WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupon Inc. v. Bob Pham

Case No. D2014-1608

1. The Parties

The Complainant is Groupon Inc. of Chicago, Illinois, United States of America, internally represented.

The Respondent is Bob Pham of Hanoi, Ha Noi, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <grouponmerchantcenter.com> (“Disputed Domain Name”) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2014. On September 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 the Respondent of the Complaint, and the proceedings commenced on September 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2014.

The Center appointed Andrea Dawson as the sole panelist in this matter on October 30, 2014. 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

The Complainant, Groupon, is a worldwide leader in local commerce. Across six continents, Groupon offers hundreds of daily deals on restaurants and local businesses to over 53.2 million active customers and has over 200 million subscribers worldwide. The Complainant offers daily deals in hundreds of markets in North and South America, Europe, Africa, Asia, and Australia. Specifically, Groupon currently operates in over 48 countries worldwide, including over 1,000 cities, with new markets being added regularly. Groupon has worked with over 500,000 merchants worldwide and has sold nearly 400 million deals since its inception.

The Complainant’s deals are primarily offered online using its <groupon.com> domain name and website, as well as related websites. Each day, hundreds of thousands of users visit Groupo’s web sites to browse and purchase the deals available. When users visit the Complainant’s website, they are offered a variety of deals and discounts that they can purchase based on their location – the Complainant offers deals specific to regions and cities, thus allowing users to receive deals that are relevant to them, which saves users the time and effort of sifting through the thousands of deals that Groupon offers.

Since at least October 2008, the Complainant has prominently and continuously used the GROUPON mark, alone and in combination with other marks, to provide coupons, rebates, and discount information to online users.

The Complainant is the owner of a number of trademarks among them is the following:

- USPTO Registration GROUPON No. 3685954 dated September 22, 2009

- USPTO Registration GROUPON & design No. 4222645 dated October 9, 2012

- USPTO Registration GROUPON VIP No. 4309987 dated March 26, 2013

The disputed domain name <grouponmerchantcenter.com> was registered on February 21, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant states that it satisfies paragraph 4(a)(i) of the Policy because the Disputed Domain Name is identical or confusingly similar to the GROUPON mark. The Complainant has registered the GROUPON trademark across numerous countries, including the United States. The Complainant uses the GROUPON mark across a variety of platforms, including Internet sites and mobile devices, and the trademark is a critical component of the Complainant’s business and branding strategies.

The Complainant indicates that in registering the Disputed Domain Name <grouponmerchantcenter.com>, the Respondent has captured the Complainant’s GROUPON trademark in its entirety and merely added generic and/or descriptive terms to Complainant’s GROUPON mark, thereby making the Disputed Domain Name confusingly similar to Complainant’s trademark. Additionally, the terms used and added by the Respondent are closely linked and associated with Complainant’s brand and trademark, which only increases the level of confusing similarity.

The Complainant further adds that the Respondent has never gone by the name Groupon and has made no effort to use the name. The Respondent registered the domain name well after the Complainant acquired trademark rights in the GROUPON mark and was using it worldwide in 2008. The Respondent has no rights or legitimate interests in using the GROUPON mark for this purpose. The Respondent is not authorized to use the GROUPON mark and cannot claim any rights or legitimate interest in the same.

The Complainant states that it has not licensed or otherwise authorized the Respondent to use its trademark. The Complainant further adds that the Respondent has never been commonly known with such name.

The Complainant claims that the Respondent is using the Disputed Domain Name to redirect Internet users to websites featuring generic links to third-party websites. The Respondent presumably receives pay- per-click fees from these linked websites. As such, the Respondent is not using the Disputed Domain Name to provide a bona fide offering of goods or services as allowed under Policy, paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy, paragraph 4(c)(iii).

The Complainant claims that the Respondent is using the Disputed Domain Name <grouponmerchantcenter.com>, to redirect unsuspecting Internet users to websites featuring advertising links to third-party websites, and presumably receives pay-per-click fees in the process. The Respondent, by registering a domain name that is confusingly similar to the Complainant’s GROUPON trademark, is thus using the fame of the Complainant’s trademarks to improperly increase traffic to the website listed at the Disputed Domain Name for Respondent’s own commercial, pecuniary gain.

The Complainant indicates that the GROUPON brands are known internationally. The Respondent’s registration of <grouponmerchantcenter.com>, which contains the Complainant’s famous GROUPON trademark in its entirety, which was registered significantly after the Complainant’s first use of the trademark and filing of the trademark with the USPTO, demonstrates that the Respondent is very familiar with the Complainant and possesses a thorough knowledge of the GROUPON brand and business, thus, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the Disputed Domain Name was registered.

The Complainant further states that the Respondent is a serial cyber squatter and has repeatedly registered domain names containing trademarks of other entities in order to capitalize on the goodwill developed by others. This behavior has led to multiple UDRP proceedings and the transfer of the Respondent’s domain names under those proceedings. In 2014 alone, at least 5 separate UDRP proceedings have resulted in disputed domain names being transferred away from the Respondent.

The Complainant finally adds that the Respondent, at the time of initial Complaint filing, had employed a privacy service to hide its identity, which is considered evidence of bad faith registration and use. Past UDRP panels have found this to be a factor in finding bad faith registration and use of a disputed domain name.

Consequently, in view of the above-mentioned circumstances, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered the disputed domain name in bad faith. The Complainant requests that the Panel order transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:

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

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name;

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

A. Identical or Confusingly Similar

The Complainant has been able to demonstrate that it has rights to the trademark GROUPON.

The Disputed Domain Name consists of the term “groupon”, with the addition of the generic terms “merchant” and “center”. As indicated by the Complainant, previous UDRP panels have found that the mere addition of a generic term to a trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark, since the Internet user seeks the trademark and not a generally used term.

Furthermore, the terms “merchant” and “center” are a terms commonly used by the Complainant (see Complaint, annex 8), consequently, the addition of such terms instead of providing certain distinguishability it does the contrary, create a further confusion with the Complaint’s trademark.

For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.

However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name.

The present Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard.

The Panel accepts the arguments of the Complainant that the Respondent has not been authorized by the Complainant to use its trademark, or to seek registration of any domain name incorporating said mark and that the Respondent has no prior rights or legitimate interests in the domain name.

Furthermore, the Panel finds that the Respondent is neither commonly known by the name “Groupon” or “Groupon merchant center” nor in any way affiliated with Complainant, nor authorized or licensed in any other way to use the GROUPON trademark.

The Respondent has not provided any proof that he is using the disputed domain name in connection with a bona fide offering of goods or services; nor is the proof that he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.

The Panel finds that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the Disputed Domain Name with the knowledge of the Complainant’s rights in the Complainant’s trademarks and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain name.

Firstly, “groupon” is not a common term in any language. It has no official meaning in any language, to the knowledge of this Panel. Therefore, one can assume that it is a coined word. Consequently, as mentioned by the Complainant, it is unlikely that the Respondent was unaware of the Complainant when the Disputed Domain Name was registered. Furthermore the Panel finds that it is impossible to conclude that the Respondent did not have the Complainant’s trademark in mind when registering the Disputed Domain Name, especially when reviewing the screenshots provided in the Complaint one can clearly see that the mentions are relating to “deals of the day”, deals groupon”, catch of the day” etc., which indicates that the Respondent had perfect knowledge of the Complainant’s existence and the services it provided. It cannot be a mere coincidence that the website at the Disputed Domain Name offered the same services as those of the Complainant. Furthermore, the Disputed Domain Name refers to a service provided by the Complainant, see annex 8 of the Complaint.

In addition to the above, the Complainant sent a cease and desist letter to the Respondent, indicating that it was the owner of the trademark GROUPON and requesting to cease in the use of the Disputed Domain Name. No response was received from the Respondent until date.

Finally, as mentioned by the Complainant, the Respondent can be considered a serial cybersquatter since he has repeatedly registered domain names containing trademarks of other trademark owners. This behavior has led to multiple UDRP proceedings and the transfer of the Respondent’s domain names under those proceedings being transferred away from the Respondent. These cases are sufficient evidence that the Respondent has engaged in a continuing pattern of bad faith registrations and use. See; FIL Limited v. PrivacyProtect.org, Domain Admin / Bob Pham, WIPO Case No. D2014-0991; LEGO A/S v. Domain Admin / Bob Pham, WIPO Case No. D2014-0761; Clarins v. Bob Pham / Domain Admin Privacy Protection Services Inc d/b/a Privacyprotect.org, WIPO Case No. D2014-0823; Homer TLC, Inc. v. Bob Pham NAFClaim No. 1556046; AlliedBarton Security Services LLC v. Privacyprotect.org, Domain Admin / Bob Pham, WIPO Case No. D2013-2109.

In view of the above, it is clear to the Panel that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.

For the above-cited reasons, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <grouponmerchantcenter.com> be transferred to the Complainant.

Andrea Dawson
Sole Panelist
Date: November 10, 2014