WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupon, Inc. v. Domains By Proxy, LLC / Ics Inc.
Case No. D2015-0519
1. The Parties
The Complainant is Groupon, Inc. of Chicago, Illinois, United States of America (“US”), represented by CSC - Corporation Service Company, US.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, US/ Ics Inc. of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <groupongolf.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2015. On March 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 30, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 30, 2015.
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 proceedings commenced on April 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2015.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on May 4, 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
The Complainant is a well-known daily deals provider. It owns US trademark registration No. 3685954 GROUPON dated September 22, 2009, with first use in commerce on October 21, 2008, for “promoting the goods and services of others by providing a website featuring coupons, rebates, price-comparison, product reviews, links to the retail websites of others, and discount information” and many others including the word “groupon”, such as GROUPON & DESIGN, GROUPON NOW, LIVE OFF GROUPON, GROUPON VIP, GROUPON RESERVE et cetera.
The Complainant owns the domain name <groupon.com> and according to “compete.com”, the website located at “www.groupon.com” attracts over 18 million unique visitors monthly.
The disputed domain name <groupongolf.com> was registered on February 25, 2011.
On February 17, 2015 the Complainant sent a demand letter to the Respondent which remained unanswered, despite several follow up emails.
5. Parties’ Contentions
The Complainant contends, basically, the following:
That it is a worldwide leader in local commerce. It offers hundreds of daily deals on restaurants and local businesses to over 53.8 million active customers and has over 250 million subscribers worldwide. It currently operates in 47 countries with new markets being added regularly. Since 2008, it has been offering users daily deals tailored to each user’s location. Thus, the trademark GROUPON, through extensive use around the world, has generated a vast goodwill and has become famous and that the disputed domain name is identical or confusingly similar to the GROUPON trademark.
That the Respondent has no rights nor legitimate interests in the disputed domain name <groupongolf.com>, and, on the balance of evidence, should be found to have registered and used the disputed domain name in bad faith. The Respondent has the disputed domain name on sale. This and the lack of response to the Complainant’s cease and desist letter shows that the Respondent is taking advantage of the fame of the trademark GROUPON to obtain commercial gain.
In view of the foregoing, the Complainant requests that the disputed domain name <groupongolf.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complaint to succeed in this proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed 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 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 Panel considers that the disputed domain name <groupongolf.com> and the trademark GROUPON in which the Complainant has rights are confusingly similar to the extent of causing Internet user confusion. In this connection, the descriptive generic word “golf” included in the disputed domain name relates to and describes a portion of the Complainant’s business and services. Thus, it is insufficient to effectively distinguish the disputed domain name from the Complainant’s famous trademark GROUPON.
As it may be seen from the Complainant’s website, “www.groupon.com”, the Complainant sells deals for golf trips, lessons and equipment under the GROUPON mark. Therefore, the Internet users will think that the website at the disputed domain name is related to or sponsored by the Complainant.
Therefore, the Complainant has succeeded on this first element of the Policy.
B. Rights or Legitimate Interests
The second element that the Complainant must prove pursuant to paragraph 4(a)(ii) of the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(a) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of production shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a strong prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
In that connection, the Complainant has submitted relevant evidence showing that the Respondent’s disputed domain name redirects Internet users to a website featuring links to third party websites, some of which directly compete with the Complainant’s business, such as “golf coupons” and “discount golf club”. The Respondent’s website also features a link that directly references the Complainant’s business.
Moreover, presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the disputed domain name website. It has been held in prior UDRP decisions that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name.
In addition, the disputed domain name is currently been offered for sale, which does not show a bona fide use of the disputed domain name by the Respondent.
In terms of the Policy, such use in the present circumstances does not appear to be a noncommercial or fair use of the disputed domain name and therefore, the Panel finds that the Respondent is trying to misleadingly divert consumers. Moreover, the Panel finds that the Respondent is attracting Internet users to its website for commercial gain. Such use cannot be considered a bona fide use, or fair use or noncommercial use.
Additionally, there is no evidence that the Respondent is commonly known as or identified by “groupongolf”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
In view of the foregoing, and in absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has made out the second element of its case.
C. Registered and Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant is a worldwide leader in local commerce and has filed relevant evidence showing that it owns trademark registrations for GROUPON in the US, which predate the registration of the disputed domain name. The trademark GROUPON has been consistently used since October 2008, while the disputed domain name was registered by the Respondent in February 2011.
Since the trademark GROUPON is well-known not only in the US but also internationally, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark GROUPON before registering the disputed domain name, which evidences bad faith registration.
Furthermore, as stated by the Complainant and on the basis of printouts of the website to which the disputed domain name resolves, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
For such reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its 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 <groupongolf.com> be transferred to the Complainant.
Miguel B. O'Farrell
Date: May 12, 2015