WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupon Inc. v. Privacy Protection Service INC d/b/a/ PrivacyProtect.org / Private Registrations Aktien Gesellschaft
Case No. D2014-1488
1. The Parties
The Complainant is Groupon Inc. of Chicago, Illinois, United States of America, internally represented.
The Respondent is Privacy Protection Service INC d/b/a/ PrivacyProtect.org of Nobby Beach, Queensland, Australia / Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <grouponmiami.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 29, 2014 for ten domain names against a privacy service. On August 29, 2014, the Center transmitted by email to the relevant registrars a request for registrar verification in connection with the domain names. On August 30, 2014, the registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the domain names, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on September 5, 2014, disclosing multiple underlying registrants revealed by the registrars and requesting the Complainant to either file separate complaint(s) for the domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity.
On September 18, 2014, the Complainant filed an amended Complaint to withdraw nine domain names and proceed in the present Complaint with <grouponmiami.com> only.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on September 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 16, 2014.
The Center appointed Andrea Dawson as the sole panelist in this matter on October 22, 2014. 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, Groupon, is a worldwide leader in local commerce. Across six continents, Groupon offers hundreds of daily deals on restaurants and local businesses to over 53.2 million active customers and has over 200 million subscribers worldwide.
Groupon offers daily deals in hundreds of markets in North and South America, Europe, Africa, Asia, and Australia. Specifically, Groupon currently operates in over 48 countries worldwide, including over 1,000 cities, with new markets being added regularly. Groupon has worked with over 500,000 merchants worldwide and has sold nearly 400 million deals since its inception.
The Complainant's deals are primarily offered online using its <groupon.com> domain name and website, as well as related websites. Each day, hundreds of thousands of users visit Groupon's websites to browse and purchase the deals available. When users visit Groupon's website, they are offered a variety of deals and discounts that they can purchase based on their location – the Complainant offers deals specific to regions and cities, thus allowing users to receive deals that are relevant to them, which saves users the time and effort of sifting through the thousands of deals that Groupon offers.
Since at least October 2008, Groupon has prominently and continuously used the GROUPON mark, alone and in combination with other marks, to provide coupons, rebates, and discount information to online users. Groupon has United States trademark rights in the following marks among others:
- USPTO Registration GROUPON No. 3685954 dated September 22, 2009
- USPTO Registration GROUPON & design No. 4222645 dated October 9, 2012
- USPTO Registration GROUPON VIP No. 4309987 dated March 26, 2013
The disputed domain name <grouponmiami.com> was registered on May 6, 2010.
5. Parties' Contention
The Complainant provides evidence demonstrating its ownership of the trademark GROUPON.
The Complainant claims that the Respondent's <grouponmiami.com> domain name incorporates, in its entirety, the Complainant's famous GROUPON trademark and simply adds the term "miami," thus making the domain confusingly similar to the GROUPON trademark, as well as the Complainant's <groupon.com> domain name. More specifically, the mere addition of the geographically descriptive term "miami" to the Complainant's famous GROUPON mark does not negate the confusing similarity between the disputed domain name and the Complainant's trademark. Numerous panels have established that the mere addition of a place name does not alter the underlying trademark in question, nor does it sufficiently differentiate the disputed domain name from that trademark.
The Complainant states that it has not licensed or otherwise authorized the Respondent to use its trademark. The Complainant further adds that the Respondent has never been commonly known with such name.
The Complainant states that the Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites. Further, the Respondent's website also features a link that directly references the Complainant and its business.
The Complainant adds that the Respondent presumably receives pay-per-click fees from these linked websites. As such, the Respondent is not using the domain name to provide a bona fide offering of goods or services as allowed under Policy, paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy, paragraph 4(c)(iii).
Furthermore, the Complainant claims that the Respondent has also demonstrated a lack of legitimate rights and interests in the disputed domain name through the posting of the "Inquire about this domain" link at the bottom of the disputed domain name's website. Clicking on the "Inquire about this domain" link takes an Internet user to another website where the user is able to submit information to the domain name owner, including an "Offer Price" for the disputed domain name.
The Complainant states that the Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring advertising links to third-party websites, and presumably receives pay-per-click fees in the process. The Respondent, by registering a domain name that is confusingly similar to the Complainant's GROUPON trademark, is thus using the fame of the Complainant's trademarks to improperly increase traffic to the website listed at the disputed domain name for the Respondent's own commercial, pecuniary gain.
The Complainant additionally states that the GROUPON brands are known internationally. The Complainant has marketed and sold services using the Complainant's marks since 2008. The Respondent's registration of <grouponmiami.com>, which contains the Complainant's famous GROUPON trademark in its entirety, and which was registered significantly after the Complainant's first use of the trademark and filing of the trademark with the USPTO, demonstrates that the Respondent is very familiar with the Complainant and possesses a thorough knowledge of the GROUPON brand and business.
The Complainant finally claims that the Respondent has ignored the Complainant's attempts to resolve the dispute outside of this administrative proceeding. In this respect, previous panels have asserted that failure to respond to a cease and desist letter is an indication of bad faith registration and use of a domain name.
Consequently, in view of the above-mentioned circumstances, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered the disputed domain name in bad faith. The Complainant requests that the Panel order transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in this proceeding:
(i) The disputed domain name is 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 name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has been able to demonstrate that it has rights to the registered trademark GROUPON.
The disputed domain name consists of the term "groupon", with the addition of the geographical term "Miami". As indicated by the Complainant, previous UDRP panels have found that the mere addition of a geographical indication to a trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark, since the Internet user seeks the trademark and not an indication of a location.
Furthermore, the Internet user will simply consider the geographical factor as such, a place locator. Specially in this particular case in which, as explained by the Complainant, Internet users of this service are offered a variety of deals and discounts that they can purchase based on their location – the Complainant offers deals specific to regions and cities, thus allowing users to receive deals that are relevant to them, so the addition of the term "Miami" can without a doubt lead to confusion to Internet users.
For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name.
The present Panel agrees that the Complainant may make out an unrebutted prima facie case to succeed and finds that it has met that standard.
The Panel accepts the arguments of the Complainant that the Respondent has not been authorized by the Complainant to use its trademark, or to seek registration of any domain name incorporating said mark and that the Respondent has no prior rights or legitimate interests in the disputed domain name.
Furthermore, the Panel finds that the Respondent is neither commonly known by the name "groupon" or "groupon miami" nor in any way affiliated with the Complainant, nor authorized or licensed in any other way to use the GROUPON trademark.
Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel finds that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant's rights in the
GROUPON trademarks and that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademarks at the time of the registration of the disputed domain name.
Firstly, "groupon" is not a common term in any language. It has no official meaning in any language, to the knowledge of this Panel. Therefore, one can assume that it is a coined word. Consequently, as mentioned by the Complainant, it is unlikely that the Respondent was unaware of the Complainant when the disputed domain name was registered. Furthermore the Panel finds that it is implausible to conclude that the Respondent did not have the Complainant's trademark in mind when registering the disputed domain name, especially when reviewing the screenshots provided in the Complaint one can clearly see that the mentions are relating to "deals of the day", "deals groupon", "catch of the day" etc., which indicates that the Respondent had perfect knowledge of the Complainant's existence and the services it provided. In the Panel's assessment, it cannot be a mere coincidence that the website at the disputed domain name offered the same services as those of the Complainant.
In addition to the above, the Complainant sent a cease and desist letter to the Respondent, indicating that it was the owner of the trademark GROUPON and requesting to cease in the use of the disputed domain name. No response was received from the Respondent.
In view of the above, it is clear to the Panel that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its website.
For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <grouponmiami.com> be transferred to the Complainant.
Date: October 4, 2014