WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupon, Inc. v. Resilient Filmmakers / Joaquin Rodriguez

Case No. D2013-1172

1. The Parties

The Complainant is Groupon, Inc. of Chicago, Illinois, United States of America, represented by Grippo & Elden, United States of America.

The Respondents are Resilient Filmmakers and Joaquin Rodriguez, both of Fort Lauderdale, Florida, United States of America.

2. The Domain Names and Registrar

The disputed domain names <grouponconvention.com>, <grouponinvegas.com>, <grouponlasvegas.com>, <groupontradeshow.com> (the “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 June 28, 2013. On July 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 3, 2013, 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 July 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2013. The Response was filed with the Center on July 10, 2013.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 18, 2013. 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 corporation organized under the laws of the State of Delaware, United States of America (USA), and headquartered in Chicago, Illinois, USA. The company’s stock is publicly traded on the NASDAQ exchange. Since 2008, the Complainant has operated a collective buying business, offering online and mobile users daily local discount deals on restaurant meals and other retail goods and services.

According to the Complaint, supported by the affidavit of a corporate officer, the Complainant has sold nearly 400 million deals since its inception, has contracted with more than 500,000 merchants, and currently offers deals in more than 1,000 cities in at least 48 countries. One of its service areas is Las Vegas, Nevada, USA. The Complainant reported 2012 revenues in excess of USD 2.3 billion.

The Complainant holds the following United States registered trademarks:

MARK

US Registration Number

Registration Date

GROUPON

3685954

September 22, 2009

LIVE OFF GROUPON

3994090

July 12, 2011

GROUPONICUS

3994088

July 12, 2011

GROUPON NOW

4010592

August 9, 2011

GROUPON LIVE

4068591

December 6, 2011

GROUPON and Design

4222645

October, 9, 2012

GROUPON RESERVE

4283740

January 29, 2013

GROUPON GOODS

4302184

March 12, 2013

GROUPON VIP

4309987

March 26, 2013

These marks have appeared in national advertising campaigns in the USA, including the 2011 broadcast Super Bowl television commercials viewed by an audience of 111 million in the USA, as well as in online promotions and email marketing. The Complainant and its marks have also featured in numerous print and broadcast media stories.

According to the concerned Registrar, the Domain Name <grouponlasvegas.com> was created on May 6, 2010, and registered to the Respondent, Resilient Filmmakers, on June 17, 2012. The other three Domain Names were all registered in the same name on July 13, 2012. The Response filed by Mr. Joaquin Rodriguez, a Florida resident who is listed as the technical and administrative contact in each of the registrations, names Mr. Joaquin Rodriguez as the Respondent and refers to “my company”, presumably Resilient Filmmakers. The Response and the Domain Names registrations show a Florida postal address. The Response indicates that Mr. Joaquin Rodriguez’s company operates a “dating site” matching people in Las Vegas, Nevada. However, the online databases operated by the Florida Division of Corporations and the Nevada Secretary of State, respectively, do not list a registered domestic or foreign company by the name of Resilient Filmmakers in Florida or Nevada. This may be merely a trade name or alias used by Mr. Rodriguez. Consequently, this Decision will refer collectively to Mr. Joaquin Rodriguez and Resilient Filmmakers as “the Respondent”.

The Domain Name <grouponlasvegas.com> redirects to the Respondent’s Las Vegas singles dating website at “www.vegasmatcher.com”. The “About Us” page describes the website as follows:

“Las Vegas Hottest Match is a totally new kind of matching platform designed specifically for millions of adults that visit Las Vegas every year looking for fun while they are in sin city.”

The website allows visitors to register online for a paid membership and also includes Las Vegas telephone and postal contact information. The publicly available pages of the website do not include advertising for third parties.

The other three Domain Names resolve to what appears to be a parking page published by the Registrar, with pay-per-click (“PPC”) advertising links, a link for site visitors to express interest in purchasing the Domain Name, and a link for the owner of the Domain Name to “turn it into a website”.

The Complainant’s representatives sent the Respondent a cease-and-desist letter on July 13, 2012, asserting the Complainant’s trademark rights and demanding the transfer of the Domain Name <grouponlasvegas.com>. The Respondent reacted by registering the other three Domain Names incorporating the term “groupon” on that same day and sending a reply denying that the Respondent’s business competes with the Complainant’s and offering to sell all four Domain Names to the Complainant for USD 120,000. Sporadic communications over the next several months failed to result in an agreement between the parties, and this proceeding ultimately followed.

5. Parties’ Contentions

A. Complainant

The Complainant observes that each of the Domain Names incorporates the well-known GROUPON mark, which is a coined term, and asserts that the Respondent has no rights or legitimate interests in the Domain Names.

The Complainant contends that the Respondent selected the Domain Names in bad faith, in an effort to divert Internet users for commercial gain and alternatively to sell the Domain Names to the Complainant for an amount in excess of out-of-pocket costs.

B. Respondent

The Respondent is not represented by counsel, and the Response states that Mr. Rodriguez is not proficient in English (although the Respondent’s website is presented entirely in English). The Response explains the choice of Domain Names as follows:

“We are a dating site and the word Groupon in the domains we own is equal to use the word gathering and that is the purpose of the use of the slang groupon in our domians” [sic].”

“The slang groupon is a common word equal to hangout and there is no bad intention in the use of that word in my domains since we are in the business of matching people in Las Vegas.”

The Response denies any intent to “piggyback” on the Complainant’s GROUPON brand, and the Respondent expresses a willingness to agree not to use the Domain Names except “to promote our dating service”.

6. Discussion and Findings

In its verification response, the Registrar confirmed that the registration agreement in relation to the Domain Names is in English. In accordance with paragraph 11 of the Rules, the language of the proceedings shall therefore be English.

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

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

(ii) the respondent has no rights or interests in respect of the domain name; and

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

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant indisputably holds registered marks consisting of or incorporating, the company name “Groupon”. Each of the Domain Names incorporates the GROUPON element of these marks in its entirety. The addition of geographic or generic words in the Domain Names does not eliminate the likelihood of confusion, especially given the variety of city names and retail and event categories that are associated with the Complainant’s group discount offers.

The Panel finds confusing similarity between the Domain Names and the Complainant’s GROUPON marks, establishing the first element of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Names, by demonstrating any of the following:

“(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent 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.”

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Names, once the Complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The Complainant has done so in this proceeding, by pointing out that the Domain Names include the distinctive GROUPON mark that is well established in United States commerce.

It is undisputed that the Complainant has not authorized the Respondent to use the GROUPON mark. The Respondent clearly makes commercial use of one of the Domain Names for a subscription dating website and has allowed the others to be used for PPC advertising. The Respondent does not claim that it does business under a name corresponding to any of the Domain Names. The Respondent’s company name is Resilient Filmmakers. The Respondent’s website is headed “vegasmatcher”, and its “About Us” and “Terms of use” pages refer to the website operator as “Las Vegas Hottest Match”.

The Respondent argues that “groupon” is a slang term referring to a gathering of people. The Respondent offers no evidence to support this contention, and the Panel finds no such entries in dictionaries of American English or contemporary American urban slang. Possibly the word is used in that sense in some quarters, but the Respondent has not established this as a fact by making a bald assertion in the Response.

The Panel concludes that the Respondent has not refuted the Complainant’s prima facie case, and therefore, the second element of the Complaint has been established.

C. Registered and Used in Bad Faith

The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following, which are implicated in this Complaint:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or [. . . ]

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

It is undisputed that the Respondent has used the Domain Name <grouponlasvegas.com> for a commercial dating website, while parking the other Domain Names on a PPC landing page operated by the Registrar. The Response states that all of the Domain Names were acquired for use in connection with the dating website.

GROUPON is an invented term that suggests a combination of “group” and “coupon”, appropriate to a retail group buying business. The record amply supports the conclusion that the GROUPON mark is well known and distinctive, particularly in the USA. The Respondent claims to have selected Domain Names incorporating “groupon” for their purported generic value in denoting a gathering of people. But the Respondent has not established that there is such a generic value to the term, much less the probability that the Respondent selected the Domain Names for this purpose rather than to trade on the reputation of the well-known GROUPON mark. On the current record, the Panel considers the latter to be the more likely explanation for the choice of the Domain Names, consistent with the behavior indicative of bad faith described in the Policy, paragraph 4(b)(iv).

The Respondent’s reaction to the Complainant’s assertion of trademark rights is also indicative of bad faith. The Panel does not find on this record that the Respondent registered the Domain Name <grouponlasvegas.com> “primarily” for the purpose of selling it to the Complainant or one of its competitors in the group buying sector. The Respondent held that Domain Name for over a year before being contacted by the Complainant. But the Respondent reacted to the Complainant’s cease-and-desist letter by registering three more Domain Names including the GROUPON mark, on the very day it received the emailed letter, and then offering to sell all Domain Names to the Complainant for USD 120,000. This behavior suggests a disregard for trademark rights and a cynical effort to extort money from a trademark holder once it showed an interest in domain names based on the trademark.

The Panel concludes that bad faith has been established within the meaning of the third element of the UDRP Complaint.

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 Domain Names <grouponconvention.com>, <grouponinvegas.com>, <grouponlasvegas.com> and <groupontradeshow.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: August 8, 2013