WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupon, Inc. v. Lee Crellin, National Airport Parking

Case No. D2016-0118

1. The Parties

Complainant is Groupon, Inc. of Chicago, Illinois, United States of America (“United States”), represented by Greenberg Traurig, LLP, United States of America.

Respondent is Lee Crellin, National Airport Parking of Manchester, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <grouponairportparking.com> is registered with Webfusion Ltd trading as 123-reg (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2016. On January 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 12, 2016.

The Center appointed Leon Trakman as the sole panelist in this matter on February 16, 2016. 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 is a global business directed at sales of a variety of goods and services to consumers. It operates in 47 countries, in over 500 markets, with over 250 million subscribers worldwide, almost 12,000 employees worldwide and gross income exceeding USD 7 billion in the 12 months preceding this dispute. Complainant owns multiple trademark registrations for trademarks incorporating its world-known GROUPON trademark with the United States Patent and Trademark Office (“USPTO”) in connection with the marketing of its services, including multiple registrations in the United States including a federal trademark registration for GROUPON, as well as registrations in the European Union.

Complainant’s website at “www.groupon.com” has more than 150 million monthly visitors, including approximately 77 million in North America, and more than 100 million people worldwide have downloaded Complainant’s mobile applications. Complainant also operates a website specifically targeted at consumers in the United Kingdom, through “www.groupon.co.uk” and “www.groupon.com”. On these websites, Complainant prominently uses its GROUPON trademark, and features general information regarding its various products and services, including airport parking and other transportation-related and parking services.

Respondent registered the disputed domain name <grouponairportparking.com> on April 6, 2015. The disputed domain name resolves to a website offering airport parking services.

5. Parties’ Contentions

A. Complainant

First, Complainant alleges that Respondent’s disputed domain name <grouponairportparking.com> is confusingly similar to Complainants trademark. It contends that the disputed domain name incorporates Complainant’s GROUPON mark in full, changing the mark only by adding the generic term “airport parking” after Complainant’s GROUPON mark and the generic Top-Level Domain (“gTLD”) “.com”.

Second, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. In particular, Complainant has not authorized, licensed, or consented to Respondent’s registration and use of domain names incorporating Complainant’s GROUPON trademark.

Third, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. In particular, Respondent had reasonable knowledge of Complainant’s famous GROUPON mark, that Respondent engaged in a pattern of conduct in registering other domain names using Complainant’s trademark, and that Respondent used the disputed domain name to attract Internet users to its website, advertising airport parking in direct competition to Complainant’s business.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name <grouponairportparking.com> incorporates Complainant’s GROUPON mark in full, changing the mark only by adding the generic term “airport parking” after Complainant’s GROUPON mark and the gTLD “.com”. Numerous prior UDRP panels have held that the mere addition of a gTLD, and generic terms to a complainant’s mark fails to produce a domain name distinct from a complainant’s mark. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).

Accordingly, the Panel determines that Respondent has registered and is using the disputed domain name, <grouponairportparking.com>, which is confusingly similar to Complainant’s GROUPON mark, and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Respondent registered the disputed domain name without Complainant’s authorization or consent. In particular, Complainant has not authorized, licensed, or consented to Respondent’s registration and use of domain names incorporating Complainant’s GROUPON mark.

Respondent used the disputed domain name that is confusingly similar to Complainant’s famous trademark to provide access to a website offering airport parking services that compete directly with Complainant. See Moana Pacific Fisheries Limited v. Turner New Zealand, WIPO Case No. D2000-0139 (finding that respondent’s use of the <moanapacific.com> domain name, which was confusingly similar to Complainant’s trademark only to host a website that competed with complainant did not demonstrate respondent’s rights or legitimate interests in the domain name); see also Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346 (finding that the diversion of traffic through the use of domain names that are confusingly similar to complainant’s mark to offer competitive goods and services illustrates that respondent has no rights or legitimate interests in the domain names).

Furthermore, there are no mitigating factors that indicate that Respondent has any rights or legitimate interests in the dispute domain name. Indeed, the Panel finds no evidence on the record establishing that Respondent has any prior trademark applications or registrations of any mark incorporating GROUPON. Nor is there any information in the publicly available WhoIs records indicating that Respondent is commonly known by the name “Groupon” or anything similar thereto. In registering it as “Lee Crellin / National Airport Parking”, without further evidence on the record, it is reasonable to assume that Respondent was not commonly known by the disputed domain name and lacked a right or legitimate interest in it.

It is reasonable to infer, in the absence of evidence to the contrary, that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding no rights or legitimate interests where respondent was not commonly known by the domain name in question); Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020 (finding no rights or legitimate interests where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name).

Accordingly, the Panel holds that Respondent has no rights or legitimate interests in the disputed domain name and Complainant has satisfied the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel determines that Respondent has registered and used the disputed domain name in bad faith for the following reasons.

First, it is reasonably clear that Respondent had reasonable knowledge of Complainant’s famous GROUPON mark, as evidenced by Respondent’s registration of a domain name incorporating the GROUPON mark in full, giving rise to a reasonable inference, although not a determination, of bad faith registration. See, for example, Singapore Airlines Limited. v. P&P Servicios de Communicacion S.L., WIPO Case No. D2000-0643 in which the panel held that “[t]he domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection with the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cyber-squatting’”. In the instant case, the disputed domain name is so evidently connected to Complainant’s trademark and business that it is reasonable to conclude that its use by someone who has no connection to Complainant constitutes opportunistic bad faith. See The Elizabeth Taylor Cosmetics Company v. NOLDC, Inc, WIPO Case No. D2006-0800 (finding that the <elizabethtaylorperfume.com> domain name was so obviously connected with complainant, who sold perfume under the ELIZABETH TAYLOR trademark, that it suggested opportunistic bad faith). See also Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.

Second, further evidence that Respondent had reasonable knowledge of Complainant is that, at the time of registering the disputed domain name, Complainant’s trademark was registered with a principal register, namely, the USPTO and in the European Union. See Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D. Fla. 2001) (noting that “a Principal Register registration of a trademark or service mark is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. section 1072). Even if Respondent were able to claim lack of knowledge, bad faith can exist when a search of the trademarks registry would reveal the registration rights of a complainant. See, e.g., Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (“[h]ad Respondent done a trademark search at the time Respondent registered the domain name at issue, Respondent would have received notice of Complainant's pending application for registration”).

Third, Respondent has engaged in a pattern of conduct in registering other domain names that incorporate Complainant’s famous GROUPON mark, including the domain name <grouponairportparking.co.uk>. Such replication of domain names based on Complainant’s famous trademark constitutes reasonable evidence that Respondent has engaged in a pattern of conduct directed at violating Complainant’s world known trademark, contrary to paragraph 4(b)(ii) of the Policy. See General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452; and Time Warner Entertainment Company, L.P. v. HarperStephens, WIPO Case No. D2000-1254.

Fourth, and in support of the third reason above, Respondent engaged in a pattern of bad faith conduct in regard to other famous trademarks, including registering <amazonairportparking.com> and <ebayairportparking.com>, demonstrating its opportunistic use of the AMAZON and EBAY trademarks to attract customers to its websites. Various UDRP panels have found that such patterns of registration of domain names of other well-known trademarks constitute evidence of bad faith registration and use of the domain name at issue. See NFL Properties, Inc. et al. v. Rusty Rabe, WIPO Case No. D2000-0128; Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409.

Fifth, Respondent engaged in bad faith use of the disputed domain name. This is evident in Respondent’s use of that name to offer for sale airport parking services in direct competition with Complainant, contrary to paragraph 4(b)(iv) of the Policy. See America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“In the Panel’s opinion it would be unconscionable to find that a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to Complainant’s mark and for the same business”).

Sixth, there is ample authority in prior UDRP panel determinations that Respondent’s conduct above constitutes bad faith use of the disputed domain name. See Nokia Corporation v. Private, WIPO Case No. D2000-1271 (finding bad faith registration and use pursuant to Policy, paragraph 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under complainant’s famous mark); see also The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474 (finding that competitor’s registration of a domain name incorporating complainant’s trademark, where competitor had no rights or legitimate interests in complainant’s trademark, and used the domain name to sell goods in competition with complainant constituted bad faith registration and use of the domain name and was “further evidence of Respondent’s efforts to take a free ride on Complainant’s reputation and goodwill”); see also Ticketmaster Corporation v. Woofer Smith, supra (finding that respondent’s registration of a domain name similar to complainant’s trademark and use of it to sell competing goods constituted a deliberate disruption of the business of complainant by directing consumers seeking complainant’s website and services to a competitor, and also seeks commercial gain through the use of complainant’s mark, which evidences respondent’s bad faith registration and use of the domain name).

Seventh, Respondent’s bad faith is further evidenced in Respondent’s failure to respond to an email and letter from Complainant, sent by courier to the postal address provided by Respondent upon registration of the disputed domain name. That letter advised that the disputed domain name infringed Complainant’s trademark, and demanded that Respondent cease and desist from all use of Complainant’s GROUPON mark and transfer the disputed domain name to Complainant. Respondent failed to respond to the referenced notice and to the cease and desist demand. See America Online, Inc. v. Viper, WIPO Case No. D2000-1198; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.

Accordingly, based on the totality of evidence examined, the Panel concludes that the disputed domain name was registered and is being used in bad faith, and that Complainant has satisfied the Policy, paragraph 4(a)(iii).

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 <grouponairportparking.com> be transferred to Complainant.

Leon Trakman
Sole Panelist
Date: February 19, 2016