WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupon Europe GmbH v. Digitalworx Limited

Case No. DIE2010-0004

1. The Parties

The Complainant Groupon Europe GmbH of Berlin, Germany represented by Rösler Schick Rasch, Germany.

The Registrant is Digitalworx Limited, of Dublin, Ireland, self-represented.

2. The Domain Name and Registrar

The disputed domain name <groupon.ie> is registered with IE Domain Registry Limited.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2010. On November 10, 2010, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the disputed domain name. On November 10, 2010, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant was listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant submitted an amendment to the Complaint on December 7, 2010. The Center verified that the Complaint and the amendment to the Complaint satisfied the formal requirements of the .IE Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Procedure for .IE Domain Name Registration (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2.1 and 4.1 the Center formally notified the Registrant of the Complaint, and the proceedings commenced on December 29, 2010. In accordance with the Rules, paragraph 5.1, the due date for Response was February 1, 2011. The Response was filed with the Center on January 31, 2011.

The Center appointed Adam Taylor as the sole panelist in this matter on February 10, 2011. 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.

The Complainant made an unsolicited supplemental filing on February 14, 2011.

Paragraphs 9.4 and 11 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 9.4 states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” Paragraph 11 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.”

The principles which the Panel should apply in exercising such discretion have been considered in many cases under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.

It is appropriate for the Panel to have regard to principles established under the UDRP where they are of assistance in applying comparable provisions under the Policy. See Adidas AG and Adidas (Ireland) Limited v. Gabor Varga and Jozsef Petho, WIPO Case No. DIE2006-0004.

Here, the Complainant has filed its submission as if there was an automatic right of reply to the Response and has not sought to establish any exceptional circumstances which might justify admission of the supplemental filing. Accordingly, the Panel declines to admit the filing.

4. Factual Background

Groupon, Inc. (a corporation incorporated in the United States) started a business in November 2008 under the name “Groupon” whereby it provided a number of special offers online for a limited time. If a certain number of people signed up for the offer, then the deal became available to all; if the predetermined minimum was not met, nobody would qualify.

Groupon, Inc owns Community Trade Mark No. 8226508 for the word GROUPON filed on April 20, 2009 (and registered on November 14, 2009) in class 35.

The Complainant, a wholly owned subsidiary of Groupon, Inc, was incorporated on December 3, 2009 in Germany under the name Jade 999. GmbH. On April 23, 2010 it was renamed “City Deal Europe GmbH”. On September 21, 2010, it was renamed “Groupon Europe GmbH”.

The Registrant is part of the Irish Times Group, which publishes the Irish Times newspaper.

The Registrant applied to register the disputed domain name on November 30, 2009. It was in fact registered on December 3, 2009.

On June 10, 2010, a representative of Groupon, Inc emailed the Registrant drawing attention to its trade marks and its ownership of <groupon.com> and mooting purchase of the disputed domain name.

On July 2, 2010, the Complainant emailed the Registrant to enquire if it was interested in selling the disputed domain name. The Registrant responded that day saying “I have a site we are about to launch on the url” but that it would consider an offer to sell before launch. The Complainant replied, also on the same day, offering EUR 2,000. Following some chasing emails by the Complainant, the Registrant eventually emailed on September 2, 2010, to the effect that it was not interested in progressing the discussion at the level of the Complainant’s offer.

In late September 2010, there was a telephone conversation between the parties in which the Registrant said that he would not give up the disputed domain name for less than EUR 10,000.

As of November 9, 2010, the disputed domain name was used as a parking page with sponsored links to various websites.

5. Parties’ Contentions

A. Complainant

Identical or Misleadingly Similar

The Complainant is a licensee of the Community Trade Mark. While there is no written license agreement between the trade mark owner and the Complainant, the Complainant is responsible for establishing the Groupon business concept under the Groupon trade mark in the European Union and has for this purpose been authorized to use, enforce and benefit from the trade mark. This is confirmed by an affidavit from a member of the board of directors of the Complainant.

Rights or Legitimate Interests

The Complainant is not aware of any evidence that at any material time the Registrant has ever had any rights or legitimate interests in the disputed domain name. The Registrant has no link with the Complainant. The Complainant has not licensed or otherwise authorized the Registrant to use the mark.

To the Complainant’s knowledge, the disputed domain name <groupon.ie> has never been used by the Registrant in connection with a good faith offering of goods or services, or operation of a business.

Currently the website shows a list of sponsored links below a heading “The domain groupon.ie is reserved for a client of Irish Domains Ltd.” This holding page falls well short of “demonstrable good faith preparations”. Thus, paragraph 3.1.1 of the Policy does not apply as there is no evidence of demonstrable good faith preparations to use the disputed domain name in connection with a good faith offering of goods or services or operation of a business.

Paragraph 3.1.2 of the Policy does not apply as the disputed domain name does not correspond to the personal name or pseudonym of the Registrant.

Paragraph 3.1.3 of the Policy does not apply as the disputed domain name is not a geographical indication.

The Registrant in its email of July 2, 2010, announced that it was “about to launch” a site under the domain name. This was more than 4 months ago and no such site has yet been launched. This indicates that there had and has never been any such true intent.

Registered or Used in Bad Faith

The name GROUPON is highly distinctive. It is an invented word based on the combination of the words “Group Coupon” which was invented by the founder of GROUPON and which describes the business model of the Complainant and its parent company.

The Finance Director of the Irish Times Group manages the group’s digital investments and has responsibility for the operations of the Registrant. As part of his duties, he must read other – especially foreign – news reports in order to look for new trends or ideas which could be or become of interest for the reader of the Irish Times or his field of digital operations. As such, it must be assumed that he was aware of the many online publications relating to Groupon. There were 94 alone between the end of July and the end of November 2009 including in The Times, New York Times and Wall Street Journal. The article in the The Times mentioned that the Complainant’s group was anticipating turnover of USD 100 million in 2010.

These shows that prior to November 30, 2009 the huge success of Groupon was widely known on the Internet and it is extremely unlikely that the Registrant was unaware of this. Therefore, the Registrant acted in bad faith when registering the disputed domain name.

Furthermore, the Registrant has not used the disputed domain name for a substantive website since its registration. The Registrant is instead using the disputed domain name intentionally to attract Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website for commercial gain in the form of click-through commissions when some of the diverted Internet users follow the links on the Registrant's website.

Following the unsuccessful email correspondence concerning sale of the disputed domain name, there was a telephone conversation in which the Registrant said that he would not sell the disputed domain name for less than EUR 10,000.

The following factors in the Policy apply:

2.1.1 the domain name has been registered … primarily for the purpose of selling, … the registration to the Complainant …. for valuable consideration in excess of the registrant’s documented expenses which are directly related to the registration of the domain name;

2.1.2 the domain name has been registered … primarily in order to prevent the Complainant from reflecting a Protected Identifier in which it has rights in a corresponding domain name;

2.1.3 the Registrant has registered …. the domain name primarily for the purpose of interfering with or disrupting the business of the Complainant.

B. Registrant

Identical or Misleadingly Similar

The disputed domain name when registered was and still is relatively unknown in Ireland. It has little market awareness and is associated with a concept rather than a specific company.

An <.ie> domain name is not generally considered to be the same company or business as a business with a <.com> domain name. For example <myhome.ie> is a well-known Irish property portal whereas <myhome.com> is a directory site.

Rights or Legitimate Interests

The Registrant registered the disputed domain name in good faith in November 2009. The intention was to launch a business offering consumers discounts achieved by group purchasing. The idea came from a former employee who heard about the concept on ABC during a visit to New York in November 2009.

The Registrant built a site and was proposing to launch it when contacted by Groupon Inc on June 10, 2010, offering to buy the domain and indicating that it had legal protection that prevented the Registrant using the name. The plans were put on hold because of the contacts from Groupon Inc and the Complainant.

The Registrant was unaware of any potential claims by the websites “www.groupon.de” or “www.groupon.com”, of whom the Registrant had never heard.

The Registrant agreed to defer the site until resolution of this proceeding and strongly refutes that this indicates that there was never any intention to do so.

Registered or Used in Bad Faith

The disputed domain name was not registered in bad faith.

The Registrant registered the disputed domain name to launch a site and business which is built and is waiting for the issue to be resolved.

The Registrant registered the disputed domain name after hearing about the “groupon concept” from a former employee who heard about it on ABC during a visit to New York in November 2009. The Registrant delayed launching the site, to its commercial disadvantage, in order to demonstrate its good faith. The Registrant does not want to have any unresolved disputes when its site is launched.

The Registrant had not heard of any trade mark or the Complainant when it registered the disputed domain name. It appears that it did not exist at the time and was only created when Groupon purchased Citydeals in May 2010.

Groupon does not appear to have operated in Europe in December 2009 or until it purchased Citydeals in May 2010.

6. Discussion and Findings

A. Identical or Misleadingly Similar

The first condition in paragraph 1.1 of the Policy is that the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.

Under paragraph 1.3.1 of the Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.

The Complainant has invoked a Community Trade Mark, which has effect in the island of Ireland. However, the proprietor of that trade mark is Groupon, Inc, the parent of the Complainant, and not the Complainant itself. The Complainant admits that there is no written license agreement but nonetheless asserts that it is responsible for establishing the Groupon business concept under the Groupon trade mark in the European Union and that it has been authorized to use, enforce and benefit from the trade mark. In support, the Complainant supplies an affidavit from a board member of the Complainant. The affidavit states that the Complainant has “the task of establishing the business concept of GROUPON within the European Community” and that for this purpose it has attempted to register, and if already registered by others, to acquire the domain names containing “Groupon” within EU ccTLDs.

While the Complainant could have done more to verify its alleged authorization in respect of the trade mark, in the absence of any challenge from the Registrant on this particular point, the Panel is prepared to accept that it has indeed been authorized by its parent company “to use, enforce and benefit” from the trade mark as it claims. See the following case under the UDRP where a similar approach was taken: PartyGaming Plc v. Kriss Vance, WIPO Case No. D2006-0456.

Accordingly, the Panel concludes that, disregarding the domain suffix “.ie”, the disputed domain name is identical to a protected identifier in which the Complainant has rights.

The Registrant claims that a business with a <.ie> domain name is not generally considered to be the same business as one with a <.com> domain name. Whether or not that is true, it is not relevant in connection with the first condition in paragraph 1.1 of the Policy. The Panel is simply concerned with identity or similarity between the trade mark and the disputed domain name without the suffix.

B. Rights or Legitimate Interests

The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the disputed domain name.

Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests.

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Registrant to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited, WIPO Case No. DIE2006-0001.

The factor in paragraph 3.1.1 of the Policy provides:

“where the Registrant can demonstrate that, before being put on notice of the Complainant’s interest in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business”.

The Registrant claims that it has built a site for use at the disputed domain name but that it elected to put this on hold in light of the approaches from Groupon, Inc and the Complainant. However, the only evidence from the Registrant as to its proposed use consists of a single (and not entirely legible) screenshot of a webpage branded “Group Save” comprising an offer of a luxury weekend at an Irish hotel. So far as the Panel can tell, the screenshot makes no reference to the disputed domain name. In the Panel’s view, this screenshot falls short of constituting demonstrable preparations to use the domain name. (Even if the Registrant had established demonstrable preparations, it would also need to have shown that the intended use was in “good faith”. This issue is dealt with below in connection third condition in paragraph 1.1 of the Policy.)

The Registrant does not claim that the parking page at the disputed domain name constitutes a good faith offering of goods or services. Indeed the Registrant does not refer to the parking page at all.

In the Panel’s view, therefore, the Registrant has failed to establish that paragraph 3.1.1 applies.

Paragraph 3.1.2 of the Policy does not apply as the disputed domain name does not correspond to the personal name or pseudonym of the Registrant.

Paragraph 3.1.3 of the Policy does not apply as the disputed domain name is not a geographical indication.

The Complainant has not licensed or otherwise authorized the Registrant to use its trade mark.

The Panel concludes that the Registrant has no rights or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

The Registrant says that it registered the disputed domain name after hearing about the “groupon concept” from a former employee who in turn heard about it on ABC during a visit to New York in November 2009. The Registrant argues that the disputed domain name (presumably meaning the term “Groupon”) is relatively unknown in Ireland, has little market awareness and is associated with a concept rather than a specific company. Further, the Registrant denies that it was aware of the Complainant or of any trade mark or of the websites “www.groupon.com” or “www.groupon.de” at the time when it registered the disputed domain name.

However, given that the Registrant accepts that it was at least aware of the “groupon concept” and that it says that it proposes to launch a service which appears to be identical to that offered by the Complainant’s group, the Panel considers that the Registrant must have undertaken some, even limited, form of investigation into the model used by the Complainant’s group. Whether or not the Registrant became aware of any specific entity within the Complainant’s group or of any specific trade mark or of any specific website (and the Panel is surprised by the Registrant’s disclaimer of awareness of “www.groupon.com” in particular), the Panel considers that the Registrant must have been aware that somebody was operating a business under the name “Groupon” involving the offering of group discounts to Internet users.

The Complainant has also drawn attention to international media coverage of the group’s business activities in the months preceding registration of the disputed domain name including in The Times (referring to an anticipated USD 100 million turnover in 2010), New York Times and Wall Street Journal. It seems unlikely that the Registrant, which manages the digital investments of the Irish Times Group, was unaware of this coverage.

The Registrant suggests, or at least implies, that the term “groupon” is or has become descriptive or generic. This is not an easy case to make as “groupon” is a made-up word which has been in use for a relatively short time. The Panel would expect such a claim to be backed up by extensive evidence illustrating use of the term in the manner claimed by the Registrant. But the Registrant has produced no such evidence at all.

In view of the adoption by the Registrant of such a distinctive name for exactly the same business as that of the Complainant’s group, the lack of credibility of the Registrant’s explanation and the absence of any supporting evidence, the Panel concludes on balance that the Registrant’s purpose was in some way to take unfair advantage of the name “Groupon” in the knowledge that, most likely, whoever operated that business would at some point want to expand into Ireland.

As indicated above, it makes no difference (assuming it was the case) that the Registrant was unaware of the exact identity of the parties operating the Groupon business or of the exact details of their registered trade marks or of any specific websites. Nor does it matter, as observed by the Registrant, that the Complainant’s group did not operate in Europe until its acquisition of “Citydeals” in May 2010.

The Registrant points out that the Complainant itself was only incorporated after the registration of the disputed domain name. (It was in fact incorporated on the same day that the disputed domain name was registered.) But what matters here is the targeting by the Registrant of the mark “Groupon”, which pre-dated registration of the disputed domain name and in which (as the Panel has decided above) the Complainant has rights for the purposes of the first condition in paragraph 1.1 of the Policy. It is irrelevant that the Complainant was not itself incorporated prior to registration of the disputed domain name.

The Panel therefore finds that the disputed domain name was registered in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 5.1 of the Policy and 14 of the Rules, the Panel orders that the disputed domain name, <groupon.ie> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Dated: March 2, 2011