About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupon, Inc. v. Contact Privacy Inc. Customer 0155100866 / Milen Radumilo

Case No. D2019-3205

1. The Parties

The Complainant is Groupon, Inc., United States of America (“United States” or “US”), represented by Greenberg Traurig, LLP, United States.

The Respondent is Contact Privacy Inc. Customer 0155100866, Canada / Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <supportatgroupon.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2019. On January 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 2, 2020, 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 the Complainant on January 3, 2020, 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 6, 2020.

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 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2020.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on February 7, 2020. 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 provides consumers with discounts on a variety of goods and services through mobile apps, downloads and other forms of online and printable coupons. As of mid-2019 the Complainant was active in 15 countries in over 500 markets worldwide, with over 45 million active customers and over 6,000 employees. The Complainant’s mobile apps have been downloaded over 200 million times. In 2018, the Complainant reported gross billings in the amount of USD 5.2 billion.

The Complainant owns several trademark registrations incorporating the word GROUPON, including the following:

U.S. Trademark Registration No. 3,685,954 for GROUPON registered September 22, 2009
European Union Registration No. 8226508 for GROUPON registered November 14, 2009
U.S. Trademark Registration No. 4,222,645 for GROUPON registered October 9, 2012
U.S. Trademark Registration No. 4,302,184 for GROUPON GOODS registered March 12, 2013
German Trademark Registration No. DE302010071094 for GROUPON registered March 14, 2011
Canadian Trademark Registration No. TMA 844,830 for GROUPON registered February 26, 2013
European Union Registration No. 011463981 for GROUPON registered April 11, 2014
International Registration No. 1206094 for GROUPON registered April 7, 2014
U.S. Trademark Registration No. 4,283,740 for GROUPON RESERVE registered January 29, 2013
U.S. Trademark Registration No. 4,068,591 for GROUPONLIVE registered December 6, 2011
U.S. Trademark Registration No. 4,580,428 for GROUPON NOW registered August 5, 2014
U.S. Trademark Registration No. 3,965,842 for GROUPONWORKS registered May 24, 2011
U.S. Trademark Registration No. 4,309,987 for GROUPON VIP registered March 26, 2013
U.S. Trademark Registration No. 4,547,861 for MY GROUPON registered June 10, 2014

The disputed domain name <supportatgroupon.com> was registered on June 30, 2019. At the time the Complaint was filed, the disputed domain name redirects to the Complainant’s primary website at <groupon.com>.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <supportatgroupon.com> is confusingly similar to the Complainant’s registered trademark for GROUPON. The Complainant owns many registrations for the mark GROUPON, as listed in paragraph 4 of this Decision. The disputed domain name incorporates the Complainant’s trademark in its entirety and the only differences are the words “support” and “at”. The Complainant contends that the addition of these descriptive words do not sufficiently change the disputed domain name to avoid confusing similarity. Furthermore, the Complainant submits that the use of the descriptive words “support” and “at” in the disputed domain name increases the likelihood of confusion because it reproduces the email address used by the Complainant’s Support Team at “support@groupon.com”.

The Respondent has no rights or legitimate interests in the disputed domain name because he is not commonly known by the name or trademark GROUPON and the Complainant has not authorized, licensed or permitted the Respondent to use the Complainant’s trademark GROUPON. The Complainant contends that the Respondent is not using the disputed domain name in association with a bona fide offering of goods and/or services. The disputed domain name is used to redirect Internet users to the Complainant’s primary website at “www.groupon.com”.

The Complainant also submits that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent must have been aware of the Complainant and the Complainant’s rights in the mark GROUPON by virtue of its many trademark registrations around the world. Furthermore, the fact that the disputed domain name reverts to a website which redirects to the Complainant’s primary website, indicates he is aware of the Complainant. The Respondent did not respond to the Complainant’s demand letter sent on December 19, 2019. Lastly, the Complainant submits that the Respondent has a history of cybersquatting in connection with multiple well-known trademarks. The Respondent has been named in 66 UDRP decisions, in which the panels consistently ruled against the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the 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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have recognizable trademark rights in the trademark GROUPON by virtue of its many trademark registrations listed in paragraph 4 of this Decision.

The Panel finds that the disputed domain name <supportatgroupon.com> is confusingly similar to the Complainant’s registered trademark GROUPON, as the disputed domain name replicates the Complainant’s registered trademark except for the addition of the words “support at”. The addition of these dictionary words to a distinctive mark does not avoid a finding of confusing similarity.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Useful commentary relating to the burden of proof for rights or legitimate interests can be found in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to lack of rights or legitimate interests. The Complainant clearly owns rights in the registered mark GROUPON as noted in paragraph 4 of this Decision. The Complainant has used its trademark GROUPON since 2008 and is well known throughout the world. The evidence filed in this proceeding, which was not contested by the Respondent, supports the fact that the Respondent was aware of the Complainant’s trademark, particularly because the Respondent chose to adopt a domain name that replicates the email address of the Complainant’s Support Team.

The Respondent was not authorized or licensed to use the Complainant’s trademark, and the Respondent is not commonly known by the mark GROUPON.

In this situation, the burden shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complaint.

Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As set out above, the Panel is prepared to find that the Respondent was aware of the Complainant’s trademark rights in the GROUPON mark when he registered the disputed domain name <supportatgroupon.com>. This conclusion is supported by the fact that the Respondent chose to register a domain name that incorporated the Complainant’s registered trademark GROUPON and replicated the email address of the Complainant’s Support Team in its entirety.

The Respondent has used the disputed domain name to redirect Internet users to the Complainant’s official website. This clearly supports a finding of use in bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The Panel also notes that the Respondent has been a named respondent in 66 UDRP decisions wherein the Panel has found against him. This is compelling evidence of a pattern of deliberate cybersquatting.

The Panel is prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain name in bad faith.

The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <supportatgroupon.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: February 17, 2020

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/