WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupon, Inc. v. Lutz-Martin Hoffmann
Case No. D2019-0004
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 Lutz-Martin Hoffmann of Osterburg, Germany.
2. The Domain Name and Registrar
The disputed domain name <groupongoodsglobal.com> (the “Disputed Domain Name”) is registered with 1&1 Internet SE (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2018. On January 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 8, 2019, 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 Complainant on the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email in German and English regarding the language of the proceedings. Complainant filed an amended Complaint on January 14, 2019 and requested English to be the language of the proceedings. On January 13, 2019, Respondent requested German to be the language of the proceedings.
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 Respondent of the Complaint in both German and English, and the proceedings commenced on January 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2019. Respondent did not submit any response. Accordingly, the Center notified the Parties about the commencement of the panel appointment process on February 6, 2019 .
The Center appointed Peter Wild as the sole panelist in this matter on February 19, 2019. 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 is a global business and a platform for a wide range of goods or services locally, at discounted prices. Complainant owns 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 registration No. 3685954 for GROUPON, registered on September 22, 2009; registration No. 4222645 for GROUPON, registered on October 9, 2012 and more; Complainant also owns European Union Trade Mark registrations Nos. 011463981 for GROUPON, registered on April 11, 2014, as well as 008226508 for GROUPON, registered on November 14, 2009; Complainant also has trademark registrations for its GROUPON trademark in at least 50 other countries.
The Disputed Domain name was registered on October 27, 2013 and redirects to a website with links to further websites. It appears to be used as a pay-per-click (“PPC”) website. This website contains links such as “Groupon Discount” which directs Internet users to advertisements for related goods and services which are in direct competition with Complainant.
Language of the Proceeding
Complainant filed the Complaint in English. The language of the Registration Agreement for the Disputed Domain Name is German. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. On January 8, 2019, the Center invited the Parties, in an email in English and German, to comment on the requested procedural language being English, with a deadline of January 13, 2019. Complainant, by email of January 12, 2019, requested English to be the language of the proceeding for the following reasons: Complainant is unable to communicate in German and translation of the Complaint would unfairly disadvantage and burden Complainant and delay the proceedings and adjudication of this matter; The Disputed Domain Name is comprised of Latin characters and using the English words “goods” and “global”. The Disputed Domain Name resolves to a website with English content and the Disputed Domain Name is offered for sale on a website in English.
Thus, according to Complainant, conducting the proceedings in English will not result in unfairness to Respondent given its presumed competence in English, see Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191; and Fissler GmbH v. Chin Jang Ho, WIPO Case No. D2008-1002. In such circumstances previous panels have found that the proceeding should be conducted in English but that respondent may submit any documents or assertions in the language of the registration agreement. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.
Respondent informed the Center by email on January 13, 2019, that he requests “..to have further correspondence in German…” (“…weitere Korrespondenz in Deutsch zu gestalten…”) and that Sedo (the Registrar) is domiciled in Germany with German worded Terms and Conditions.
The Center has issued all communications with the Parties in English and German, including the communication of January 16, 2019, with which the Respondent was notified of the commencement of the administrative proceedings with a deadline of February 5, 2019, to file a Response. Respondent didn’t file a response.
Pursuant to paragraph 11(a) of the Rules, the Panel may determine the language of the proceedings having regard to all circumstances, and to help ensure fairness, and maintain an inexpensive and expeditious avenue for resolving domain disputes.
The Panel concludes that Complainant’s claims are indications that Respondent is sufficiently fluent in English. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, the opportunity for Respondent to request German as the procedural language and time and costs. Under all these aspects, the Panel exercises its discretion, according to paragraph 11(a) of the Rules and allows the proceedings to be conducted in English but that Respondent may submit documents or assertions in German.
5. Parties’ Contentions
According to Complainant, it is a global leader of local commerce. As of 2017, Complainant claims to operate in 15 countries, including Germany where Respondent is located, and over 500 markets, with over 49.5 million active customers worldwide. It has more than 6,000 employees worldwide and has exceeded USD 5.6 billion in trailing-twelve month gross billings. Its website at “www.groupon.com” has more than 67 million unique monthly visitors, and more than 183 million people worldwide have downloaded Groupon’s mobile apps. Complainant owns trademarks in the United States of America, Germany, the European Union and in total has trademark registrations for its GROUPON trademark in at least 50 other countries.
The Disputed Domain Name was registered on October 27, 2013 and redirects to a website with links to further websites. It appears to be used as a PPC website. This website contains links such as “Groupon Discount” which directs Internet users to advertisements for related goods and services which are in direct competition with Complainant. For example, when the “Groupon Discount” link is clicked, users are brought to a page that displays an advertisement for Pronto.com and Kensaq.com, which are competitors of Complainant.
Complainant alleges that Respondent has listed the Disputed Domain Name for sale for USD 899 on AfterNic and refers to Annex 13 of the Complaint, which however shows a minimum bid amount of EUR 90 (around USD 102).
Respondent did not reply to Complainant’s contentions. He submitted a brief email in relation to the language of the proceedings.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant owns United States federal trademark registrations, German (where Respondent is located) and European Union trademark registrations for GROUPON. The Disputed Domain Name incorporates Complainant’s GROUPON mark in full, changing the mark only by adding the descriptive term “goodsglobal”, which to a certain extent describes Complainant’s business under the trademark GROUPON mark, followed by the generic top-level domain (“gTLD”) “.com.” Previous UDRP decisions have repeatedly found that the mere addition of the gTLD “.com,” and generic terms to a complainant’s mark does not prevent a finding of confusing similarity under the first element.
The Panel therefore comes to the conclusion that the Disputed Domain Name is confusingly similar to established prior rights of Complainant and the first element of the Policy is met.
B. Rights or Legitimate Interests
Complainant has to establish a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
Respondent who is named as Lutz-Martin Hoffmann is not commonly known by the Disputed Domain Name, has not used or prepared to use the Disputed Domain Name 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 the Disputed Domain Name.
Respondent, without Complainant’s authorization or consent, registered the Disputed Domain Name clearly after Complainant’s trademarks were filed and registered and at the time when Complainant’s business and trademark were already well known. Respondent has never operated any bona fide or legitimate business under the Disputed Domain Name, and is not making a protected noncommercial or fair use of the Disputed Domain Name. It is using the Disputed Domain Name to divert Internet traffic to commercial websites which feature advertisements for goods and services in direct competition with Complainant. This website contains links such as “Groupon Discount” which direct Internet users to advertisements for related goods and services which are in direct competition with Complainant. For example, when the “Groupon Discount” link is clicked, users are brought to a page that displays an advertisement for Pronto.com and Kensaq.com, which are competitors of Complainant. These uses demonstrate neither a bona fide offering of goods or services under Policy, paragraph 4(c)(i), nor a legitimate noncommercial or fair use of the Disputed Domain Name under Policy, paragraph 4(c)(iii).
Furthermore, Respondent presumably receives fees for Internet users to the Disputed Domain Name to click the advertising links, directing them to websites offering goods and services in competition with Complainant.
Complainant alleges that Respondent has listed the Disputed Domain Name for sale for USD 899 on AfterNic and refers to Annex 13 of the Complaint, which however shows a minimum bid amount of EUR 90 (around USD 102). This is a significant difference in amounts, but the lower price of EUR 90 is still beyond out of pocket costs for registering the Disputed Domain Name. The offer of the Disputed Domain Name for sale is a further indication that Respondent does not have rights or legitimate interests in the Disputed Domain Name.
Respondent did not file a formal Response with an explanation why he would have any rights or legitimate interests.
Based on the foregoing, it is the Panel’s conclusion that Respondent lacks rights or legitimate interests in the Disputed Domain Name within the meaning of Policy, paragraph 4(a)(ii) and the second element of the Policy is met.
C. Registered and Used in Bad Faith
It was clearly after Complainant established its rights in its trademark, and after Complainant’s activities made the trademark known, that Respondent acquired and began commercially using the Disputed Domain Name to divert Internet traffic intended for Complainant to websites featuring advertising for goods and services in competition with Complainant. Respondent incorporated Complainant’s trademark, which is fanciful and not a descriptive word, with additional English descriptive terms, in its entirety in the Disputed Domain Name. And the website under the Disputed Domain Name lists links which refer to Complainant’s trademark and competitors. The Panel therefore concludes that Respondent knew Complainant’s trademark at the time of registering the Disputed Domain Name and registered it to use it for commercial gain. This establishes the registration of the Disputed Domain name to be in bad faith.
Respondent is intentionally attempting to attract Internet users to Respondent’s 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.
Furthermore, Respondent’s registration and use of the Disputed Domain Name to divert Internet traffic to Complainant’s competitors establishes Respondent’s bad-faith registration and use of the Disputed Domain Name under Policy, paragraph 4(b)(iii), because the Disputed Domain Name was registered for the purpose of disrupting the business of a competitor.
Respondent had actual knowledge of Complainant’s known GROUPON mark, as evidenced by Respondent’s use of the mark in the Disputed Domain Name. The mere fact that Respondent has registered a domain name which incorporates the known trademark of a well-known company is alone sufficient to assume bad faith.
As discussed above, Respondent has also listed the Disputed Domain Name for sale for EUR 90 (minimum bid) on Sedo, a domain name and auction platform, which is in excess of Respondent’s investment in the Disputed Domain Name. The attempt to sell a domain name consisting of a famous trademark where Respondent has knowledge of such trademark in excess of Respondent’s investment relative to the domain name constitutes bad faith registration and use. See Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001 (Respondent’s offering of the domain name on an auction site was to the general public, including Complainant and competitors).
For all of the reasons above, the Panel holds that Complainant’s conduct constitutes bad-faith registration and use of the Disputed Domain Name under Policy, paragraph 4(b)(iv) and that the third element of the Policy is met.
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, <groupongoodsglobal.com> be transferred to Complainant.
Date: February 22, 2019