WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupon, Inc. v. Wun Li, CreateNext, Inc.
Case No. D2017-1232
1. The Parties
Complainant is Groupon, Inc. of Chicago, Illinois, United States of America (“United States” or “U.S.”), represented by Greenberg Traurig, LLP, United States.
Respondent is Wun Li, CreateNext, Inc. of San Jose, California, United States.
2. The Domain Name and Registrar
The disputed domain name <groupon.club> 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 June 23, 2017. On June 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2017, the Registrar 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 June 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 21, 2017.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 28, 2017. 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 Groupon, Inc. (“Groupon”) is a worldwide e-commerce marketplace connecting subscribers with local merchants. By leveraging the company’s global relationships and scale, Groupon presents an online audience with discounts on a product or service. As of the fourth quarter of 2016, Groupon has over 52.7 million active customers, has worked with over 1 million merchants worldwide, and sold more than 1 billion deals. It operates in 15 countries and over 500 markets, has more than 8,000 employees worldwide and has exceeded USD 6 billion in trailing-twelve month gross billings. Groupon’s primary website at www.groupon.com has more than 150 million unique monthly visitors, including approximately 77 million in North America, and it also has local websites for its more than 500 markets. The Groupon mobile app is the number 1 retail app on both iOS and Android, having been downloaded over 145 million times, and is in the top 25 most used apps.
Complainant owns multiple trademark registrations for trademarks incorporating its well-known GROUPON trademark with the United States Patent and Trademark Office (“USPTO”) 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. No. 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 GROUPONLIVE, issued December 6, 2011; U.S. Reg. No. 4,010,592 for GROUPON NOW, issued August 9, 2011; 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. Groupon also owns trademark registrations for its GROUPON trademark in at least 50 other countries.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is identical to its GROUPON mark, and incorporates its GROUPON mark in full, adding only the generic Top-Level Domain (“gTLD”) “.club” after Complainant’s mark.
Complainant alleges that it has not authorized, licensed, or otherwise permitted Respondent to use its GROUPON mark or to apply for any domain name incorporating the mark. Complainant argues that Respondent has never been commonly known under the disputed domain name, and is not using the disputed domain name in connection with any bona fide offering of products or services.
Complainant alleges Respondent had actual knowledge of Complainant’s famous GROUPON mark, as evidenced by Respondent’s use of the mark in the disputed domain name. Complainant also argues that the passive holding of the disputed domain name by Respondent demonstrates Respondent’s bad faith.
Complainant alleges Respondent has demonstrated a “pattern of conduct” of registering domain names utilizing well-known trademarks in which Respondent has no rights or legitimate interests and that this pattern is further evidence of Respondent’s registration and use of the disputed domain name in bad faith.
Finally, Complainant alleges that because the disputed domain name does not publicly resolve to content but may allow authorized persons to view content, it does not preclude the possibility that the Registrant is in fact using the disputed domain name in bad faith with respect to those specifically authorized to view this content or in email addresses based on the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In rendering its Decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules, which provides that, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” Paragraph 14(b) of the Rules further provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with the provisions of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inference therefrom as it considers appropriate.” Paragraph 5(f) of the Rules further provides that “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”
The failure of Respondent to respond does not automatically result in a favorable decision to Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. The three elements are assessed below.
A. Identical or Confusingly Similar
Respondent’s <groupon.club> domain name is identical to Complainant’s GROUPON mark, and incorporates Complainant’s GROUPON mark in full, adding only the gTLD “.club” after Complainant’s mark. Numerous panel decisions have found that the mere addition of a gTLD and generic terms to a complainant’s mark generally fails to produce a domain name distinct from the complainant’s mark. See, e.g., Lotto Sport Italia S.p.A. v. David Dent, WIPO Case No. D2016-2532 (“It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark”); see also Florida National University, Inc. v. Registration Private, Domains By Proxy, LLC / Toby Schwarzkopf, WIPO Case No. D2017-0138 (“Although the Top-Level Domain (“TLD”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, TLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name”); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”).
B. Rights or Legitimate Interests
Complainant has not authorized, licensed, or consented to Respondent’s registration and use of domain names incorporating Complainant’s GROUPON mark, or any confusingly similar variation thereof. Furthermore, to Complainant’s knowledge, there are no prior trademark applications or registrations in the name of Respondent for any mark incorporating GROUPON anywhere in the world. Moreover, nothing in the WhoIs information related to the disputed domain name indicates that Respondent is commonly known by the designation “Groupon” or anything similar thereto. Respondent is not commonly known by the <groupon.club> domain name pursuant to Policy 4(c)(ii), and thus has no legitimate interest in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding no rights or legitimate interests where (1) respondent is not a licensee of complainant; (2) complainant’s rights in the mark precede respondent’s registration; (3) respondent is not commonly known by the domain name in question); Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020 (finding no rights or legitimate interests where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name).
While there is no content posted on a website to which the disputed domain name resolves, Respondent is passively holding a domain name containing Complainant’s GROUPON mark. Passive holding of a domain name does not constitute a bona fide or legitimate use. See Standard Life Employee Services Limited v. Shen Zhong Chao, WIPO Case No. D2017-1114.
C. Registered and Used in Bad Faith
Respondent registered and uses the disputed domain name in bad faith. Respondent is highly likely to have had actual knowledge of Complainant’s famous GROUPON mark, as evidenced by the world-wide renown that mark has attained through extensive advertising and use, as well as by Respondent’s use of the identical mark in the disputed domain name. The fact that Respondent has registered a domain name which incorporates the famous trademark of a well-known company is alone sufficient to give rise to an inference of bad faith. See Singapore Airlines Limited v. P & P Servicios de Communicacion S.L., WIPO Case No. D2000-0643 (holding that “the domain name “singaporeairlines.com” is so obviously connected with a well-known airline that its very registration and use by someone with no connection with the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cyber-squatting’”).
Paragraph 4(b)(ii) of the Policy also provides that registration of a domain name to prevent the owner from using its trademark in a domain name is evidence of bad faith where it is part of a pattern of such conduct. Such a “pattern of conduct” of registering domain names utilizing well-known trademarks in which the respondent has no rights or legitimate interests is further evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to 4(b)(ii) of the Policy. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409. Numerous UDRP panels have found that a pattern of registration of domain names of other well-known entities is evidence of bad faith registration and use of the disputed domain names. See NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128; see also Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338. Here, Respondent is also the owner of at least one other domain name that is identical to, or incorporates, the well-known marks of another company: <chromecast.cloud>, which is identical to the name of Google’s well-known content streaming device. (Evidence of such similarity was annexed to the Complaint.)
Complainant is not aware of any use of “Groupon” in any way other than in connection with Complainant, and Respondent offers none. Accordingly, the disputed domain name is so obviously connected with the Complainant and its services that its very use by someone with no connection to the Complainant suggests opportunistic bad faith. See The Elizabeth Taylor Cosmetics Company v. NOLDC, Inc., WIPO Case No. D2006-0800 (finding <elizabethtaylorperfume.com> domain name so obviously connected with Complainant, who sold perfume under the ELIZABETH TAYLOR trademark, that it suggested opportunistic bad faith); see also Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
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, <groupon.club>, be transferred to Complainant.
Michael A. Albert
Date: August 11, 2017