Living Social Loses UDRP On LivingSocal.com: You Got To Read This One

LivingSocial, Inc just lost a UDRP on the domain name LivingSocal.com.

The panel found in a pretty strange decision, which will have Trademark groups screaming for UDRP reform, that the domain name stands for a “common term”  and means, as the domain holder suggested “living in SoCal.”

The domain also resolved differently whether it was typed in the URL with the www. before it or not.

One way, it went to a landing page with links but the domain owner said he didn’t know anything about that and the panel agreed.

Here are the relevant facts and findings by the one member panel:

Complainant owns the LIVINGSOCIAL mark and uses the mark in connection with advertising, marketing, and selling discounts for products and services online.

Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the LIVINGSOCIAL mark (e.g., Reg. No. 3,668,455 filed July 14, 2008; registered August 18, 2009).  See Complainant’s Exhibit E.

“The trademark registrations provided by Complainant for the LIVINGSOCIAL mark list “Hungary Machine, Inc.” as the owner of the mark and not Complainant, LivingSocial, Inc.  Therefore, Complainant did not establish that it owns rights in the mark under Policy ¶ 4(a)(i).”

Respondent uses the livingsocal.com  domain name to host a website describing the real estate market in Southern California and providing information regarding Respondent’s real estate practice.

The livingsocal.com domain name resolves to two different websites depending on how the Internet users access the website:

1.    If the Internet user types in “www.livingsocal.com,” Respondent’s real estate website will come up.

2.    If the Internet user types in “livingsocal.com,” the parking page comes up.

Respondent did not know that this was possible, did not have any control over the content of the parked page, and did not receive any commercial benefit.

The disputed domain name is made up of descriptive terms: “living” and “SoCal,” which is an abbreviation for “Southern California.”

Respondent did not register or use the livingsocal.com domain name in bad faith because it makes a legitimate use of the domain name in connection with Respondent’s real estate business.

The livingsocal.com domain name contains common and descriptive terms, which should prevent the Panel from finding any intent to create confusion about Complainant’s association with the disputed domain name.

“Complainant claims that it owns the LIVINGSOCIAL mark and uses the mark in connection with advertising, marketing, and selling discounts for products and services online.  ”

“Complainant argues that it owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the LIVINGSOCIAL mark (e.g., Reg. No. 3,668,455 filed July 14, 2008; registered August 18, 2009).

“The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy”

According to Respondent, he uses the livingsocal.com domain name to host a website for the purpose of providing information about the real estate market in Southern California and Respondent’s real estate practice.

Respondent argues that this is a legitimate use of the livingsocal.com domain name that constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i).

The Panel agrees with Respondent and finds accordingly.

“Respondent also claims that the <livingsocal.com> domain name resolves to two different websites depending on how the Internet users access the website.  According to Respondent, if the Internet user types in “www.livingsocal.com,” Respondent’s real estate website will come up, but if the Internet user types in “livingsocal.com,” the parking page comes up.”

Respondent asserts that it did not know that this was possible, did not have any control over the content of the parked page, and did not receive any commercial benefit. ”

“Thus, the Panel finds that Respondent is not responsible for the pay-per-click website and that this website is not evidence of Respondent’s lack of rights and legitimate interests under Policy ”

“Respondent also argues that the disputed domain name is made up of descriptive terms: “living” and “SoCal,” which is an abbreviation for “Southern California.”  Respondent alleges that Complainant does not have an exclusive monopoly on the terms on the Internet. ”

“The Panel agrees with Respondent, the Panel finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”

“The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under the Policy”

The Panel concludes that Respondent has rights or legitimate interests in the <livingsocal.com> domain name pursuant to the Policy”

The Panel further finds that Respondent has not registered or used the <livingsocal.com> domain name in bad faith since the Respondent has not violated any of the factors listed in the Policy”

“Respondent alleges that it did not register or use the <livingsocal.com> domain name in bad faith because Respondent makes a legitimate use of the domain name in connection with Respondent’s real estate business.  Respondent alleges that it provides real estate services in the Southern California area and that Respondent uses the disputed domain name to provide information regarding the real estate services in this area.”

“The Panel determines that Respondent registered and uses the <livingsocal.com> domain name for a legitimate use without the intent to create confusion, the Panel holds that Respondent did not register or use the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)”

“As noted above, Respondent asserts that, unbeknownst to Respondent, the <livingsocal.com> domain name resolved to two different websites based on how Internet users typed the domain name in to the website.  Respondent claims that, if the disputed domain name did not include the “www.” prefix, the domain name resolved to a parked website.  ”

Respondent alleges that it had no knowledge of this second website and did not profit from the hyperlinks found on the website.  Therefore, the Panel holds that Respondent is not responsible for the content under Policy ¶ 4(a)(iii).  See Ansell Ltd. v. Kovar, FA 1421538 (Nat. Arb. Forum Feb. 1, 2012 (finding that the respondent did not register or use the disputed domain name in bad faith because the respondent only parked the domain name while it prepared its website and that the respondent did not commercially benefit from the parking).

 

Moreover, Respondent claims that, even if the Panel finds that Respondent is responsible for the parked page, the registration and use of a pay-per-click website is not necessarily done in bad faith. The Panel finds that Respondent’s use of the <livingsocal.com> domain name to host a parked website is a legitimate use, the Panel holds that Respondent did not register or use the disputed domain name in bad faith according to Policy ¶ 4(b)(iv).  See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business).

 

The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms.

The Panel finds that Respondent did not register or use the livingsocal.com domain name in bad faith under Policy ¶ 4(a)(iii).  See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Comments

  1. Andrew Allemann says

    Michael, this decision isn’t far fetched at all. I’ve written about this domain name before and how the UDRP would be interesting.

    SoCal is a very common term for Southern California. Lots of web sites use it, including the popular SocalTech.com.

    Add to that that the owner lives in SoCal and is even a real estate agent there, and he has a highly plausible case for why he registered this domain name.

    This is definitely not a clear cut case of cybersquatting, so I think the panel got it right.

  2. Jimps3 says

    Ouch, a one letter “variant” even; That’s got to be a painful loss. But honestly, that’s the danger of having such a long or compound domain name using common terms; all the possible variants. …and as a side note, why wouldn’t you match up your whois data and your TM data before filing a UDRP? Maybe at least provide an exhibit with merger article or buyout or something to tie in the ownership!? This decision seems to be well thought out though; more exhibits seem to have been called for in my opinion, but Im not sure how much it would have helped given the rest of the issue.

  3. JamesD says

    Seems a fair decision to me…can’t see bad faith in how it was used (despite the Godaddy reseller ‘hijacking’ the non www. variant).

    Also, despite not being from America, I instantly associated ‘living socal’ with South California as I used to have a couple of domains with ‘socal’ in them for the same meaning. Never heard of Living Social.

  4. Michael H. Berkens says

    Andrew

    I disagree, think the opinion was poorly written and reasoned and its the same panelist by the way that took away the domain name vanity.com and gave it to the TM holder.

  5. says

    You disagree with the decision based on the fact that the opinion was poorly written and was responsible for a poor decision in a prior case?

    I grant that you said “and reasoned” but the question I have is. Where do you see the bad faith? What specifically is is that you disagree with? That living and so cal are not two generic names? That the site was not a bona fide use?

    (i)Was the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

    Arguably it was. Hell, let’s just say yes to see if we can force a UDRP win.

    (ii) you have no rights or legitimate interests in respect of the domain name; and

    Living SoCal – registrant from South California with a real estate business. There were ads on on the “non-www” that he didn’t profit from.

    Arguably it was. Hell, let’s just say yes to see if we can force a UDRP win..

    (iii) your domain name has been registered and is being used in bad faith.

    The domain name has been registered (that is true) AND is being used in bad faith….

    Attempt to extort money on sale? Divert traffic? Disrupting a competitor? Commercially benefiting from a TM?

    Hardly. Two arguables and a probably not.

    Can you elaborate how you feel all three elements should have pointed to a complainant victory? Writing style and prior decisions don’t count.

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