WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupon, Inc. v. Sergey Khromov
Case No. D2015-1654
1. The Parties
Complainant is Groupon, Inc. of Chicago, Illinois, United States of America ("United States"), represented by Greenberg Traurig, LLP, United States.
Respondent is Sergey Khromov of Sunny Isles Beach, Florida, United States.
2. The Domain Names and Registrars
The disputed domain name <grouponing.com> is registered with Name.com LLC. The disputed domain name <grouponstores.com> is registered with Moniker Online Services, LLC (collectively referred to as the "Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 18, 2015. On September 21, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 22, 2015, Name.com LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On September 23, 2015, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 20, 2015.
The Center appointed R. Eric Gaum as the sole panelist in this matter on November 2, 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
Complainant owns multiple trademark registrations for trademarks incorporating its GROUPON trademark with the United States Patent and Trademark Office in connection with the marketing of its services, including U.S. Reg. No. 3,685,954 for GROUPON, issued September 22, 2009; U.S. Reg. 4,222,645 for GROUPON, issued October 9, 2012; U.S. Reg. No. 4,302,184 for GROUPON GOODS, issued March 12, 2013; U.S. Reg. No. 4,283,740 for GROUPON RESERVE, issued January 29, 2013; U.S. Reg. No. 3,994,088 for GROUPONICUS, issued July 12, 2011; U.S. Reg. No. 4,068,591 for GROUPON LIVE, issued December 6, 2011; U.S. Reg. No. 4,010,592 for GROUPON NOW, issued August 5, 2014; U.S. Reg. No. 3,965,842 for GROUPONWORKS, issued May 24, 2011; U.S. Reg. No. 4,309,987 for GROUPON VIP, issued on March 26, 2013; U.S. Reg. No. 3,994,090 for LIVE OFF GROUPON, issued on July 12, 2011; and U.S. Reg. No. 4,547,861 for MY GROUPON, issued on June 10, 2014. In addition to its trademark registrations in the U.S., Complainant also has trademark registrations for its GROUPON trademark in at least 50 other countries. Complainant has used the GROUPON trademark since at least as early as 2008.
Respondent registered <grouponing.com> on February 12, 2010 and <grouponstores.com> on February 21, 2011.
5. Parties' Contentions
Complainant owns a valid and incontestable United States federal trademark registration for GROUPON, demonstrating Complainant's rights in the GROUPON mark. Complaint owns trademark registrations for its GROUPON mark in the United States, where Respondent is located based on the publicly available WhoIs information.
Complainant operates a website accessible at "www.groupon.com". On its website, Complainant prominently uses its GROUPON trademark and features general information regarding its various products and services. Respondent's <grouponing.com> domain name incorporates and is virtually identical to Complainant's GROUPON mark in that it merely adds the letters "ing" after Complainant's GROUPON mark. Respondent's <grouponstores.com> domain name incorporates Complainant's GROUPON mark in full, changing the mark only by adding the generic term "stores", and the generic top-level domain ("gTLD") ".com".
Without Complainant's authorization or consent, Respondent registered the disputed domain names <grouponing.com> and <grouponsales.com>. Respondent is not commonly known by these disputed domain names, has not used or prepared to use the disputed domain names in connection with a bona fide offering of goods or services, and has not been authorized, licensed, or otherwise permitted by Complainant to register and/or use these disputed domain names. The pertinent WhoIs information identifies the registrant of the disputed domain names as "Sergey Khromov".
Long after Complainant established its rights in its GROUPON trademark, Respondent, without Complainant's authorization or consent, registered the <grouponing.com> and <grouponstores.com> domain names, which are virtually identical to Complainant's GROUPON mark and wholly incorporate Complainant's GROUPON mark, and are thus confusingly similar to Complainant's mark. Respondent is using the disputed domain names to divert Internet traffic to commercial websites that feature advertisements for goods and services in direct competition with Complainant. These websites contains links such as "Airline tickets", "Printable Grocery Coupons", "Online Shopping Stores", and "Best Online Stores", which direct Internet users to advertisements for related goods and services which are in direct competition with Complainant. Furthermore, Respondent presumably garners fees for getting visitors to the disputed domain names to click the advertising links thereon, directing them to websites offering goods and services in competition with Complainant, as described above.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center forwarded notification of the complaint to Respondent via email and the written notice of the proceeding via courier in accordance with the contact details found in the appropriate WhoIs database confirmed by the Registrar. The Center also forwarded notification of default to Respondent via email.
Based on the methods employed to provide Respondent with notice of the Complaint and default the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of this proceeding. The Panel also finds that the failure of Respondent to furnish a reply is not due to any omission by the Center.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the respondent's 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 domain name; and
(iii) the respondent's domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
As Respondent has failed to submit a response to the Complaint, the Panel may accept as true all of the allegations of the Complaint (see, Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Based upon the registered trademark for GROUPON and the continuous use of the mark, Complainant clearly has rights in the mark. The Panel agrees with Complainant that <grouponing.com> and <grouponstores.com> are both nearly identical to Complainant's registered GROUPON trademark. The fact that Respondent has added "ing" and "stores" to the disputed domain names does nothing to diminish confusion as <grouponing.com> and <grouponstores.com> remain confusingly similar to the GROUPON trademark. Complainant asserts, and the Panel agrees, that the disputed domain names <grouponing.com> and <grouponstores.com> are confusingly similar to the trademark GROUPON.
The Panel finds that the disputed domain names <grouponing.com> and <grouponstores.com> are confusingly similar to the trademark GROUPON owned by Complainant pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the respondent's rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has not licensed or authorized Respondent to use its trademark in any manner and there has never been any relationship between them.
There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the disputed domain names <grouponing.com> or <grouponstores.com>.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names <grouponing.com> or <grouponstores.com> pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists several circumstances, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
(i) circumstances indicating that you [respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel finds that Respondent's registration and commercial use of the <grouponing.com> and <grouponstores.com> domain names demonstrates registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Respondent is intentionally attempting to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's websites. Long after Complainant established its rights in its well-known trademark, Respondent acquired and began commercially using the <grouponing.com> and <grouponstores.com> domain names to divert Internet traffic intended for Complainant to websites featuring advertising for goods and services in competition with Complainant.
Furthermore, Respondent's registration and use of the disputed domain names to divert Internet traffic to Complainant's competitors establishes Respondent's bad-faith registration and use under paragraph 4(b)(iii) of the Policy. The disputed domain names were registered for the purpose of disrupting the business of a competitor. Respondent was certainly aware of Complainant's rights in its GROUPON trademark when Respondent acquired the disputed domain names, which incorporate the well-known GROUPON trademark. At a minimum, Respondent had constructive knowledge of Complainant's marks due to their registration through the U.S. Patent and Trademark Office. The Panel finds that Respondent's registration and use of the disputed domain names, with actual or constructive knowledge of Complainant's trademark rights, establishes Respondent's registration and use of the disputed domain names in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
The Panel finds Complainant has established that Respondent registered and used the disputed domain names <grouponing.com> and <grouponstores.com> in bad faith, pursuant to 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 <grouponing.com> and <grouponstores.com> be transferred to Complainant.
R. Eric Gaum
Date: November 16, 2015