WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupon Inc. v. Xiangsheng Zhou, feng zhou

Case No. D2014-1609

1. The Parties

The Complainant is Groupon Inc., of Chicago, Illinois, United States of America (“US”), represented by Erin Wright Lothson of Chicago, Illinois, US.

The Respondent is Xiangsheng Zhou, feng zhou of Wuhan, Hubei, China.

2. The Domain Names and Registrar

The disputed domain names <gropon.com>, <gropuon.com>, <grouupon.com> and <grroupon.com> are 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 September 18, 2014. On September 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 24, 2014, 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 September 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2014.

The Center appointed Antony Gold as the sole panelist in this matter on October 29, 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. Preliminary Issues

Before turning to the substantive issues, there are two points of procedure which require consideration. The first relates to the fact that there are two Respondents to the proceedings. The Complainant says that the Complaint should be allowed to proceed as a single Complaint if it can be established that a single Respondent is using multiple aliases. In this respect, the Complainant points out, first, that all of the disputed domain names comprise similar variants of the Complainant’s GROUPON mark. Second, it says that the Registrar for all the disputed domain names is the same. Third, it says that the disputed domain names resolve to the same aggregator page with the message “Redirecting to Advertiser”. Lastly, it points out that the listed Respondent for each of the disputed domain names is located in Wuhan, Hubei, China.

The Panel agrees that the facts suggest that a single Respondent is using multiple aliases. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition explains that a complaint can be brought against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. The Panel accordingly agrees that a single consolidated Complaint is appropriate.

The second issue arise from the Complainant’s request that the language of proceedings be English. In point of fact the Registrar has confirmed to the Center that the English language was used to inform the Respondent of the Domain Registration Agreement. Paragraph 11 of the Rules provides that the Complainant is accordingly entitled to submit its Complaint in English.

5. Factual Background

The Complainant is a company, based in the US but now operating in many countries. It provides discounted certificates which are redeemable by a wide range of goods and services providers. The Complainant’s business commenced in or about October 2008. The Complainant has registered a number of trade marks for GROUPON, either alone or in conjunction with other words or devices. The first of these trade marks was registered in September 2009.

The Complaint relates to the following domain names (collectively referred to as “the disputed domain names”);

- <gropon.com>, first registered on June 10, 2009 (“the first disputed domain name””);

- <gropuon.com>, first registered on December 25, 2009 (“the second disputed domain name”);

- <grouupon.com>, first registered on December 25, 2009 (“the third disputed domain name”);

- <grroupon.com>, first registered on December 25, 2009 (“the fourth disputed domain name”).

Each of the disputed domain names, when typed into the address bar of a web browser, take the Internet user to third party websites which contain advertising content. The specific website to which the Internet user is taken changes on each occasion the disputed domain name is typed into the address bar.

6. Parties’ Contentions

A. Complainant

The Complainant says that it is a worldwide leader in local commerce with more than 53 million active customers. It offers deals in over 48 countries and has worked with over 500,000 merchants worldwide.

The Complainant says that it started trading in 2008 and that by 2013 its annual revenue was USD2.6 billion. It explains that its deals are primarily offered online using its website at “www.groupon.com”, the domain name for the website having been registered in June 2009, and that the use of this website by its users is central to its business. The Complainant says that since October 2008 it has prominently and continuously used the GROUPON trade mark, both alone and in combination with other trade marks, for the purpose of its business. It provides details of its US trade mark registrations which include the word “groupon”. The earliest of these is for GROUPON solus. It is dated September 22, 2009 and claims a first date of use of October 21, 2008. The Complainant says that its GROUPON trade mark is wholly and exclusively associated with its business.

The Complainant asserts that for the purpose of determining whether the disputed domain names are identical or confusingly similar to GROUPON, the top-level element of the disputed domain names (that is “.com”) is disregarded. On that basis, the Complainant says that;

- the first disputed domain name (<gropon.com>) is identical to its trade mark, save that the “u” has been omitted;

- the second disputed domain name (<gropuon.com>) is identical, save that the “u” and “p” have been transposed;

- the third disputed domain name (<gruupon.com>) is identical, save that an addition “u” has been inserted;

- the fourth disputed domain name (<grroupon.com>) is identical, save that an additional “r” has been inserted.

The Complainant says each disputed domain name represents a typical example of typosquatting that is the deliberate registration of a domain name which comprises a slight misspelling of a famous mark which has been registered in order to confuse Internet users. The Complainant says that the disputed domain names are confusingly similar to the trade mark in which the Complainant has rights and it refers in this respect to a number of decisions under the Policy including RX America L.L.C. v. Tony Rodolakis, WIPO Case No. D2005-1190 in which the panel said that typosquatting “has consistently been regarded as creating domain names that are confusingly similar to the relevant mark”. Accordingly, the Complainant says that each of the disputed domain names is confusingly similar to its GROUPON trade mark.

The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It says that the disputed domain names were registered “well after” the Complainant acquired rights in the GROUPON trade mark and was using the mark worldwide. It says that the Respondent is not authorized to use the GROUPON trade mark and cannot claim any rights or legitimate interests in it. Moreover, it says that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trade marks in any manner, including in a domain name. It says also that the Respondent has not been known by the disputed domain names.

In addition, the Complainant says that the varying websites to which the disputed domain names take the Internet users are third party websites run by advertisers. These have included a website at <fw.dnslink.com> which the Complainant says contains a malicious redirect virus. As such, it says that use of the disputed domain names cannot amount to a bona fide offering of goods and services or a legitimate noncommercial or fair use under the Policy. The Complainant says that three of the disputed domain names presently point to another third party website which the Complainant considers to provide services which compete with it. Accordingly, the Complainant says that this also cannot amount to a bona fide offering of goods and services under the Policy nor a legitimate noncommercial or fair use under the Policy.

The Complainant asserts that the disputed domain names were registered and used in bad faith. Dealing, first, with bad faith registration, the Complainant says that all of the disputed domain names were registered between June 2009 and October 2010. This is “well after” the date on which the Complainant first used the GROUPON trade mark in commerce, namely October 2008, and after the Complainant had filed for its first GROUPON trade mark in March 2009. The Complainant says that the fact that the Complainant was famous by the time that the disputed domain names were registered demonstrates that the disputed domain names were registered in bad faith. It refers to an earlier decision to this effect, namely Groupon Inc. v Eileen Dixon, WIPO Case No. D2014-0934.

The Complainant says also that the deliberate registration of the disputed domain names which are confusingly similar to the Complainant’s GROUPON trade mark for the purpose of disrupting the Complainant’s business in the manner outlined above constitutes both bad faith registration and use.

The Complainant says that typosquatting inherently constitutes bad faith registration and use in that a respondent engaged in this activity is attempting to capitalize on typing errors committed by a complainant’s customers when trying to locate the complainant’s services on the Internet. The Complainant says also that the Respondent offered to sell the first disputed domain name for an amount in excess of its out-of-pocket expenses and that this also constitutes bad faith registration and use.

Finally, the Complainant says that the Respondent is a serial cybersquatter and has repeatedly registered domain names containing names of famous persons or trademarks of other entities in order to capitalize on the goodwill developed by others. It refers to five earlier decisions under the Policy against the Respondent and says that these support a finding of bad faith under 4(b)(ii) of the Policy, namely that the Respondent has registered the disputed domain names in order to prevent the Complainant from reflecting the mark in a corresponding domain name provided that it has engaged in a pattern of such conduct.

B. Respondent

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

7. Discussion and Findings

Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(i) each of the disputed domain names is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The first issue which requires consideration is whether the Complainant has, as it maintains, rights in the trade mark GROUPON. The Complainant has supplied details of nine GROUPON- related trade marks registered in the US, albeit 8 of these marks are for GROUPON in conjunction with other words or, in one instance, with a device. These trade marks, particularly that registered on October 21, 2008 for GROUPON solus provide ample evidence of the Complainant’s rights in GROUPON trade mark and it is accordingly not necessary to consider the Complainant’s extensive additional submissions in respect of its rights.

Turning next to the question of whether the disputed domain names are confusingly similar to the Complainant’s GROUPON trade mark, it is widely established, as the Complainant has said, that the applicable generic Top-Level Domain suffix “.com” should be disregarded for the purpose of making the comparison.

None of the disputed domain names are identical to the Complainant’s trade mark. However, as the Complainant has explained, in respect of the first disputed domain name, a single letter has been removed. In the case of the second disputed domain name, two letters have simply been transposed. The third and fourth disputed domain names differ only by the addition of a single letter. “Groupon” is a distinctive term, at least in the English language, with no known meaning. The addition or subtraction of a single letter or the transposition of letters has not transformed any of the disputed domain names into a word which has any English language meaning or is even similar to such a word. Moreover, each disputed domain name remains visually and phonetically very similar to “Groupon”. GROUPON has, as the Complainant has explained, become a very widely recognized brand. An Internet user is likely to perceive each of the disputed domain names as comprising misspelt versions of “groupon”. The Panel accordingly finds that each of the disputed domain names is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides non-exhaustive examples of how a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark in issue.

The Complainant asserts that none of these instances are applicable. It says that it has never licensed or authorized the Respondent to use its GROUPON trademarks and that the Respondent has no connection or affiliation with its services. It also points out that there is no evidence that the Respondent has been commonly known by any of the names “gropon”, “gropuon”, grouupon” or “grroupon”.

The Panel accepts the Complainant’s submission that the use of the disputed domain names simply in order to point to a rotating number of third party websites from which advertising income is presumably derived does not amount to a bona fide offering of goods and services nor does it constitute a legitimate or noncommercial fair use of the disputed domain names. As explained in previous UDRP decisions, the use of domain names confusingly similar to a complainant’s trade mark for the sole purpose of pointing to third-party commercial sites where a respondent transacts business, does not comprise either a bona fide offering of goods and services or a legitimate noncommercial or fair use of such domain names within the meaning of the Policy

On the basis of the facts as set out above, it is not possible to conceive of a legitimate reason as to why the Respondent chose to register the disputed domain names. The onus is accordingly on the Respondent to explain why it has rights or legitimate interests in the disputed domain names. In the absence of any response from the Respondent and having regard to the facts and matters outlined above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant’s business first started trading in 2008 and the Complainant asserts that the date of first use of its GROUPON trade mark was on October 21, 2008. Thereafter, the Complainant’s assertion is that its business grew very rapidly to the extent that, by the date of registration of the first disputed domain name on June 10, 2009, it was already very well known.

It should be noted that, as at the date of registration of the first disputed domain name, the Complainant had applied for its first GROUPON trade mark but the mark was not actually granted until some three months after the first disputed domain name was registered. The Complaint is not informative about the exact nature, scope and fame of the Complainant’s business as at June 2009 although the domain name which it claims to be central to its business, <groupon.com>, was not registered until June 7, 2009, that is three days before the registration of the first disputed domain name.

This sequence of events has a direct bearing on whether the Complainant’s contention that the first disputed domain name was registered by the Respondent in bad faith is made out. Consideration of this issue is hampered by the paucity of evidence provided by the Complainant as to the exact extent of its fame as at June 2009. However, there is satisfactory evidence that the GROUPON trade mark was first used in commerce in October 2008 and the overall growth of the Complainant’s business since its formation has clearly been very rapid since it began trading. Accordingly, the Panel is willing to accept, albeit by a narrow margin, that the Complainant was well known as at the date of registration of the first disputed domain name and that it was registered by the Respondent with the Complainant’s business in mind. The fact that the Respondent subsequently proceeded to register three further variants of the Complainant’s GROUPON trade mark as domain names and that none of the disputed domain names has ever been put to a legitimate use serves to substantiate this view.

The remaining three disputed domain names were registered on December 25, 2009, at which point the Complainant’s fame must have further increased. As the Respondent has not provided any information as to his motives, precisely what was in his mind as at the date of registration of each of the disputed domain names is necessarily a matter for inference. However, the Panel has regard to the following factors. First, the Complainant was well known as at the date of registration of each of the disputed domain names. Second, the circumstances suggest that the disputed domain names were registered because of their similarity to the Complainant’s GROUPON mark rather than for any other reason. Third, the only known use to which the disputed domain names have been put is to attract and derive revenue from Internet users who were presumably seeking the Complainant’s website. Such a use is not bona fide. Fourth, the Respondent has declined to provide any explanation either before or after the commencement of these proceedings which might rebut the obvious inference to be drawn from the facts, namely that the disputed domain names were registered to facilitate typosquatting by the Respondent. The Panel accordingly finds that the disputed domain names were registered in bad faith.

In terms of bad faith use, the Panel accepts the Complainant’s submission that the deliberate registration of domain names which are confusingly similar to the Complainant’s GROUPON trade mark for the purpose of typosquatting in the manner outlined above constitutes both bad faith registration and use. As the panel said in Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, where a domain name is “so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith”.

The Panel having found bad faith registration and use for the reasons indicated above, it is not necessary to consider the Complainant’s additional submissions.

8. 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 <gropon.com>, <gropuon.com>, <grouupon.com> and <grroupon.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: November 12, 2014