WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupon, Inc. v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services

Case No. D2014-2139

1. The Parties

The Complainant is Groupon, Inc. of Chicago, Illinois, United States of America, represented internally.

The Respondent is Whois Privacy Corp. of Nassau, Bahamas / Ryan G Foo, PPA Media Services of Santiago, Chile.

2. The Domain Names and Registrar

The disputed domain names <groiupon.com>, <grouponclick.com>, <groupon-daily.com>, <groupondaily.com>, <groupon-free.com>, <grouponoffer.com>, <groupon-promo.com>, <groupon-today.com>, <groupon-usa.com> and <grupon.com> are registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2014. On December 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 16, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for one of the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint. The Complainant filed an amended Complaint on December 22, 2014.

The Center verified that the Complaint together with 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 January 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2015.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on February 16, 2015. 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

According to the Complainant, Groupon Inc., it is a worldwide leader in local commerce. It offers hundreds of daily deals on restaurants and local businesses to over 53.2 million active customers and has over 200 million subscribers worldwide, in North and South America, Europe, Africa, Asia and Australia. Specifically the Complainant operates in 47 countries worldwide, including over 1,000 cities, with new markets being added regularly.

The Complainant has worked with over 500,000 merchants worldwide and has sold nearly 400 million deals since its inception. The Complainant pioneered the local commerce model and in 2008 began offering users daily deals specifically tailored to each user’s location. The public response was overwhelmingly positive and the Complainant grew quickly to add hundreds of additional cities across many countries. Today it is a publically held corporation earning billions of dollars in revenue. For example in 2013 it earned USD 2.6 billion in revenue. For the third quarter of 2014 the Complainant’s gross billings which reflect the total value of custom purchasers of goods and services exceeded USD 1.8 billion.

The Complainant’s deals are primarily offered online using the <groupon.com> domain name and website as well as related websites. Each day hundreds of thousands of users visit the Complainant’s websites to browse and purchase the deals available. When users visit the Complainant’s website they are offered a variety of deals and discounts they can purchase based on their location. In addition to its deal voucher offerings the Complainant has expanded the deal concept to include travel deals, bargains on a breadth of consumer goods as well as online coupon and promotion codes that are available at thousands of retailers, restaurants and e-commerce sites.

Since at least October 2008 the Complainant has prominently and continuously used the mark GROUPON alone and in combination with other marks to provide coupons, rebates and discount information to online users. It has United States trade mark registrations for the following marks:

Evidence of these registrations is set out at Annex 1 to the Complaint. Evidence of use of the marks is set out in an Affidavit sworn by the Complainant’s Corporate Counsel, Intellectual Property at Annex 9 to the Complaint.

In the absence of any evidence to the contrary from the Respondent the Panel accepts the truth of the evidence adduced by the Complainant and proceeds to determine this Complaint on the basis of the evidence adduced by the Complainant.

The disputed domain names were registered on the following dates:

<grupon.com> December 2011¹

<groiupon.com> June 2010

<groupon-daily.com> April 2014

<groupon-free.com> April 2014

<groupon-promo.com> April 2014

<groupon-today.com> April 2014

<grouponclick.com> April 2014

<groupondaily.com> April 2014

<grouponoffer.com> April 2014

<groupon-usa.com> April 2014

5. Parties’ Contentions

A. Complainant

1. The Complainant submits that the disputed domain names are identical and confusingly similar to the trade mark GROUPON in which the Complainant has rights.

2. The Respondent has no rights or legitimate interests in respect of the disputed domain names. In particular the Respondent is not authorised to use the mark GROUPON and cannot claim any rights or legitimate interests in the same.

3. The domain names in dispute were registered and are being used in bad faith. In particular the Complainant submits that at the date of registration of the disputed domain names the Respondent knew or at least should have known of the existence of the Complainant’s trade marks and registration of domain names consisting of the Complainant’s well known trade marks constitutes bad faith per se.

4. The Complainant also relies upon the evidence set out at Annex 3 to the Complaint that the Respondent offered to sell the disputed domain names in dispute for amounts in excess of out-of-pocket expenses.

B. Respondent

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

6. Discussion and Findings

A. Preliminary Issue: Consolidation of Respondents

One of the disputed domain names, <grupon.com>, is registered to Ryan G Foo, PPA Media Services. The remaining nine disputed domain names are registered to Domain Admin, Whois Privacy Corp.

Previous UDRP panels have articulated criteria governing whether a complaint filed against multiple respondents may be accepted. These criteria include whether “(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.” See paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Panel finds nothing to indicate that consolidation would not be fair and equitable in these circumstances.

The Panel also finds, for the reasons below, that the disputed domain names are subject to common control:

(i) the Respondent listed on one of the disputed domain name registrations uses the alias “Ryan G Foo, PPA Media Services”. It has already been determined through numerous UDRP decisions that “Ryan G Foo, PPA Media Services” is also operating as a single individual or entity along with Fundacion Private Whois/Domain Administrator. The Complainant cites a number of authorities to support this including an earlier UDRP decision: Inter-Continental Hotels Corporation v. Fundacion Private Whois Domain Administrator and PPA Media Services, WIPO Case No. D2012-1095.

(ii) the Respondent listed on the remaining nine domain name registrations uses the alias “Domain Admin, Whois Privacy Corp.” This Respondent shares the exact same address, address format and phone number as Fundacion Private Whois/Domain Administrator who, through prior UDRP decisions, has already been determined to be operating as a single individual or entity along with “Ryan G Foo, PPA Media Services”.

The effect of this, in summary, is that the Respondent’s multiple aliases have all been linked and determined to be operated by a single person or entity in previous UDRP findings.

Therefore the Panel finds that the disputed domain names are being controlled by a single entity, and consolidation is appropriate.

B. Identical or Confusingly Similar

In summary the Complainant submits that it satisfies paragraph 4(a)(i) of the Policy because the disputed domain names are identical or confusingly similar to the mark GROUPON. GROUPON has been registered as a trade mark by the Complainant in numerous countries including the United States. It submits that it is a famous, well-known mark internationally.

In dispute are three versions of the domain name. Firstly the domain name spelt <groiupon.com>, secondly variations of the domain name incorporating “groupon” with an additional term, and thirdly <grupon.com>.

With regard to the first, the Complainant submits that <groiupon.com> consists of a “purposeful misspelling” of the mark GROUPON and is therefore confusingly similar to the Complainant’s trade mark GROUPON. It consists of the mark GROUPON with the insertion of the letter “i” between the “o” and “u” of the Complainant’s mark GROUPON. Otherwise it is identical to the Complainant’s mark. The Panel accepts this argument.

The disputed domain names incorporating the word “groupon” consist of the word “groupon” together with a number of suffixes; “click”, “-daily”, “daily”, “-free”, “offer”, “-promo”, “-today” and “-usa”. In the Panel’s view these suffixes consist merely of the addition of generic and/or descriptive terms to the Complainant’s mark GROUPON together with in most cases the use of a hyphen.

The use of the word “daily” simply demonstrates that daily deals on offer, “promo” shows that daily deals include online promo codes and coupons, “click” shows that it is an online web based business requiring the user to “click” on the “buy” button, “offer” shows that deals can be purchased by way of offer, “usa” is simply a geographical term, “today” is descriptive of a daily activity and “free” is purely descriptive of a “free” price. The Complainant submits that the use of the hyphen should be disregarded.

In the absence of contrary submissions or evidence of the contrary the Panel accepts these submissions and finds that these terms are purely generic and descriptive and that the disputed domain names incorporating the word “groupon” are confusingly similar to the Complainant’s mark GROUPON.

The third form of disputed domain name <grupon.com> and in the Panel’s view this is simply a variation in the spelling of the mark GROUPON.

Accordingly, the Panel finds that the disputed domain names are confusingly similar to the trade mark GROUPON in which the Complainant has rights worldwide.

C. Rights or Legitimate Interests

In summary the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. This is because it has never been known by the name GROUPON and the fact that the Respondent registered the disputed domain names well after the Complainant acquired trade mark rights in the mark GROUPON.

Moreover there is no evidence that the Respondent is sponsored by or affiliated with the Complainant in any way. Nor has the Complainant given the Respondent permission to use the Complainant’s trade marks in any manner including in a disputed domain name.

The Complainant relies upon a WhoIs search exhibited at Annex 2 to the Complaint as evidence that the Respondent cannot be regarded as having been commonly known by the disputed domain names.

There is also evidence that the Respondent is offering to sell the disputed domain name <grupon.com> for an amount that exceeds the Respondent’s documented out of pocket expenses. This is further evidence of a lack of a right or legitimate interest in the disputed domain name by the Respondent. WhoIs record for <grupon.com> features a link stating that the domain name is for sale. When accessed this redirects users into a SEDO page on which bids for the domain name may be submitted with USD 500 being the minimum bid amount. This is set out at Annex 3 to the Complaint.

It is also clear that the Respondent has failed to make use of the disputed domain names incorporating the mark GROUPON and this also evidences a lack of rights or legitimate interests in the disputed domain names.

The Panel, in the absence of evidence to the contrary, accepts these arguments and finds that the Respondent had no rights or legitimate interests in respect of the disputed domain names.

D. Registered and Used in Bad Faith

The Complainant draws attention to the fact that the Respondent assumed ownership of the domain names in dispute between December 24, 2011 and May 15, 2014 which is well after the Complainant first used the trade mark GROUPON. This in itself is evidence that the Respondent registered the domain names in bad faith.

The Complainant and its marks GROUPON are known internationally (see section 4 above). The Complainant relies upon the well established earlier authority of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 to support its submission that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of the” Complainant’s brands at the time the domain name was registered.

In the absence of any evidence to the contrary the Panel accepts this submission.

In the Panel’s view this by itself would be sufficient to justify a finding of bad faith. However, the Panel also takes into account the Respondent’s offer to sell the domain name <grupon.com> for amounts in excess of out of pocket expenses and that this constitutes bad faith registration use under paragraph 4(b)(i) of the Policy.

The Panel is also strengthened in this view by the fact that there are ten domain names in dispute each of which incorporates the Complainant’s trade mark GROUPON in various forms. These constitute both typo squatted versions of the mark GROUPON as well as the domains the Respondent has created by joining the mark GROUPON with descriptive words related to the Complainant’s business. This constitutes a pattern of misappropriation of the trade mark and brand GROUPON which is evidence of registration and use in bad faith.

Accordingly, the Panel finds for the Complainant in respect of this element.

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 disputed domain names <groiupon.com>, <grouponclick.com>, <groupon-daily.com>, <groupondaily.com>, <groupon-free.com>, <grouponoffer.com>, <groupon-promo.com>, <groupon-today.com>, <groupon-usa.com> and <grupon.com> be transferred to the Complainant.

Clive Duncan Thorne
Sole Panelist
Date: February 27, 2015

¹ The Panel notes that the original registration date of this disputed domain name, as confirmed by the Registrar, is August 13, 2004. In the circumstances of this case, the Panel accepts the Complainant’s contention that at the earliest the Respondent registered <grupon.com> on December 24, 2011, as this is the date the WhoIs history for this disputed domain name reflects its registration with the Registrar, indicating a change of registrant on that date.