WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LivingSocial, Inc. v. YanJiyong / Privacy Whois

Case No. D2011-2319

1. The Parties

The Complainant is LivingSocial, Inc. of Washington D.C., United States of America, represented by FairWinds Partners, LLC, United States of America.

The Respondent is YanJiyong of Qingdao, Shangdong, China / Privacy Whois of HongKong, China.

2. The Domain Name and Registrar

The disputed domain name <livingsocialgourmet.com> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2011. On January 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 4, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 9, 2012. On January 5, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On January 9, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.

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 January 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2012.

The Center appointed Jonathan Agmon as the sole panelist in this matter on February 9, 2012. 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, LivingSocial, Inc. is an American company whose business consists of offering services in the field of direct, email and online sale of discounted goods and services. The Complainant currently offers its services to clients in over 100 cities in the United States, Canada, Australia, the United Kingdom of Great Britain and Northern Ireland, and Ireland.

The Complainant is the owner of multiple trademark registrations for the mark LIVINGSOCIAL: European Community trademark registration No. 009082141 – LIVINGSOCIAL, with the filing date of May 5, 2010 and with registration date of November 19, 2010; United States trademark registration No. 3668455 - LIVINGSOCIAL, with the filing date of July 14, 2008 and with registration date of August 18, 2009; United States trademark registration No. 3886244 - LIVINGSOCIAL, with the filing date of September 21, 2010 and with registration date of December 7, 2010; and United States trademark registration No. 3921220 - LIVINGSOCIAL, with the filing date of April 23, 2010 and with registration date of February 15, 2011.

Through extensive use, the LIVINGSOCIAL trademark has generated vast good will and has become well-known in connection with its services.

The Complainant also developed a formidable presence on the Internet and is the owner of several domain names, which contain the mark LIVINGSOCIAL. For example: <livingsocial.com>, <livingsocial.co.uk>, <livingsocial.ca> and more.

The disputed domain name <livingsocialgourmet.com> was registered on October 28, 2011.

The disputed domain name <livingsocialgourmet.com> used to lead Internet users to a website that displays sponsored links to various websites.

Currently, the disputed domain name resolves to an error page.

The Complainant sent a cease and desist email to the Respondent on November 2, 2011 informing the Respondent of the Complainant’s intellectual property rights in the mark LIVINGSOCIAL and demanding that the Respondent discontinue its use in the disputed domain name.

On November 3, 2011 a representative on behalf of the Respondent named J. Kan, replied that their client may be willing to transfer the disputed domain name for the price of USD 2,600.

After an exchange of correspondence, Mr. Kan offered to transfer the disputed domain name for the price of USD 1,400, and after further negotiations between the parties, Mr. Kan agreed to transfer the disputed domain name for no less than USD 960.

The Complainant and the Respondent's representative had a further exchange of correspondence in order to resolve the dispute and did not reach an agreement.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to the LIVINGSOCIAL trademark, in which the Complainant has rights, saying that it incorporates the LIVINGSOCIAL trademark as a whole.

The Complainant further argues that the addition of the word “gourmet” is insufficient to avoid confusing similarity between the LIVINGSOCIAL trademark and the disputed domain name.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its

LIVINGSOCIAL trademark and is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that the Respondent is not generally known by the disputed domain name, or has acquired trademark rights in the term “livingsocial”.

The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.

The Complainant further argues that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.

The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the

LIVINGSOCIAL trademark at the time it registered the disputed domain name.

The Complainant further argues that the Respondent's offer to sell the disputed domain name for an excessive price is clear evidence of its bad faith.

The Complainant further argues that the Respondent is a known cyber squatter.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.”(Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:

a) The disputed domain name <livingsocialgourmet.com> consists of Latin letters, rather than Chinese letters;

b) The disputed domain name <livingsocialgourmet.com> used to resolve to a webpage which displayed words in the English language;

c) The Respondent's representative corresponded with the Complainant and offered to sell the disputed domain name while using the English language;

c) The Respondent did not object to the Complainant’s request that English be the language of proceedings.

Upon considering the above, the Panel decides to accept the Complainant’s request and rules that English be the language of proceedings.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of multiple trademark registrations for the mark LIVINGSOCIAL: European Community trademark registration No. 009082141 – LIVINGSOCIAL, with the filing date of May 5, 2010 and with registration date of November 19, 2010; United States trademark registration No. 3668455 - LIVINGSOCIAL, with the filing date of July 14, 2008 and with registration date of August 18, 2009; United States trademark registration No. 3886244 - LIVINGSOCIAL, with the filing date of September 21, 2010 and with registration date of December 7, 2010; and United States trademark registration No. 3921220 - LIVINGSOCIAL, with the filing date of April 23, 2010 and with registration date of February 15, 2011.

The disputed domain name <livingsocialgourmet.com> differs from the registered LIVINGSOCIAL trademark by the additional word “gourmet” and the additional gTLD “.com”.

The disputed domain name integrates the Complainant’s LIVINGSOCIAL trademark in its entirety, as a dominant element.

The additional word “gourmet” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s LIVINGSOCIAL trademark, as it is a descriptive element that relates to the Complainant's services which include promotion of gourmet restaurants.

Previous UDRP panels have ruled that the mere addition of a non-significant element generally does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).

In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.

The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its LIVINGSOCIAL trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the LIVINGSOCIAL trademark since the year 2009. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant also provided evidence to demonstrate its trademark's significant goodwill. For example, the Complainant provided examples of how its trademark is used under its domain names and the large exposure its trademark has received on the Internet. The Panel cites the following with approval: "The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence […] Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith" (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

The Complainant sent a cease and desist letter to the Respondent. In response the Respondent contacted the Complainant and offered to sell the disputed domain name for a price significantly higher than the cost of the disputed domain name or his out-of-pocket costs. The Respondent did so three times, each time lowering his offer for sale. The Complainant refused to purchase the disputed domain name at more than the actual out-of-pocket costs the Respondent had. The Respondent's conduct is clear evidence in the Panel’s view that the Respondent registered and is using the disputed domain name with the likely knowledge of the Complainant and of the use the Complainant is making of its LIVINGSOCIAL trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name registration and use is to sell it to the Complainant. This behavior constitutes bad faith. The Panel cites the following with approval: “The Respondent in this case has offered to sell to Complainant, at a substantial price, domain names corresponding to marks in which Complainant has rights. Absent some exceptional justification from Respondent, it is reasonable to infer that it registered the names with the primary intention of selling them to Complainant (or to a competitor) for valuable consideration in excess of its out-of-pocket expenses directly related to the names. This constitutes bad faith within the meaning of paragraph 4(b)(i) of the Policy. Also, by registering several domain names that are confusingly similar to Complainant’s trademarks, Respondent has prevented Complainant from reflecting its marks in corresponding domain names. The registration of several names corresponding to Complainant’s trademarks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy.” (General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452).

Furthermore, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the Respondent's repeated offers to sell the disputed domain name to the Complainant and the similarity between the disputed domain name and the Complainant’s mark, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <livingsocialgourmet.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: February 22, 2012