Hungry Machine, Inc. v. Jeff Yan
Claim Number: FA1106001394852
Complainant is Hungry Machine, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Jeff Yan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <livingsocialinstantdeal.com>, <livingsocialinstantdeals.com>, and <livingsocialinstant.com>, registered with GoDaddy.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2011; the National Arbitration Forum received payment on June 27, 2011.
On June 22, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <livingsocialinstantdeal.com>, <livingsocialinstantdeals.com>, and <livingsocialinstant.com> domain names are registered with GoDaddy.com and that Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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@livingsocialinstantdeal.com, postmaster@livingsocialinstantdeals.com, and postmaster@livingsocialinstant.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 Terry F. Peppard as sole Panelist in this proceeding.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a web-based retailer of coupons and discount opportunities involving a wide array of consumer services and products.
Complainant uses the LIVINGSOCIAL mark in its domain name, and employs that domain name as its sole sales portal.
Complainant owns mark registrations with national trademark authorities for the LIVINGSOCIAL mark, including a service mark on file with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,668,455, registered August 18, 2009).
Respondent registered the domain names <livingsocialinstantdeal.com>, <livingsocialinstantdeals.com>, and <livingsocialinstant.com> on March 8, 2011.
The disputed domain names resolve to a site offering links to both Complainant’s website and the sites of its competitors.
Respondent collects a click-through fee for each Internet user diverted to the resolving website.
Respondent’s <livingsocialinstantdeal.com>, <livingsocialinstantdeals.com>, and <livingsocialinstant.com> domain names are confusingly similar to Complainant’s LIVINGSOCIAL mark.
Respondent is not commonly known by the disputed domain names, nor does Respondent operate a business or other organization under this mark or name or own any trademark or service mark rights in the LIVINGSOCIAL name.
Respondent does not have any rights to or legitimate interests in the domain names <livingsocialinstantdeal.com>, <livingsocialinstantdeals.com>, and <livingsocialinstant.com>.
Respondent registered and uses the domains <livingsocialinstantdeal.com>, <livingsocialinstantdeals.com>, and <livingsocialinstant.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the LIVINGSOCIAL service mark under Policy ¶ 4(a)(i) by registering the mark with a national trademark authority, the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); further see Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence or operations, it being sufficient that a complainant can demonstrate such rights in some jurisdiction).
Respondent’s disputed domain names are confusingly similar to Complainant’s LIVING SOCIAL service mark. The disputed domain names all include the generic top-level domain (“gTLD”) “.com” along with the generic term “instant.” Two of the domain names also include terms descriptive of Complainant’s business, those being “deal” and “deals.” These alterations of Complainant’s LIVINGSOCIAL mark in forming the contested domain names do not avoid a finding of confusing similarity under Policy ¶ 4(a)(ii). 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.
See also Dr. Ing. h.c. F. Porsche AG v. Anderson, D2004-0312 (WIPO July 2, 2004) (finding the <porschesales.com> domain name to be confusingly similar to a complainant’s PORSCHE mark where a respondent added the generic term “sales” to the mark in forming the domain); see also Wells Fargo & Co. v. Bogucki, FA 147305 (Nat. Arb. Forum Apr. 16, 2003) (finding that the <wellfargobank.com> domain name was confusingly similar to a complainant’s WELLS FARGO mark, because altering the mark by one letter and adding “…the word ’bank,’ a word that both describes the type of business that Complainant engages in and is included in its <wellsfargobank.com> domain name, does not alleviate any confusing similarity.”).
The Panel therefore finds that the requirements of Policy ¶ 4(a)(i) have been established.
Complainant has met its initial burden of proof by making a prima facie case against Respondent indicating that it lacks rights to or legitimate interests in the disputed domain names. Therefore Respondent now bears the burden of proving affirmatively its rights to or legitimate interests in the disputed domains. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie showing that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or legitimate interests).
Because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we may presume that Respondent lacks rights to or legitimate interests in the disputed domain names. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the disputed domain names, nor does Respondent operate a business or other organization under this mark or name or own any trademark or service mark rights in the LIVINGSOCIAL name. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain names only as “Jeff Yan,” which does not resemble any of the contested domains. On this record, we must conclude that Respondent is not commonly known by the disputed domain names so as to have rights to or legitimate interests in any of the contested domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in the disputed domain under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii) where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We next observe that Complainant alleges, without objection from Respondent, that Respondent is not making a bona fide offer of goods or services or a legitimate noncommercial or fair use of the disputed domain names, and therefore has no rights to or legitimate interests in the contested domains under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), respectively. We agree. Respondent’s domain names resolve to a pay-per-click website which offers links to both the websites of Complainant and those of its commercial competitors. This use of the domains does not qualify as a bona fide offer of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a domain name confusingly similar to a complainant’s mark does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether a respondent is profiting commercially from click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because that respondent was using the domain to operate a website containing links to various commercial websites competing with the business of a complainant, which the panel found to be a use not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
It is evident from the record that Respondent’s domain names disrupt complainant’s business owing to the confusion created by the similarity between the domain names and Complainant’s LIVINGSOCIAL service mark. We conclude, therefore, that Respondent has registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(iii) by using it to operate a search engine with links to websites of both a complainant and those of that complainant’s commercial competitors); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a search engine featuring links to the websites of a complainant’s competitors).
In addition, because it is evident that Respondent gains commercially from the operation of the disputed domain names, we further conclude that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See 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).
See also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that a respondent’s use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith registration and use under Policy ¶ 4(b)(iv) because that respondent benefited commercially by receiving click-through fees for diverting Internet users to unrelated third-party websites).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <livingsocialinstantdeal.com>, <livingsocialinstantdeals.com>, and <livingsocialinstant.com> be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 26, 2011
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