LivingSocial, Inc. v. livingsocialshop.com, livingsocialshopping.com Private Registrant
Claim Number: FA1210001465142
Complainant is LivingSocial, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is livingsocialshop.com and livingsocialshopping.com Private Registrant (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <livingsocialshop.com> and <livingsocialshopping.com>, registered with NEW DREAM NETWORK, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2012; the National Arbitration Forum received payment on October 4, 2012.
On October 10, 2012, NEW DREAM NETWORK, LLC confirmed by e-mail to the National Arbitration Forum that the <livingsocialshop.com> and <livingsocialshopping.com> domain names are registered with NEW DREAM NETWORK, LLC and that Respondent is the current registrant of the names. NEW DREAM NETWORK, LLC has verified that Respondent is bound by the NEW DREAM NETWORK, 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 October 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2012 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@livingsocialshop.com, postmaster@livingsocialshopping.com. Also on October 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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 issues 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.
i. Respondent’s is not making an active use of the disputed domain names.
ii. Respondent is not commonly known by the disputed domain names, does not operate a business or organization under the LIVINGSOCIAL name, and does not own any trademark rights in the LIVINGSOCIAL name.
i. Respondent is inactively holding the disputed domain names.
ii. Respondent, at the time that it registered the <livingsocialshop.com> and <livingsocialshopping.com> domain names, knew or should have known of Complainant’s rights in the LIVINGSOCIAL marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
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:
(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.
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.”).
Complainant, LivingSocial, Inc., contends that it is one of the most well-known brands in the field of direct, e-mail and online sale of discounted goods and services. Complainant further asserts that it offers advertising and promotional services to promote the goods and services of others via a global computer network. Complainant contends that it currently serves customers in over 100 cities in the United States, Canada, Australia, the United Kingdom, and Ireland. Complainant argues and shows evidence that it owns a trademark registerations for the LIVINGSOCIAL mark with OHIM (Reg. No. 009082141, registered November 19, 2010) and the USPTO (e.g., Reg. No. 3,668,455, registered August 18, 2009). Therefore, the Panel finds that Complainant’s trademark registrations with the OHIM and USPTO are sufficient to establish Complainant’s rights in the LIVINGSOCIAL marks under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant argues that Respondent’s <livingsocialshop.com> and <livingsocialshopping.com> domain names are confusingly similar to Complainant’s LIVINGSOCIAL marks because merely adding the generic term “shop” or “shopping” does not distinguish the disputed domain names from Complainant’s LIVINGSOCIAL mark. The Panel finds that the addition of a generic term to Complainant’s mark is not sufficient to distinguish the dispute domain name from the mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Additionally, the Panel notes that Respondent’s disputed domain names include the gTLD “.com”. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel found that the addition of the gTLD “.com” was insufficient to differentiate a disputed domain name for a mark. Therefore, the Panel finds confusing similarity between Respondent’s domain names and Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant further argues that Respondent is not commonly known by the disputed domain names. Complainant argues that the WHOIS information identifies “livingsocialshopping.com” and “livingsocialshop.com” as the registrants of the disputed domain names. Though Respondent appears to be commonly known by the disputed domain names, Complainant contends that Respondent has not come forward with such evidence. Complainant contends that Respondent does not operate a business under the LIVINGSOCIAL name, and does not own any trademark rights or service mark rights in the LIVINGSOCIAL name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), despite what the WHOIS information states. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant contends that Respondent is not making an active use of the disputed domain names. Complainant contends that the disputed domain names do not resolve to websites with any web content. Therefore, Complainant argues that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Based upon Complainant’s arguments, the Panel finds that Respondent’s failure to make an active use of the <livingsocialshop.com> and <livingsocialshopping.com> domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has proven this element.
Complainant argues that Respondent has registered the disputed domain names in bad faith. Though Complainant has not alleged that Respondent has registered and used the disputed domain names for any of the bad faith factors listed in Policy ¶ 4(b), the Panel determines that the disputed domain names were registered in bad faith for other reasons, as the examples of bad faith set forth in Policy ¶ 4(b) are not meant to be exhaustive. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
Complainant argues that Respondent is not currently making an active use of the disputed domain names, and does not resolve the disputed domain names to any website. Therefore, Complainant asserts that Respondent has been inactively holding the disputed domain names, and urges the Panel to find that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). The Panel determines that Respondent’s failure to make an active use of the disputed domain names is evidence of Respondent’s bad faith regisrtration and use of the disputed domain names under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant further contends that Respondent had actual and/or constructive notice of Complainant’s mark, because at the time that it registered the disputed domain names, Respondent knew or should have known of Complainant’s rights in the LIVINGSOCIAL marks. Complainant argues that the LIVINGSOCIAL marks were marketed and made famous throughout the world before Respondent registered the disputed domain names, and that it made extensive use of the LIVINGSOCIAL marks prior to Respondent’s registration of the disputed domain names, evidencing constructive notice. The Panel declines to find bad faith regarding constructive notice. The Panel finds that Respondent had actual knowledge of Complainant’s marks and rights in the marks the Panel determines that Respondent registered the disputed domain names in bad faith. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <livingsocialshop.com> and <livingsocialshopping.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 19, 2012
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