WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupon, Inc. v. Tara Joplin

Case No. D2016-0130

1. The Parties

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

The Respondent is Tara Joplin of St. Louis, Missouri, United States.

2. The Domain Names and Registrar

The disputed domain names <travelgroupon.com> and <yogagroupon.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2016. On January 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On January 22, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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”).

On January 22, 2016, prior to the commencement of the proceedings, the Center received from the Respondent an email communication. On January 25, 2016, the Center acknowledged receipt of the Respondent’s communication. On the same day, the Complainant transmitted an email communication to the Respondent. On January 26, 2016, the Center acknowledged receipt of the Complainant’s communication and provided information to the Parties regarding suspension of the proceedings. On February 2, 2016, the Center reminded the Parties that the proceedings would continue unless it received a request for suspension. On February 2, 2016, the Complainant confirmed that it would not request suspension at that time.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2016. On February 7, 2016, the Respondent transmitted to the Center an email communication. The Respondent did not otherwise submit any response.

The Center appointed Lynda M. Braun as the sole panelist in this matter on February 29, 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

The Complainant is a global e-commerce marketplace connecting millions of subscribers with local merchants by offering activities, travel, goods and services at discounted prices in countries all over the world. The Complainant launched its business in 2008 in Chicago, followed soon thereafter by Boston, New York City and Toronto. By the end of March 2015, the Complainant provided goods and services to more than 500 markets worldwide and featured more than 425,000 active deals globally. The Complainant has over 250 million subscribers and approximately 12,000 employees worldwide.

The Complainant has a registered trademark for GROUPON on the Principal Register of the United States Patent and Trademark Office (“USPTO”) in connection with the marketing of its goods and services, registered on September 22, 2009, and also has numerous trademark registrations on the Principal Register of the USPTO that incorporate the GROUPON trademark (collectively, the “GROUPON Mark”). In addition, the Complainant has trademark registrations for the GROUPON Mark in at least fifty other countries around the world. Thus, the GROUPON Mark has become distinctive and famous in connection with the Complainant’s e-commerce business.

The Complainant operates its official website at “www.groupon.com” where more than 100 million people worldwide have downloaded its mobile applications. On its website, the Complainant prominently uses its GROUPON Mark and features general information regarding its various goods and services, including travel and yoga services.

The Respondent registered the Disputed Domain Names, <travelgroupon.com> and <yogagroupon.com>, on June 4, 2010 and June 2, 2010, respectively. The Disputed Domain Names resolve to the Registrar’s parking page as evidenced by the Complainant.

On August 4, 2015, the Complainant’s attorney sent a cease and desist letter to the Respondent by email, informing the Respondent of the Complainant’s rights in its GROUPON Mark and demanding that the Respondent transfer the Disputed Domain Names to the Complainant. The Respondent did not respond to the letter.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Names are confusingly similar to the Complainant’s trademark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

- The Disputed Domain Names were registered and are being used in bad faith.

- The Complainant seeks the transfer of the Disputed Domain Names from the Respondent in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Names transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i)-(iii)):

(i) The Disputed Domain Names are 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 Names; and

(iii) The Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the GROUPON Mark based on longstanding, continuous use as well as its trademark registrations for the GROUPON Mark in the United States and numerous countries worldwide. The Disputed Domain Names consist of the GROUPON Mark in its entirety preceded by the descriptive terms “travel” and “yoga”, followed by the generic Top-Level Domain (“gTLD”) “.com”.

It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic word. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. The addition of the descriptive words “travel” and “yoga” does nothing to distinguish the Disputed Domain Names from the Complainant’s GROUPON Mark. See, e.g., Eveready Battery Company, Inc. v. Ho Nim, WIPO Case No. D2010-1799 (the addition of a descriptive word to a well-known trademark does not prevent a finding of confusing similarity).

This is especially true where, as here, the descriptive or generic words “travel” and “yoga” are associated with the Complainant and its services. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).

Finally, the addition of a gTLD such as “.com” in a domain name may be technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its GROUPON Mark. There is no evidence that the Respondent is commonly known by the Disputed Domain Names, nor does the Complainant have any type of business relationship with the Respondent. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case.

Accordingly, the second element of paragraph 4(a) has been met by the Complainant.

C. Registered and Used in Bad Faith

The Policy identifies the following circumstances that, if found, are evidence of registration and use of the Disputed Domain Names in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names’ registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Names; or

(ii) the Respondent has registered the Disputed 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product on the Respondent’s website or location.

First, bad faith may be found where, as in the present case, the Respondent knew or should have known of the registration and use of the GROUPON Mark prior to registering the Disputed Domain Names. Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Since both the Complainant and the Respondent are from the United States and since the trademark application and registration were made with the USPTO, it is fair to apply United States principles of constructive notice to this situation. See Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028).

In addition, the registration date and fame of the GROUPON Mark make it extremely disingenuous for the Respondent to claim that she was unaware that the registration of the Disputed Domain Names would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). This is so because in the present case, the Respondent registered the Disputed Domain Names after the Complainant obtained its registration for the GROUPON Mark in the United States. Further, bad faith can exist when a search of the USPTO trademark database by the Respondent would have revealed the trademark rights of the Complainant. See, e.g., Kate Spade, LLC v. Darmstadter Designs, supra (“Had 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. Respondent would also have seen that Complainant had used the mark in commerce for some six months.”).

Second, the Respondent’s registration of the Disputed Domain Names that are confusingly similar to the Complainant’s GROUPON Mark is evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).

Third, the Respondent’s registration of multiple domain names incorporating the Complainant’s famous GROUPON Mark is evidence of the Respondent’s bad faith. Numerous UDRP Panels have found that the registration of several domain names incorporating the Complainant’s trademark is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy. See General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452; Time Warner Entertainment Company, L.P. v. HarperStephens, WIPO Case No. D2000-1254.

Finally, the Respondent’s bad faith may also be inferred from its lack of reply to the cease and desist letter sent by the Complainant’s attorney prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.

In all the above circumstances, that the Disputed Domain Names are merely parked with the Registrar (akin to being passively held) does not prevent a finding of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Accordingly, the third element of paragraph 4(a) has been met by the Complainant.

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 Names, <travelgroupon.com> and <yogagroupon.com>, be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: March 10, 2016