WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupon, Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Whois Foundation, DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, Domain Admin
Case No. D2019-0005
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 Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States / Whois Foundation, DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, Domain Admin, of Panama City, Panama.
2. The Domain Names and Registrar
The disputed domain names <grouponatlanta.com> and <grouponcustomerservice.com> (the “Domain Names”) are registered with NameKing.com (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 Domain Names. On January 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 4, 2019, 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 January 10, 2019.
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 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2019.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on February 12, 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
The Complainant offers consumers a marketplace, including deals for home goods and furniture. The Complainant operates in 15 countries and over 500 markets, including Atlanta, United States, and in Panama where the Respondent is located according to the WhoIs information. It has more than 49.5 million active customers worldwide and over 6,000 employees worldwide. The Complainant’s website at “www.groupon.com” has more than 67 million unique monthly visitors.
The Complainant owns multiple trademark registrations incorporating its GROUPON trademark with the United States Patent and Trademark Office (“USPTO”) in connection with the marketing of its services, such as 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. In addition to its trademark registrations in the United States, the Complainant also has trademark registrations for its GROUPON trademark in at least 50 other countries, including in Panama.
According to the Registrar, the Domain Names were registered on April 17, 2010, and April 5, 2016. At the time of filing the Complaint, and at the time of drafting the Decision, the Domain Names resolve to websites that inter alia offer to the sell the Domain Names.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations. The Domain Names incorporate the trademark, GROUPON followed by “Atlanta” and “Customer Service”. The additions strengthen the likelihood of confusion, as “Atlanta” and “Customer Service” are relevant to the Complainant’s business.
The Complainant argues that the Complainant has not given the Respondent the authorization or consent to use its trademarks in any manner. The Respondent is not commonly known by the Domain Names, and there is no evidence of use in connection with a bona fide offering of goods or services. The Domain Names direct to websites that feature advertisements for goods and services in direct competition with the Complainant.
The Complainant argues that the Respondent acquired and is commercially using the Domain Names to divert Internet traffic intended for the Complainant to websites featuring advertising for goods and services in competition with the Complainant. Hence, the Respondent is attempting to attract Internet users to the Respondent’s websites for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. Moreover, the Respondent used a privacy service to register the Domain Names, and the Domain Names have been listed for sale on an auction platform. The Respondent has never responded to the Complainant’s contentions.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark GROUPON. The test for confusing similarity involves the comparison between the trademark and the Domain Names. In this case, the Domain Names incorporate in entirety the Complainant’s trademark. The addition of “Atlanta” and “Customer Service”, does not avoid a finding of confusing similarity. For the purpose of assessing confusing similarity, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register domain names containing the Complainant’s trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired unregistered rights. There is no evidence of the Respondent’s use of, or preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. On the contrary, the Domain Names direct to commercial websites in competition with the Complainant.
The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Domain Names incorporate the trademark GROUPON. Taking into account the Complainant’s fame and the Respondent’s use of the Domain Names, it seems more likely than not that the Respondent knew of the Complainant and its business when he registered the Domain Names.
Noting the Respondent’s use of a privacy service to register the Domain Names, the use of the Domain Names, and the fact that the Domain Names are listed for sale, it seems that the Respondent has attempted to attract Internet users to the Respondent’s websites for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. Moreover, the Respondent has not replied to the Complainant’s contentions. The Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of 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 Names <grouponatlanta.com> and <grouponcustomerservice.com> be transferred to the Complainant.
Date: February 14, 2019