WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupon, Inc. v. Oneandone Private Registration and Nathaniel Zapata, Ngcamp
Case No. D2015-1716
1. The Parties
Complainant is Groupon, Inc. of Chicago, Illinois, United States of America ("United States"), represented by Greenberg Traurig, LLP, United States.
Respondents are Oneandone Private Registration of Chesterbrook, Pennsylvania, United States and Nathaniel Zapata, Ngcamp of Hudson, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <grouponlatino.com> (the "Domain Name") is registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 25, 2015. On September 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 30, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 1, 2015 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 6, 2015. The Center received an email communication from Respondent Nathaniel Zapata, Ngcamp asking for an explanation and "to amend this dispute" on October 2, 2015.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2015. Respondent did not submit any formal response. Accordingly, the Center notified Respondent's default on November 4, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 6, 2015. 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
Complainant describes itself as "a global leader of local commerce and the place you start when you want to buy just about anything, anytime, anywhere." Complainant states that, "by leveraging [its] global relationships and scale, Groupon offers consumers a vast marketplace of unbeatable deals all over the world." Complainant operates in 47 countries and has more than 250 million subscribers. At its main website, "www.groupon.com", Complainant receives more than 150 million unique visitors per month, and more than 100 people have downloaded Complainant's mobile apps.
Complainant holds many trademark registrations in the United States and elsewhere for its GROUPON and GROUPON-formative marks, including at least one mark for GROUPON registered with the United States Patent and Trademark Office as early as September 2009. Complainant's first use of the GROUPON mark in commerce goes back at least as far as 2008.
Respondent registered the Domain Name on February 17, 2015. The Domain Name resolves to a blank "error" web page.
Complainant sent Respondent a cease-and-desist letter on July 27, 2015, demanding among other things that Respondent transfer the Domain Name to Complainant. There is no evidence that Respondent ever answered this letter.
5. Parties' Contentions
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. As respects Respondent's apparent lack of any use of the Domain Name to date, Complainant argues that, under the precedent of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Respondent's "passive use" of the Domain Name may, under the circumstances of this case, be regarded as bad faith registration and use of the Domain Name.
Respondent did not formally reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name 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.
A. Identical or Confusingly Similar
Complainant holds rights, through registration and use, in the mark GROUPON. Further, the Panel concludes that the Domain Name is confusingly similar to that mark. The addition of the descriptive word "latino" to the strong and distinctive GROUPON mark does not diminish the confusing similarity between the mark and the Domain Name. Rather, the Domain Name gives the unmistakable, albeit false, impression that it will point Internet users to a website offering Complainant's services to the Latino community.
The Panel concludes that Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Complainant has not authorized Respondent to use its GROUPON mark in a domain name. Not having responded to either the cease-and-desist letter sent by Complainant or the Complaint in this proceeding, Respondent has not come forward with any assertion, much less evidence, of any bona fide basis for having registered the Domain Name, and the Panel on this record can discern no such legitimate interest.
The Panel concludes that Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website 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 website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith within the meaning of Policy paragraph 4(b). As respects bad faith registration, the Panel finds it very likely that Respondent had Complainant's distinctive and widely-known GROUPON mark in mind when registering the Domain Name. There is simply no reason in the record or in common sense to conclude otherwise.
As respects bad faith use, the Panel finds that this case fits well within the ambit of the longstanding Telstra doctrine. Although the Telstra case has probably been invoked inappropriately as often as it has been properly invoked over the years, the present case seems a proper invocation of Telstra. A core principle emerging from Telstra is that, where a respondent has not put a domain name to active use but merely parks it at a blank web page, "it is possible, in certain circumstances, for inactivity by the respondent to amount to the domain name being used in bad faith."
As in Telstra, Complainant here holds a strong and distinctive mark that has attained a considerable degree of fame. As in Telstra, Respondent here has made no effort to identify, much less prove, "any actual or contemplated good faith use by it of the Domain Name." In sum, based on the record before this Panel and in the words of the Telstra panel, "it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate…".
The Panel concludes that Complainant has established paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <grouponlatino.com> be transferred to Complainant.
Robert A. Badgley
Date: November 6, 2015