without consent from the Complainant. The Respondent was put on constructive notice of the Complainant’s rights in its trademark through the Complainant’s extensive prior use as well as its various trademark registrations, all of which predate the creation date of the disputed domain name. The Respondent knowingly and intentionally used the Complainant’s trademark in violation of Complainant’s rights therein. The very fact that the website associated with the disputed domain name features the Complainant’s trademark reveals that the Respondent has actual knowledge of the trademark and of the Complainant and is purposefully trading on the trademark.
The Respondent, or its registrar, is likely obtaining commercial gain from its use of the website at the disputed domain name. This is a classic pay-per-click page providing advertising and links to the goods and services of companies which are unrelated to, and in some cases directly competitive to the Complainant. As such, the Respondent receives click-through revenue and the other businesses whose links appear on the disputed domain name website receive revenue from visitors who click on these links and then make purchases. This alone constitutes commercial gain. Whether or not the Respondent itself is compensated is irrelevant. The Respondent’s bad faith is also demonstrated by its intentional use of the Complainant’s trademark in the disputed domain name to attract Internet searchers by creating a likelihood of confusion with that trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the trademark LIVINGSOCIAL by virtue of the registered trademarks which it has cited, including the trademark noted in the Factual Background section above. The Panel is also satisfied that the disputed domain name is identical to these. For the purposes of comparison, the country code top level domain “.co” may be disregarded as is customary in cases under the Policy.
Accordingly the first element under the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous UDRP decisions under the Policy is that a complainant may establish this element by making out a prima facie case against the respondent. The onus of producing evidence rebutting such case then shifts to the respondent. If the respondent does not rebut the complainant’s prima facie case, the respondent shall be found not to have any rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent has intentionally used the Complainant’s trademark without consent from the Complainant. The Complainant has also provided evidence that the website associated with the disputed domain name has been used to display pay-per-click advertising diverting Internet users trying to find the Complainant’s website. It is well established that this type of use of a domain name, which in effect trades off the Complainant’s reputation and trademark, offering or linking to competing goods and services, is not bona fide. The Panel considers that such use cannot confer any rights or legitimate interests upon the Respondent.
In these circumstances, the Panel is satisfied that the Complainant has made out a prima facie case in terms of paragraph 4(a)(ii) of the Policy. The Respondent did not file any Response and thus has not rebutted the Complainant’s case. In these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the second element under the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In light of the Complainant’s submissions and evidence the Panel is satisfied that the Respondent has registered and is using the disputed domain name in bad faith. The Panel notes that the disputed domain name is identical to the Complainant’s trademark and that it has been used in connection with pay-per-click advertising, the content of which includes links pointing to competitors of the Complainant. In the Panel’s opinion, the use of the disputed domain name in this manner, which is entirely referable to the Complainant’s trademark, provides strong evidence that the Respondent must have had actual notice of the Complainant’s trademark when the Respondent registered the disputed domain name and furthermore that the Respondent intended to target that trademark by creating a likelihood of confusion with it.
The Respondent has chosen not to provide any explanation as to why it registered and used the disputed domain name and the Panel cannot conceive of any possible good faith explanation which the Respondent might have tendered. Accordingly, the Panel finds that the Complainant has proved that the disputed domain name has been registered and is being used in bad faith and thus that the third element under the Policy has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <livingsocial.co>, be transferred to the Complainant.
Andrew D. S. Lothian
Dated: August 11, 2011