WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupon, Inc. v. Ezriel Duchman / Oneandone Private Registration
Case No. D2014-1985
1. The Parties
Complainant is Groupon, Inc. of Chicago, Illinois, United States of America ("United States") represented internally.
Respondent is Ezriel Duchman of Miami Beach, Florida, United States / Oneandone Private Registration of Chesterbrook, Pennsylvania, United States.
2. The Domain Names and Registrar
The disputed domain names <grouponjerusalem.com>, <grouponphiladelphia.com>, <grouponvegas.com> and <vegasgroupon.com> are registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2014. On November 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 14, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Ezriel Duchman is listed as the registrant for each of the four disputed domain names 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 Respondent of the Complaint, and the proceedings commenced on November 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 18, 2014.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on December 30, 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
Using its <groupon.com> domain name and website, Complainant offers hundreds of daily deals on restaurants and local businesses to over 53.2 million active customers, has over 200 million subscribers worldwide and operates in over 47 countries. Complainant's website located at "www.groupon.com" attracts over 15 million unique visitors monthly.
Complainant has worked with over 500,000 merchants worldwide and has sold nearly 400 million deals since its inception. In 2008, Complainant began offering users daily deals specifically tailored to each user's location. In 2013, Complainant earned USD 2.6 billion in revenue. For the third quarter in 2014, Complainant's gross billings, which reflect the total value of customer purchases of goods and services, exceeded USD 1.8 billion.
Since at least October 2008, Complainant 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. The four disputed domain names were registered on December 2, 2010.
Complainant acquired rights and assumed ownership in its <groupon.com> domain name on June 7, 2009. The <groupon.com> domain name was registered on May 29, 2002.
Complainant owns the following United States trademark registrations, as well as other registrations in the United States and worldwide:
GROUPON, Registration No. 3685954, registered September 22, 2009; and GROUPON & Design, Registration No. 4222645, registered October 9, 2012.
5. Parties' Contentions
By virtue of the use and promotion of the GROUPON trademark and ownership of the GROUPON trademark registrations, Complainant owns rights in the GROUPON trademark.
The disputed domain names are confusingly similar to Complainant's GROUPON mark since the mere addition of the geographically descriptive terms "philadelphia," "jerusalem," and "vegas" (short for Las Vegas) to Complainant's famous GROUPON trademark does not negate the confusing similarity between the disputed domain names and Complainant's trademark. The addition of the terms "philadelphia," "jerusalem," and "vegas" magnifies the disputed domain names' confusing similarity to the GROUPON mark because Complainant's business is built on providing deals and discounts on a local level across numerous cities, including Philadelphia, Jerusalem, and Las Vegas.
Respondent has no rights or legitimate interests in the disputed domain names. To the best of Complainant's knowledge, Respondent has never been commonly known by the name "Groupon", is not authorized to use the GROUPON mark, cannot claim any rights or legitimate interests in the mark, is not sponsored by or affiliated with Complainant in any way and registered the disputed domain names well after Complainant both acquired trademark rights in the GROUPON mark and began using it worldwide in commerce in 2008.
The Respondent is using the disputed domain names to redirect Internet users to websites featuring generic, pay-per-click links to third-party websites presumably to generate and receive pay-per-click fees. As such, Respondent is commercially profiting from use of the disputed domain names and is neither providing a bona fide offering of goods or services via the disputed domain names nor making a legitimate noncommercial or fair use of them, as allowed under the Policy.
Respondent registered the disputed domain names in bad faith since each was registered on December 2, 2010, which is well after Complainant first used the GROUPON trademark in commerce in 2008, and after the March 10, 2009, filing date for the GROUPON trademark.
As evidence of bad faith use, Complaint states:
Respondent knew, or should have known at the time that the disputed domain names were registered, of the existence of Complainant's GROUPON trademarks;
Respondent is using the disputed domain names to redirect Internet users to websites featuring advertising links to third-party websites, and presumably receives pay-per-click fees in the process;
Respondent currently holds registrations for four domain names that misappropriate Complainant's GROUPON trademark and can, therefore, be said to be engaging in a pattern of cybersquatting; and
Respondent, at the time of the initial Complaint filing, had employed a privacy service to hide its identity for certain of the disputed domain names which past Panels have held as further evidence of bad faith registration and use.
Respondent did not respond to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest Respondent of the disputed domain names, Complainant must demonstrate each of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of 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 Panel finds that Complainant has trademark rights in the GROUPON mark and that the disputed domain names are confusingly similar to it because the disputed domain names incorporate the entire GROUPON trademark. The additions of the geographically descriptive terms "philadelphia," "jerusalem," and "vegas" (an abbreviation for Las Vegas) to the disputed domain names do not negate this confusing similarity.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
If a complainant makes prima facie case that the respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to establish its rights or legitimate interests in that domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1. The ultimate burden of proof, however, remains with the complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141.
The evidence of record supports Complainant's unrebutted allegations that Respondent has never been commonly known by the name "Groupon", is not authorized to use the GROUPON mark and is not sponsored by or affiliated with Complainant in any way. Accordingly, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names.
The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent did not contest Complainant's allegations of bad faith registration and use. It is highly unlikely that Respondent was unaware of Complainant's trademark rights when Respondent registered the disputed domain names on December 2, 2010, since Complainant had trademark registrations in the GROUPON mark since September 22, 2009 and had used the mark extensively worldwide since 2008.
There is also evidence of bad faith use. At least one of Respondent's disputed domain names, namely, <grouponvegas.com>, links to a competitor's website (Las Vegas Buffet Coupon). The <grouponjerusalem.com>, <grouponphiladelphia.com> and <vegasgroupon.com> domain names redirect Internet users to websites featuring generic, pay-per-click links to third-party websites presumably to generate pay-per-click fees for Respondent. Respondent's registration of several domain names that incorporate the GROUPON mark reflects a pattern that evidences bad faith.
Under the Policy, it is evidence of bad faith registration and use that, "by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with complainant's mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location." Paragraph 4(b)(iv) of the Policy. Given Respondent's use of the disputed domain names, all of which are confusingly similar to Complainant's mark, to generate pay-per-click revenue, the Panel finds that this Policy paragraph captures the circumstances of this case.
For the reasons set forth above, the Panel finds that Respondent registered and is using the disputed domain names in bad faith, and that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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, <grouponjerusalem.com>, <grouponphiladelphia.com>, <grouponvegas.com> and <vegasgroupon.com> be transferred to Complainant.
Lawrence K. Nodine
Date: January 13, 2015