WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupon, Inc. v. Whoisguard Protected / Saidou Wane
Case No. D2016-0129
1. The Parties
The Complainant is Groupon, Inc. of Chicago, Illinois, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Whoisguard Protected of Panama City, Panama / Saidou Wane of Le Havre, France.
2. The Domain Name and Registrar
The disputed domain name <opensourcegrouponscript.com> (the "Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 20, 2016. On January 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 25, 2016 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 the same date.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 16, 2016.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 18, 2016. 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 owns and operates a global e-commerce market place that allows its subscribers to access particular deals and discounts offered by local merchants in various markets around the world, often through the use of particular coupons. As of 2014, the Complainant operated in 47 countries, over 500 markets and had over 250 million subscribers who can take advantage of the deals offered by local merchants using the Complainant's services.
The Complainant has held a trade mark for the word mark GROUPON (the "GROUPON Mark") since at least 2009 in the United States. The Complainant has also registered the domain name <groupon.com> which redirects to the Complainant's website which has almost 150 million unique monthly visitors.
The Domain Name <opensourcegrouponscript.com> was created on March 13, 2015. It currently resolves to a site (the "Respondent's Website") that offers to provide computer scripts described as "YOUR GROUPON CLONE" and "Open Source Groupon Script" that purport to allow the user to create a "daily deals" site that is similar to the Complainant's website.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's GROUPON Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the GROUPON Mark having registered numerous marks containing "groupon" including the GROUPON Mark on September 22, 2009.
The Domain Name consists of the GROUPON Mark in its entirety with the addition of the generic terms "open source" and "script". Numerous panel decisions have found that the mere addition of the generic Top-Level Domain ("gTLD") ".com," and generic terms to a complainant's mark fails to produce a domain name distinct from a complainant's mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use its marks. The Respondent does not use the Domain Name for a bona fide purpose. Rather, the Respondent is using the Domain Name to publish a website offering to provide computer scripts to create an identical copy of the Complainant's website, in violation of the Complainant's copyright, trade dress, and other rights, for the purpose of competing directly with the Complainant. Such use does not grant the Respondent rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Respondent had actual or constructive knowledge of the GROUPON Mark at the time of registration. The Domain Name has been used to publish a website offering for sale a script that creates websites that are "clones" of the Complainant's website to offer services directly in competition with the Complainant. Such activities fall squarely into the explicit example of bad faith registration and use found in the Policy at paragraph 4(b)(iv). See Nokia Corp. v. Private, WIPO Case No. D2000-1271 (finding bad faith registration and use pursuant to paragraph 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant's famous mark). Furthermore, the Respondent's registration and use of the Domain Name to provide identical copies of the Complainant's website to compete directly against the Complainant establishes the Respondent's bad-faith registration and use of the Domain Name under paragraph 4(b)(iii), because the Domain Name was registered for the purpose of disrupting the business of a competitor.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the GROUPON Mark, having registrations for GROUPON as a trade mark in the United States of America.
The Domain Name consists of the GROUPON Mark in its entirety with the addition of the descriptive terms "open source" and "script". The Panel finds that the addition of "open source" and "script" does not prevent a finding of confusing similarity between the GROUPON Mark and the Domain Name as the GROUPON Mark is the dominant and unique element in the Domain Name. The Panel finds that the Domain Name is confusingly similar to the Complainant's GROUPON Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 legitimate non-commercial 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." (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the GROUPON Mark or a mark similar to the GROUPON Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears from the evidence submitted by the Complainant that the Respondent is using the Domain Name, and the GROUPON Mark, to offer a product unconnected with the Complainant that would allow third parties to create websites that spoof the Complainant's website and/or compete directly with the Complainant. Such conduct is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name's registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Respondent's Website advertises itself as offering a script for a "Groupon Clone" being a daily deals site, similar to the one operated by the Complainant. Furthermore the GROUPON Mark is a coined mark with no generic or descriptive meaning. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainant. The registration of the Domain Name in awareness of the Complainant and any rights it had at the time in the GROUPON Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to advertise a product using the GROUPON Mark that appears to create sites that spoof the Complainant's website and compete directly against the Complainant. It is a reasonable inference that the purpose of the Respondent's registration and use of the Domain Name was to either disrupt or create confusion for the Complainant's business. Furthermore, given the fame of the Complainant's Mark it is difficult to conceive of circumstances in which the Respondent's use of the Domain Name could be legitimate, see Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071 and Cobham Plc v. Neog Inc, WIPO Case No. D2005-0503. The Panel, noting that the circumstances set out in Policy, paragraph 4(b) are not exhaustive, finds that the Respondent is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name, <opensourcegrouponscript.com>, be transferred to the Complainant.
Date: February 22, 2016