Complainant is Hungry Machine, Inc. of Washington D.C., United States of America, represented by FairWinds Partners, LLC, United States of America.
Respondent is Zhao Fuzhi of GuangZhou, Guangdong, China. 2. The Domain Names and Registrars
The disputed domain name is registered with Melbourne IT Ltd. The disputed domain name is registered with Guangzhou Ming Yang Information Technology Co., Ltd. (the “Domain Names”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2011. On July 14, 2011, the Center transmitted by email to Melbourne IT Ltd and Guangzhou Ming Yang Information Technology Co., Ltd. a request for registrar verification in connection with the Domain Names. On July 15, 2011 and July 19, 2011, Melbourne IT Ltd and Guangzhou Ming Yang Information Technology Co., Ltd. transmitted respectively by email to the Center their verification responses confirming that Respondent is listed as the registrant and providing the contact details. On July 20, 2011, the Center transmitted an email communication to the parties in Chinese and English regarding the language of the proceeding of the disputed domain name . On the same day, Complainant confirmed its request that English be the language of the proceeding. On July 21, 2011, the Center received two email communications from Respondent, however, Respondent did not comment on the language of the proceeding.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on July 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2011. On August 16, 2011, the Center confirmed that it did not receive any formal Response from Respondent except for the email communications received on July 21, 2011.
The Center appointed Yijun Tian as the sole panelist in this matter on September 2, 2011. 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 A. Complainant
Complainant, Hungry Machine, Inc. is a company incorporated in of Washington D.C., United States of America (“U.S.A.”). Complainant is the owner of the distinctive and famous LIVINGSOCIAL trade marks (the “LIVINGSOCIAL Marks”), including U.S.A. (since 2009) (Exhibit E to the Complaint).
Complainant uses 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, and enjoyed a widespread reputation. And Complainant has been the subject of extensive media coverage. Complainant also owns (since 2008), , and many other domain names, which contained the trade mark LIVINGSOCIAL. B. Respondent
Respondent registered on December 2, 2010, and the disputed domain name was registered on September 30, 2010, which are long after Complainant operated a web site at “www.” since 2008. 5. Parties’ Contentions A. Complainant
(a) The Domain Names are identical or confusingly similar to the LIVINGSOCIAL Marks under the Policy, paragraph 4(a)(i).
Respondent’s Domain Names are confusingly similar, on their face, to Complainant’s registered and distinctive LIVINGSOCIAL Marks.
Internet users will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the Domain Names.
Respondent in the present dispute initially attracts Internet users to its website at the Domain Name by using an identical or confusingly similar copy of Complainant’s LIVINGSOCIAL Marks, thereby making visitors to its website think that they are being linked to one of Complainant’s legitimate sites.
As for the Domain Name , it is obvious that Respondent is attempting to confuse Internet users who may forget to type a period between the word “livingsocial” and the top-level “.com” portion of the domain name.
(b) Respondent has no rights or legitimate interests in the Domain Names Under the Policy, paragraph 4(a)(ii).
Respondent’s actions are not a bona fide offering of goods or services under the Policy, paragraph 4(c)(i).
With respect to the domain, through the use of a classic pay-per-click website, Respondent’s domain diverts Complainant’s customers and potential customers to Respondent’s website and to other websites which are not associated with Complainant and, in some cases, may be associated with Complainant’s competitors.
As for the domain, where a domain is identical or confusingly similar to a well known trademark yet does not resolve to any website, panels have not hesitated to hold that no legitimate interest exists on the part of a respondent.
Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to the Policy, paragraph 4(a)(ii).
Respondent is not commonly known by any of the Domain Names and so its actions do not fall within The Policy, paragraph 4(c)(ii).
Respondent is not making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain, and so its actions do not fall within the Policy, paragraph4(c)(iii). Instead, Respondent is using the Domain Names to confuse and misleadingly divert consumers, or to tarnish the Marks.
Respondent’s use has tarnished and diluted the Marks
(c) Respondent Registered The Domain Names In Bad Faith Under the Policy, paragraph 4(a)(iii).
Complainant filed a prior UDRP complaint against this Respondent regarding the domain , which was withdrawn by Complainant after reaching a negotiated settlement with Respondent (see Exhibit H to the Complaint) by which Respondent transferred the domain name to Complainant.
However, despite a prohibition in the settlement agreement on Respondent’s owning of other domain names which are similar to Complainant’s domain names, Respondent had the audacity to offer to sell the Domain Name to Complainant. This is an obvious case of extreme bad faith cybersquatting.
Respondent intentionally used the LIVINGSOCIAL Marks without consent from Complainant.
The content on Respondent’s website “www.” reveals that Respondent has actual knowledge of the LIVINGSOCIAL Marks and Complainant’s services associated with the mark and is purposefully trading on the LIVINGSOCIAL Marks.
Respondent is obtaining commercial gain from its use of the website “www.”.
With respect to the Domain Name , Respondent has no website affiliated with this domain and has merely passively held the domain name.
Complainant has operated a website at “www.” since 2008, long before Respondent registered the Domain Names. B. Respondent
Respondent has not submitted a formal Response but replied by email in Chinese on July 21, 2011.
(a) Respondent claimed that Respondent registered and owns the Domain Names legitimately. The registration of the Domain Names meets the registration requirements of the China Internet Network Information Center (“CNNIC”). Therefore, Respondent has not illegally registered the Domain Names.
(b) Respondent admitted that Respondent is selling the Domain Names. According to the relevant regulations in CNNIC, this conduct is legitimate and normal business conducts.
(c) A few domain names of Complainant have been obtained through arbitration process. Complainant is not a company which pay sufficient attention to domain name protection.
(d) Arbitration process is costly and is bad for the image of Complainant.
(e) Respondent is willing to get the issue settled and transfer the Domain Names to Complainant under a fair basis and through friendly negotiation. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain name is English, and the language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) The Domain Names are each composed of words which are clearly recognized in the English language. Respondent’s facility with the English language is evident in its ability to intentionally create and use the Domain Names;
(b) Respondent has engaged in a series of emails with Complainant’s attorney in the English language relating to another cybersquatted domain name (see Exhibits G 1-3 to the Complaint);
(c) Respondent has signed a Domain Names Transfer Agreement in the English language relating to the domain name and did, in fact, transfer that domain to Complainant (see Exhibit H to the Complaint);
(d) Respondent’s website under the Domain Name appears entirely in the English language (see Exhibit F-1 to the Complaint);
(e) Complainant’s business is headquartered in the U.S.A. and many of its most prominent websites operate in English. Respondent clearly had the ability to understand Complainant’s websites and create the Domain Names.
(f) Respondent is capable of communicating in the English language and is targeting the English-language market.
(g) It would be inequitable for Respondent to now hide behind a language requirement, other than English, and the additional cost and burden this would impose upon Complainant is not warranted.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be 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). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company incorporated in the U.S.A., and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the Domain Names include English words “living”, “social” and “family” (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the Domain Names and are registered in Latin characters and particularly in English language, rather than Chinese script; (b) Respondent has engaged in a series of emails with Complainant’s attorney in the English language relating to another cybersquatted domain (see Exhibits G 1-3 to the Complaint); (c) Respondent has signed a Domain Names Transfer Agreement in the English language relating to the domain name and did, in fact, transfer that domain name to Complainant (see Exhibit H to the Complaint); (d) Respondent’s website under the Domain Name appears entirely in the English language, and appears to have been directed to Internet users in worldwide (particularly English speakers) rather than Chinese speakers; (see Exhibit F-1 to the Complaint); (e) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (f) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the Domain Names should be transferred:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the LIVINGSOCIAL Marks acquired through registration. The LIVINGSOCIAL Marks have been registered worldwide including in United States (See Exhibit E) and it has a widespread reputation in the field of direct, email and online sale of discounted goods and services.
The Domain Names and comprise the LIVINGSOCIAL LIVINGSOCIAL Marks in its entirety. The Domain Name only differs from the LIVINGSOCIAL Marks by the addition of the Latin characters “com”. The Domain Name only differs from the LIVINGSOCIAL Marks by the addition of the words “family”. The Panel finds that this does not eliminate the similarity between Complainant’s registered LIVINGSOCIAL Marks and the Domain Names.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; and PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Claim No. 0500065).
Mere addition of the descriptive term “family” or Latin character “com” as a suffix to Complainant’s mark fails to distinguish. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the Domain Names and the LIVINGSOCIAL Marks in which Complainant has rights.
The Panel therefore holds that Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the Domain Names:
(i) use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the Domain Names; or
(iii) legitimate noncommercial or fair use of the Domain Names.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the LIVINGSOCIAL Marks in the European Union and the U.S.A.. Complainant currently serves customers in over 100 cities in the U.S.A., Canada, Australia, the United Kingdom of Great Britain and Northern Ireland and Ireland and is adding cities and countries all the time. Complainant has also been the subject of extensive media coverage, such as the New York Times, CNN.com. Complainant has also registered and uses the domain name (since 2008), as well as many other domain names that include the LIVINGSOCIAL Marks, such as , (Exhibit D to the Complaint).
Moreover, according to Complainant, Respondent is not authorized dealer of LIVINGSOCIAL-branded products. Complainant has therefore established a prima facie case that Respondents have no rights or legitimate interests in the Domain Names and thereby shifted the burden to Respondents to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondents have no rights or legitimate interests in the Domain Names:
(a) There has been no evidence adduced to show that Respondent is using the Domain Names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the Domain Names or reasons to justify the choice of the word “Livingsocial” in its business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the LIVINGSOCIAL Marks or to apply for or use any domain name incorporating the LIVINGSOCIAL Marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the Domain Names. There has been no evidence adduced to show that Respondents have any registered trademark rights with respect to the Domain Names. The Domain Name was registered on December 28, 2010 and the Domain Name was registered on September 30, 2010. The Domain Names are identical or confusingly similar to Complainant’s LIVINGSOCIAL Marks.
(c) There has been no evidence adduced to show that Respondents are making a legitimate noncommercial or fair use of the Domain Names.
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the Domain Names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Names in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Names; or
(ii) Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondents have registered and used the Domain Names in bad faith. (a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the LIVINGSOCIAL Marks with regard to its products and business model. Complainant has registered its LIVINGSOCIAL Marks in many countries, including registration in U.S.A. since 2009. Complainant has registered since 2008. Complainant has also been the subject of extensive media coverage. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Names (in September and December 2010). The Panel therefore finds that the Domain Names are not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith. (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).” Thus, the Panel concludes that the Domain Names were registered in bad faith with the intent to create an impression of an association with Complainant’s LIVINGSOCIAL branded products and business model. (b) Used in Bad Faith
With respect to , Complainant has adduced evidence to prove that by using a confusingly similar Domain Name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites. Complainant claimed that the “resolves to a classic pay-per-click website with links to other websites, some of which lead to Complainant’s website and some possibly to the websites of Complainant’s competitors” (see also Exhibit F to the Complaint), and “Respondent’s generation of click-through or forwarding fees from its operation of the website alone constitutes commercial gain.”
To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
Given the widespread reputation of the LIVINGSOCIAL Marks, the Panel finds that the public is likely to be confused into thinking that the Domain Name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed Domain Name is resolved. In other words, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the LIVINGSOCIAL Marks. Noting also that apparently no clarification as to Respondents’ relationship to Complainant is made on the homepage of the Domain Name , potential partners and end users are led to believe that the Domain Name is either Complainant’s site or the site of official authorized partners of Complainant, which they are not. Moreover, Respondents did not respond formally to the Complaint. The Panel therefore concludes that the Domain Name was used by Respondents in bad faith.
With respect to , based on the information provided by Complainant, the Domain Name is currently inactive. In terms of inactive domain name, WIPO Overview 2.0, paragraph 3.2 notes:
“With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith”.
WIPO Overview 2.0, paragraph 3.2 further states:
“The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
Based on information provided by Complainant, Complainant is one of the most well-known brands in the field of direct, email and online sale of discounted goods and services. Complainant currently serves customers in over 100 cities worldwide (as introduced above). Complainant has registered LIVINGSOCIAL as its EU Trade Mark since 2010 and as its US Trade Mark since 2009. Complainant has registered and uses the domain name since 2008(as introduced above). Moreover, Complainant has been the subject of extensive media coverage, such as the New York Times, CNN.com. Therefore, Complainant’s LIVINGSOCIAL Marks, arguably, are widely known trademarks. Further, based on the information provided by the Center, no formal response to the Complaint has been filed by Respondent. Therefore, the inactive Domain Name has arguably been used in bad faith also.
In summary, Respondents, by choosing to register and use Domain Names, which are confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondents, the choice of the Domain Names and the conduct of Respondents as far as the websites on to which the Domain Names resolve are indicative of registration and use of the Domain Names in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) 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 Domain Names and be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: September 12, 2011
Full & Egal Universal Law Academy