WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LivingSocial, Inc. v. Yaohui Du
Case No. DPH 2010-0002
1. The Parties
The Complainant is LivingSocial, Inc. of Washington D.C., United States of America (“USA”), represented by FairWinds Partners, LLC, USA.
The Respondent is Yaohui Du of Jinan, Shangdong, China.
2. The Domain Names and Registrar
The disputed domain names <livingsocial.com.ph> and <livingsocial.ph> are registered with DotPH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2012. On May 23, 2012, the Center transmitted by email to DotPH a request for registrar verification in connection with the disputed domain names. On May 25, 2012, DotPH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In receipt of the Complainant’s request, the Center notified the suspension of the administrative proceedings on May 31, 2012. On June 8, 2012, the Complainant requested to reinstitute the proceedings and submitted the amended Complaint. On June 9 and 11, 2012, the Respondent filed an informal Response to the Complaint. On June 11, 2012, the Center notified the reinstitution of the proceedings.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the Rules for .PH Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(1) and 4(1), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2012. In accordance with the Rules, paragraph 5(1), the due date for Response was July 2, 2012. No further submission received from the Respondent by the specified due date. The Center updated the proceedings on July 3, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 13, 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 is a company incorporated in the USA and the owner of registrations in the USA, Europe and the Philippines for the trade mark LIVINGSOCIAL (the “Trade Mark”), the earliest registration dating from 2009.
The Respondent appears to be an individual based in China.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant commenced using the Trade Mark well before the date of registration of the disputed domain names. The Complainant uses the Trade Mark in connection with the advertising, marketing and selling of online discounts for a wide variety of products and services. The Trade Mark is one of the most well-known brands in the field of direct, email and online sale of discounted goods and services. The Complainant currently serves customers in over 100 cities in the USA, Canada, Australia, the United Kingdom of Great Britain and Northern Ireland, France, Ireland, Egypt and the United Arab Emirates.
The disputed domain names are confusingly similar to the Trade Mark. They comprise the Trade Mark in its entirety.
The disputed domain names are being passively held by the Respondent.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with or authorized by the Complainant in any way and is not commonly known under the Trade Mark.
The Respondent is not making a bona fide offering of goods or services under the disputed domain names and is not making a legitimate noncommercial or fair use of the disputed domain names.
The disputed domain names have been registered and used in bad faith.
The Respondent has offered to sell the disputed domain names to the Complainant for USD7,000, an amount in excess of the Respondent’s likely out-of-pocket expenses incurred in registering the disputed domain names.
In all the circumstances of this case, the Respondent’s passive use of the disputed domain names is a further indication of bad faith.
The Respondent did not formally reply to the Complainant’s contentions.
The Respondent did however send an email communication to the Center in Chinese language, claiming that the disputed domain names were registered for personal use, and not for commercial purposes. The Respondent also claimed the Complainant’s offer price for purchase of the disputed domain names from the Respondent was insufficient, the Complainant is not well-known internationally, the Trade Mark is not used in the Philippines, and that the conduct of the Complainant amounts to an attempt in bad faith to seize the disputed domain names from the Respondent.
6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(1) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names contain the Trade Mark in its entirety.
The Panel finds that the disputed domain names are confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(1) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(3) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain names even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers.
The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).1
The Respondent has failed to show that it has acquired any genuine trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate, noncommercial or fair use of the disputed domain names. To the contrary, the evidence shows that the Respondent has made no use of the disputed domain names.
The Panel finds the Respondent’s assertions that it intends to use the disputed domain names for personal use unconvincing.
The Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(1) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(2)(1) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“Circumstances indicating that the Respondent has registered or the Respondent has 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 the Respondent’s documented out-of-pocket costs directly related to the domain name.”
The evidence shows the Respondent has offered to sell the disputed domain names for USD7,000, an amount in excess of the Respondent’s likely out-of-pocket expenses incurred in registering the disputed domain name.
In all the circumstances of this proceeding, the Panel finds the Respondent’s passive use of the disputed domain names amounts to further grounds in support of a finding of bad faith.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(2)(1) of the Policy, and also under the Panel’s general discretion under paragraph 4(2) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly, the third condition of paragraph 4(1) of the Policy has been fulfilled.
The Panel has no hesitation in rejecting the assertions of the Respondent that the Complainant, in commencing these proceedings, has somehow acted in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(1) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <livingsocial.com.ph> and <livingsocial.ph> be transferred to the Complainant.
Dated: July 27, 2012
1 Given the similarity between the phDRP and the Uniform Domain Name Policy (“UDRP”), the Panel finds it appropriate to cite decisions under the UDRP.