WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Lim Chia Wah
Case No. D2018-1957
1. The Parties
The Complainant is Groupon, Inc. of Chicago, Illinois, United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama City, Panama / Lim Chia Wah of Singapore, Singapore, self-represented.
2. The Domain Name and Registrar
The disputed domain name <groupon.space> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2018. On August 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2018, the Registrar transmitted by email to the Center its verification response confirming it is the registrar and the language of the registration agreement is English, but 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 September 13, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On September 19, 2018, the Complainant requested an extension to file an amended Complaint. The Complainant filed the amended Complaint on September 20, 2018.
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 September 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2018. The Respondent did not file any substantive Response, but sent informal emails to the Center on September 13, 2018, and September 14, 2018 (two emails). On September 14, 2018, the Center sent a communication regarding possible settlement to the Parties, to which the Complainant did not reply. On October 15, 2018, the Center informed the Parties that it will proceed to appoint the Panel.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 17, 2018. 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 operates a marketplace online, principally from its website at “www.groupon.com”. It claims it offers “consumers a vast marketplace of unbeatable deals all over the world.” It appears to have been established before 2010. By 2017, it was operating in 15 countries and (what it describes as) over 500 markets. It has 6,000 employees worldwide, more than 49 million active customers and annual revenues in excess of USD 5.6 billion. According to the Complaint, it has 67 million unique monthly visitors and its mobile apps have been downloaded by 183 million people around the world.
The Complaint includes evidence of numerous trademarks registered by the Complainant. For present purposes, it is sufficient to notice:
- United States Registered Trademark No. 3,685,954 for GROUPON in respect of promotion of goods and services of others via a website in International Class 35. This trademark was registered on September 22, 2009 and claims first use in commerce in the United States on October 21, 2008;
- Panama Registered Trademark No. 202052 for GROUPON for services in International Class 35 and which was registered on July 8, 2011; and
- Singapore Registered Trademark No. 1206094 which was registered on April 7, 2014.
It appears that the Second-named Respondent has registered the disputed domain name using the privacy service of the First-named Respondent. As nothing turns on this (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.4), the Panel will refer simply to the Respondent, for convenience.
According to the Registrar, the Respondent first registered the disputed domain name on December 24, 2015.
The disputed domain name has never resolved to an active website. In its informal communications, the Respondent has not suggested that the disputed domain name has ever been used in any other way. In an email on August 10, 2017 (arising from communications when the Complainant’s attorneys sent the Respondent a cease and desist letter), however, the Respondent offered to sell the disputed domain name for a price of USD 4,999.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for at least GROUPON, in addition to numerous GROUPON–formative marks. The Complainant also claims that it has developed an extensive reputation in GROUPON as an unregistered trademark around the world. On the record in this case, the Panel accepts that claim.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview 3.0, section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainant's trademark, GROUPON, by the addition of the gTLD “.space”.
Disregarding the “.space” gTLD, therefore, the Complainant’s trademark GROUPON is clearly discernible within the disputed domain name. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and the burden of production on this element will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. Nor is there any basis to infer that the Respondent is commonly known by “Groupon” or any name from which that could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. So far as the record in this case shows, the Respondent is not using and has never actually used the disputed domain name.
The Complainant started using the disputed domain name long before the disputed domain name was registered. The Complainant’s trademark registrations identified above were also registered before the Respondent registered the disputed domain name, in the case of the United States and Panama registrations, at least, many years beforehand.
The word GROUPON is, so far as the Panel is aware, an invented or coined word and not an ordinary dictionary word or otherwise descriptive or generic. So far as the materials before the Panel indicate, the word GROUPON has significance only as the badge of origin for the Complainant’s services.
Taking these matters together, the Complainant has established a strong prima facie case that the Respondent does not have rights nor legitimate interests in the disputed domain name. The Respondent’s emails to the Center simply advert to its earlier offer to sell the disputed domain name. The Respondent has not sought to rebut the Complainant’s allegations or otherwise justify his or its registration of the disputed domain name.
In these circumstances, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As (so far as the Panel is aware on the record in this proceeding) the word GROUPON has significance solely as the source identifier for the Complainant’s services and having regard to the length and extent of use by the Complainant before the Respondent registered the disputed domain name, it seems highly unlikely that the Respondent was not aware of the Complainant’s adoption and use of GROUPON when he or it registered the disputed domain. The Respondent has not denied the Complainant’s allegations in that respect.
The passive holding of a domain name which is confusingly similar to another’s trademark, in circumstances where the registrant does not have any rights or legitimate interests in the domain name as is the case here, qualifies as use in bad faith under the Policy: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. All the more so where, as here, the Respondent has offered to sell the disputed domain name for a sum which appears to be considerably in excess of the standard fee for registering a name in the “.space” domain.1
Accordingly, on the record in this administrative proceeding, the Panel finds the Complainant has established that the disputed domain name has been registered and used in bad faith under 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 name <groupon.space> be transferred to the Complainant.
Warwick A. Rothnie
Date: October 31, 2018
1 Depending on registrar, it appears that names may be registered in “.space” for USD 11.99 for one year.