Hungry Machine, Inc. v. Yang / Qijin Yang
Claim Number: FA1106001394257
Complainant is Hungry Machine, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Yang / Qijin Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <livingsocail.com>, registered with Name.com LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2011; the National Arbitration Forum received payment on June 27, 2011.
On June 21, 2011, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <livingsocail.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com 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 June 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2011 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@livingsocail.com. Also on June 28, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 July 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant claims:
As set forth more fully below, the Complainant owns certain trademarks and makes extensive use of them such that they have become famous.
Complainant Owns Its Marks.
Complainant is the owner of the distinctive and famous LIVINGSOCIAL trademarks (the “LIVINGSOCIAL Marks”). Since long prior to the creation of the <livingsocail.com> domain, Complainant commenced use of the LIVINGSOCIAL marks in connection with the advertising, marketing and selling of online discounts for a wide variety of local and national products and services. Since the inception of the LIVINGSOCIAL marks, Complainant has continually used such marks in interstate commerce.
The LIVINGSOCIAL marks Are Extensively Used, Promoted and Protected.
Complainant is one of the most well-known brands in the field of direct, email and online sale of discounted goods and services. Subscribers are typically sent an email each day with a “Daily Deal” discount offer. A typical deal offered by Complainant might be $20 worth of food, at a local restaurant, for only $10. Complainant currently serves customers in over 100 cities in the US, Canada, Australia, the United Kingdom and Ireland and is adding cities and countries all the time.
Complainant extensively promotes its LIVINGSOCIAL marks through, web, email, and television advertising and expends millions of dollars in this effort. By way of example, one of Complainant’s humorous television commercials entitled “LivingSocial Changed My Life” had its premier during the 2011 Super Bowl - the single largest annual television advertising event in the United States. Complainant has also been the subject of extensive media coverage including stories in Venture Beat, a leading on-line business journal, NY Convergence, a New York City-based publication featuring leading digital businesses, the New York Times, CNN.com and many other outlets.
Complainant generates significant sales revenue as a result of the advertising and marketing it conducts on its websites reached through the <livingsocial.com>, <livingsocial.co.uk>, <livingsocial.ca> and many other domains. According to the website Alexa.com the <livingsocial.com> domain alone is ranked in the top 200 websites for traffic volume in the United States. As a result of Complainant’s long usage and promotion of the LIVINGSOCIAL marks, they have become famous and widely recognized by consumers.
The LIVINGSOCIAL marks are aggressively protected through registration and enforcement. Complainant owns many trademark registrations for the LIVINGSOCIAL marks in a number of different countries, including with the United States Patent and Trademark Office (“USPTO”) and the European Union Office for Harmonization in the Internal Market (“OHIM”) as follows:
Mark Reg. No. Reg. Date
USPTO
LIVINGSOCIAL 3,668,455 August 18, 2009, filed July 14, 2008;
LIVINGSOCIAL 3,886,244 December 7, 2010,filed September 21, 2010;
LIVINGSOCIAL 3,921,220 February 15, 2011, filed April 23, 2010; &
OHIM
LIVINGSOCIAL 9,081,241 November 19, 2010, filed May 5, 2010.
Respondent’s registration of the <livingsocail.com> domain violates the Policy.
The <livingsocail.com> Domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i).
Respondent’s <livingsocail.com> domain is confusingly similar, on its face, to one or more of Complainant’s registered LIVINGSOCIAL trademarks. Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between the Complainant’s Marks and Respondent by Respondent’s use of the <livingsocail.com> domain.
It has been held, in decisions too numerous to mention, that a minor misspelling of a Complainant’s trademark, or the addition of generic or other words creates a confusingly similar domain name. For example, in DIRECTV, Inc v. Digi Real Estate Found., FA 914942 (Nat. Arb. Forum Mar. 21, 2007), the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark.” In relation to a different domain owned by respondent, the Panel went on to hold that “Respondent’s <dishdirectv.com> domain name contains Complainant’s mark in its entirety and adds the generic word ‘dish.’ Prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶4(a)(i).” The Panel held that all of the domains at issue are “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Brownells, Inc. v. Tex. Int’l Prop. Assocs., D2007-1211 (WIPO Dec. 12, 2007), the respondent used a minor misspelling of the complainant’s trademark leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.” See also Christie’s Inc. v. Tiffany's Jewelry Auction, Inc., D2001-0075 (WIPO Sept. 3, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).
Similarly to the above-cited decisions, the Respondent in the present dispute initially attracts searchers to its website by using an identical or confusingly similar copy of the Complainant’s LIVINGSOCIAL Marks (merely transposing the “a” and the “i”), thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. See Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO Oct. 6, 2000) (finding that complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address.”) As reasoned in Athanasios, even if searchers discover they are not at one of Complainant’s sites, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the website of the livingsocail.com domain. As in Athanasios, Respondent here uses the LIVINGSOCIAL Marks in its site’s domain name as well as in the title and body of its website. It only makes sense that if searchers see the marks listed in the body of the <livingsocail.com> domain web page and numerous links to other goods and services are also listed on that page, searchers will be confused and led to believe that, even if the goods and services are not those of Complainant, they are at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the <livingsocail.com> Domain Under Policy ¶4(a)(ii).
Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <livingsocail.com> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Through the use of a classic pay-per-click website, Respondent’s domain name diverts Complainant’s customers and potential customers to Respondent’s pay-per-click website and then to other websites which are not associated with Complainant. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, FA 573872 (Nat. Arb. Forum Nov. 22, 2005) (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party website for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
Respondent is not commonly known by the <livingsocail.com> domain name or the name LIVINGSOCIAL and so its actions do not fall within Policy ¶4(c)(ii). Upon information and belief, Respondent is not commonly known by any of Complainant’s Marks, nor does Respondent operate a business or other organization under such marks or names and does not own any trademark or service mark rights in these names. See Dell Inc. v. George Dell & Dell Net Solutions, D2004-0512 (WIPO Aug. 24, 2004) (holding that regarding the domain <dellnetsolutions.com>, “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <livingsocail.com> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the <livingsocail.com> domain to confuse and misleadingly divert consumers, or to tarnish the Marks of the Complainant. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, D2003-0649 (WIPO Nov. 27, 2003), the Panel noted that “[t]he 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s various goods and services, who found the <livingsocail.com> domain, 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. See Mpire Corporation v. Michael Frey, D2009-0258 (WIPO Apr. 17, 2009) (“While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.”)
Lastly, Respondent’s use has tarnished and diluted the LIVINGSOCIAL Marks. Respondent has diminished consumers’ capacity to associate the marks with the quality products offered under the marks by the Complainant by using the marks in association with a directory site which provides links to numerous products and services not associated with or related to the Complainant’s quality branded products. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products and services, but also to products and services linked to directory sites over which Complainant has no quality control.
(c) Respondent Registered The <livingsocail.com> Domain In Bad Faith Under Policy ¶4(a)(iii).
The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts 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 or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally used the LIVINGSOCIAL marks without consent from Complainant. Respondent was put on constructive notice of Complainant’s rights in its Marks through Complainant’s extensive prior use of the marks as well as its various trademark registrations, most of which predate the creation date of the <livingsocail.com> domain. See Am. Funds Distrib. Inc. v. Domain Admin. Ltd., D2007-0950 (WIPO Sept. 26, 2007) (finding that “the extensive prior use of that name and the fact that it comprises the dominant part of several U.S. registered trademarks provided constructive knowledge of the Complainant’s trademark rights….”). Therefore, Respondent knowingly and intentionally used the LIVINGSOCIAL Marks in violation of Complainant’s rights in its Marks. Moreover, the content on Respondent’s website at the <livingsocail.com> domain reveals that Respondent has actual knowledge of the marks and Complainant’s goods associated with each and is purposefully trading on the marks.
Respondent is obtaining commercial gain from its use of the website at the <livingsocail.com> domain. This is a directory or “pay-per-click” website providing a listing of hyperlinks, some of which lead to Complainant’s websites and some to the websites of Complainant’s competitors. Upon information and belief, each time a searcher clicks on one of these search links, Respondent receives compensation from the various website owners who are linked through the website of the <livingsocail.com> domain. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the directory site. See AllianceBernstein LP v. Tex. Int’l Prop. Assocs. - NA NA, D2008-1230 (WIPO Oct. 12, 2008), and Brownells, Inc. v. Tex. Int’l Prop. Assocs., D2007-1211 (WIPO Dec. 12, 2007) (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In AllianceBernstein, supra, the respondent registered the domain name <allaincebernstein.com>, which was indisputably identical to the complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of complainant. Id. The Panel inferred that the respondent received click-through fees by directing users to various commercial website via these links and found that the respondent’s use was for commercial gain and was in bad faith under Policy ¶4(b)(iv). Id.
In Brownells, supra, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from its operation of a pay-per-click site under the <livingsocail.com> domain alone constitutes commercial gain. See AllianceBernstein, supra. Moreover, similar to the facts in Brownells and AllianceBernstein, supra, Respondent’s use of the domain name and website results in a commercial gain for others by placing links to competitors of Complainant and other individuals, groups or entities on its website. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were linked to the web pages of the <livingsocail.com> domain. Respondent’s use of this domain name is commercial because the various companies linked to the directory sites of the <livingsocail.com> domain benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO Oct. 6, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the <livingsocail.com> domain, Respondent is entirely and solely responsible for the content of its website. See Disney Enterprises, Inc. v. ll, FA 1336979 (Nat. Arb. Forum Aug. 31, 2010) ( concluding that Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard Int’l Inc. v. Banu Asum Kilich, D2009-1525 (WIPO Jan. 7, 2010) (agreeing with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website”).
Finally, as more fully set forth above, Respondent’s bad faith is demonstrated by its intentional use of the LIVINGSOCIAL Marks in its domain name to attract Internet searchers by creating a likelihood of confusion with Complainant’s Marks. See, e.g., DIRECTV, Inc v. Digi Real Estate Found., supra. Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <livingsocail.com> domain in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Hungry Machine, Inc. advertises, markets, and sells online discounts for a variety of local and national products and services. Complainant owns trademark registrations for the LIVINGSOCIAL mark with the USPTO and the OHIM:
USPTO
Reg. No. 3,668,455 registered August 18, 2009;
Reg. No. 3,886,244 registered December 7, 2010;
Reg. No. 3,921,220 registered February 15, 2011; and
OHIM
Reg. No. 9,082,141 registered November 19, 2010.
Respondent Yang / Qijin Yang registered the <livingsocail.com> domain name on March 12, 2010. The disputed domain name resolves to a generic pay-per-click directory, featuring many links related to coupons.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant owns trademark registrations for the LIVINGSOCIAL mark with the USPTO and the European Union OHIM:
USPTO
Reg. No. 3,668,455 registered August 18, 2009;
Reg. No. 3,886,244 registered December 7, 2010;
Reg. No. 3,921,220 registered February 15, 2011; and
OHIM
Reg. No. 9,082,141 registered November 19, 2010.
The Panel finds these trademark registrations in both the United States and the European Union evidence Complainant’s rights in the LIVINGSOCIAL mark pursuant to Policy ¶4(a)(i), even though Respondent lives or operates in China and not the U.S. or European Union. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues Respondent’s <livingsocail.com> domain name is confusingly similar to Complainant’s LIVINGSOCIAL mark because the disputed domain name consists of a minor misspelling of Complainant’s mark—the transposition of two letters—combined with the generic top-level domain (“gTLD”) “.com.” The Panel finds misspelling Complainant’s mark in the disputed domain name does not avoid a finding of confusing similarity under Policy ¶4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark). The Panel also finds attaching a gTLD is irrelevant under a Policy ¶4(a)(i) analysis. See 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.”). To hold otherwise in light of the restrictions in creating domain names would eviscerate the UDRP. This Panel therefore concludes Respondent’s <livingsocail.com> domain name is confusingly similar to Complainant’s LIVINGSOCIAL mark for the purposes of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant alleges Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii). The Panel finds Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume Respondent lacks any rights or legitimate interests in the disputed domain name. Out of an abundance of caution, this Panel elects to consider the evidence in record in light of the Policy ¶4(c) factors to determine if Respondent has any rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant contends Respondent does not operate a business or other organization under the LIVINGSOCIAL mark or own any corresponding service marks or trademarks. The WHOIS information for the <livingsocail.com> domain name reveals that the registrant is “Yang / Qijin Yang,” which has no apparent connection to the disputed domain name. The Panel thus holds Respondent is not commonly known by the <livingsocail.com> domain name and consequently lacks rights and legitimate interests according to Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name).
Complainant asserts Respondent’s <livingsocail.com> domain name resolves to a website with generic pay-per-click links for “Coupons online,” “Free stuff,” “bargains,” and “discount coupons.” The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant alleges Respondent’s <livingsocail.com> domain name features pay-per-click links related to coupons and discounts. As providing online coupons and discounts for popular activities and services is Complainant’s business, these links directly compete with Complainant and disrupt its business. As a result, the Panel holds Respondent’s use of the disputed domain name to directly compete with Complainant indicates bad faith registration and use pursuant to Policy ¶4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶4(b)(iii)).
Complainant contends the close similarity between Complainant’s mark and the <livingsocail.com> domain name indicates Respondent registered the disputed domain name with the purpose of attracting Complainant’s customers and creating confusion as the customers likely would expect to arrive at Complainant’s website. Complainant alleges Respondent intended this confusion with the goal of commercial gain from the pay-per-click links posted on the resolving website that generate revenue each time they are clicked. The Panel accordingly finds Respondent’s activities reveal Respondent’s bad faith registration and use pursuant to Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <livingsocail.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: July 28, 2011
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