WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupon, Inc. v. Domains By Proxy, LLC / Matt Juergens
Case No. D2020-2302
1. The Parties
Complainant is Groupon, Inc., United States of America (“U.S.”), represented by Greenberg Traurig, LLP, U.S.
Respondent is Domains By Proxy, LLC, U.S. / Matt Juergens, U.S.
2. The Domain Name and Registrar
The disputed domain name <ɡroupon.com> [xn--roupon-h0c.com] (the “Domain Name”) 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 September 2, 2020. On September 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 4, 2020, 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 September 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2020. Respondent sent an email communication on September 30, 2020. The Center informed the Parties on October 6, 2020 that it would proceed to appoint a panel.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 19, 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
Complainant is a global leader of local commerce. By leveraging the company’s global relationships and scale, Complainant offers consumers a vast marketplace of deals all over the world. As of the second quarter of 2020, Complainant is active in 15 countries, with 38 million active customers. Complainant’s mobile apps have over 200 million downloads, and Complainant has sold more than 1.5 billion units to date. In 2018, Complainant reported USD 5.2 billion in gross billings.
Complainant owns multiple trademark registrations for trademarks incorporating its GROUPON trademark in the U.S., where Respondent is purportedly located, in connection with the marketing of its services, including:
- U.S. Registration No. 3,685,954 for GROUPON, registered on September 22, 2009 (with priority dating back to October 21, 2008);
- U.S. Reg. No. 4,222,645 for GROUPON, registered on October 9, 2012;
- U.S. Reg. No. 4,302,184 for GROUPON GOODS, registered on March 12, 2013;
- U.S. Reg. No. 4,283,740 for GROUPON RESERVE, registered on January 29, 2013;
- U.S. Reg. No. 4,068,591 for GROUPON LIVE, registered on December 6, 2011;
- U.S. Reg. No. 4,580,428 for GROUPON NOW, registered on August 5, 2014;
- U.S. Reg. No. 3,965,842 for GROUPONWORKS, registered on May 24, 2011;
- U.S. Reg. No. 4,309,987 for GROUPON VIP, registered on March 26, 2013; and
- U.S. Reg. No. 4,547,861 for MY GROUPON, registered on June 10, 2014.
In addition to its trademark registrations in the U.S., Complainant also has trademark registrations for its GROUPON trademark in at least 50 other countries. Complainant has submitted a chart of its worldwide registrations of trademarks, as well as webpage printouts and promotional material from Complainant’s website at “www.groupon.com”, providing information about Complainant’s goods and services under the GROUPON mark.
The Domain Name was registered on January 7, 2020. The Domain Name resolves to a webpage containing pay-per-click (“PPC”) links.
The Domain Name includes certain characters that rely on information exchange coding systems for electronic communications, such that computers translate the Domain Name to be the equivalent of <groupon.com>.
In particular, the Domain Name includes characters that make use of “Punycode”, which is an ASCII-compatible encoding standard designed for use with internationalized domain names (“IDN”) containing non-Latin (and non-ASCII) characters. To display those characters, each component of the domain name that is not in ASCII characters is encoded by a system such as Punycode. ASCII stands for the American Standard Code for Information Interchange, which is a character encoding standard for electronic communications. ASCII codes represent text in computers, telecommunications equipment, and other devices. The current Internet configuration does not recognize non-ASCII characters; thus, a system such as Punycode translates non-ASCII characters into their equivalent “ASCII transliteration”. See Dr. Ing, h.c. F. Porsche AG, v. Moniker Privacy Services / Sergey Korshunov, WIPO Case No. D2011-0100. For example, the domain names <airfṙance.com>, <airfranće.com>, <airfranċe.com> and <airfrȧnce.com> – each of which contains a French accent character – are translated using Punycode. Thus <airfṙance.com> translates to <xn--airfance-7e0d.com>; <airfranće.com> translates to <xn--airfrane-68a.com>; <airfranċe.com> translates to <xn--airfrane-79a.com>; and <airfrȧnce.com> translates to <xn--airfrnce-6dd.com>. The translation is invisible to the Internet user. See Société Air France v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2019-1005.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant states that its U.S. and worldwide registrations are valid, demonstrating Complainant’s rights in the GROUPON marks under Policy, paragraph 4(a)(i). Further, Complainant states that while it is unnecessary that it hold a trademark registration where Respondent is located, Complainant does own trademark registrations for its GROUPON marks in the U.S. where Respondent is purportedly located. To Complainant’s knowledge, no other person or entity in the U.S. has the legal right to use any marks that include or are confusingly similar to Complainant’s GROUPON marks to identify any coupon, rebate, price-comparison information, product review, and discount information services without a license from Complainant.
Complainant contends that the Domain Name is essentially identical to its GROUPON trademark and its <groupon.com> domain name in full, because the Domain Name is a form of IDN, which begins with a homoglyph for “g” followed by “roupon.com”, such that the Domain Name will appear visually identical to GROUPON in a web browser or email message. Complainant has submitted a printout from the IDN conversion tool at “www.verisign.com”, showing that the Domain Name <xn--roupon-h0c.com> converts to “ɡroupon.com” in a web browser or email message. Complainant contends that there is no doubt Respondent’s registration of the Domain Name is an intentional ploy to exploit the fame of Complainant’s GROUPON mark.
Complainant states that numerous UDRP panel decisions have held that a respondent’s use of non-ASCII characters in a domain name that are similar to the ASCII characters in a complainant’s mark does not avoid confusingly similarity. Furthermore, the mere addition of a generic Top-Level Domain (“gTLD”) such as “.com” to a complainant’s mark fails to avoid confusing similarity.
Complainant contends that UDRP panels typically apply a low threshold test for the confusing similarity element, and proceed to the other elements of the Policy if there is merely sufficient similarity between a disputed domain name and the relevant trademark. Respondent’s use of the essentially identical symbol in place of the letter “g” in Complainant’s GROUPON mark plainly meets the test for confusing similarity under paragraph 4(a)(i) of the Policy.
(ii) Rights or legitimate interests
Complainant states that long after Complainant established rights in the GROUPON mark, Respondent, without Complainant’s authorization or consent, registered the Domain Name, which misappropriates and is confusingly similar and essentially identical to Complainant’s GROUPON mark. Complainant claims Respondent is not commonly known by the Domain Name, has not used or prepared to use it in connection with a bona fide offering of goods or services, and has not been authorized, licensed or permitted by Complainant to register or use the Domain Name. As such, Complainant argues that Respondent lacks rights to and legitimate interests in the Domain Name pursuant to Policy, paragraphs 4(a)(ii) and 4(c).
Complainant states, in particular, that Respondent has been identified as “Matt Juergens”, indicating that Respondent is not commonly known by the Domain Name and thus lacks rights and legitimate interests in it. Respondent has not operated any bona fide or legitimate business under the Domain Name, and Respondent’s use of the Domain Name does not constitute a legitimate noncommercial or fair use. Instead, Respondent is passively holding the Domain Name without posting any content. The Domain Name resolves to the Registrar’s parked webpage, stating at the bottom, “This Web page is parked FREE, courtesy of GoDaddy.” Complainant contends that this type of passive holding of a domain name containing a well-known trademark does not constitute a bona fide or legitimate business use.
Further, Complainant states that it has not authorized, licensed, or consented to Respondent’s registration and use of domain names incorporating the 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 Complainant’s GROUPON mark anywhere in the world. Therefore, Complainant urges that the Panel should find Respondent is not commonly known by the Domain Name pursuant to Policy, paragraph 4(c)(ii), and thus has no legitimate reason to use it.
Based on the foregoing, Complainant contends that Respondent lacks rights or legitimate interests in the Domain Name within the meaning of the Policy, paragraph 4(a)(ii).
(iii) Registered and used in bad faith
Complainant contends that the facts set forth above demonstrate Respondent registered and is using the Domain Name in bad faith. The fact that Respondent has registered the Domain Name, which incorporates the famous trademark of a well-known company, is alone sufficient to give rise to an inference of bad faith. The Domain Name is so obviously connected to Complainant’s famous GROUPON trademark that its very use by someone with no connection to Complainant suggests opportunistic bad faith. Moreover, Complainant claims that analogous activities by cybersquatters operating in other industries were considered to rise to the level of opportunistic bad faith.
Complainant states that in addition to Respondent’s obvious actual knowledge of Complainant’s GROUPON mark, Respondent had constructive knowledge of the GROUPON mark because of Complainant’s GROUPON trademark registrations in the U.S., where Respondent purportedly resides. Even if Respondent could claim lack of knowledge, bad faith can exist when a search of the trademarks registry would reveal the registration rights of a complainant. Furthermore, Respondent’s passive holding of the Domain Name, which resolves to a parked webpage, is a further indication of bad faith registration and use.
While each of the four circumstances listed under the Policy, paragraph 4(b), if proven, evidences bad faith registration and use of a domain name, Complainant states that additional factors can also be used to support findings of bad faith registration and use, such as prior knowledge by respondents of complainants’ rights.
On May 29, 2020, Complainant’s counsel sent a letter to Respondent at the email address listed in the WhoIs database, advising Respondent of Complainant’s rights in the GROUPON mark and demanding that Respondent cease and desist from all use of the GROUPON mark and immediately transfer the Domain Name to Complainant. On June 11, 2020, Complainant’s counsel resent the same cease and desist correspondence to Respondent at the email address revealed by Domains By Proxy. As of the filing of the Complaint, Complainant has not received any communication from Respondent in response to these letters. Complainant contends that the fact Respondent failed to respond to Complainant’s demands further indicates that the Domain Name has been registered and is being used in bad faith. Respondent also used a privacy service to register the Domain Name. Use of a privacy service to shield identity and elude enforcement efforts by the legitimate trademark owner demonstrates Respondent’s bad faith registration and use of the Domain Name.
For all of the reasons above, Complainant asserts that Respondent’s conduct undoubtedly constitutes bad faith registration and use of the Domain Name under the Policy, paragraph 4(b)(iv).
Respondent did not reply to Complainant’s contentions but sent an email on September 30, 2020, saying: “Sure, I'd like to settle with Groupon. I guess have them reach out to me?”
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its well-known and distinctive GROUPON trademark, based on its trademark registrations and widespread use of the mark in the U.S. and elsewhere. See Accenture Global Services Limited v. Domains By Proxy, LLC/Name Redacted, WIPO Case No. D2013-2099 (finding that complainant has rights in the well-known ACCENTURE mark).
Further, the Panel determines that the Domain Name is confusingly similar to the GROUPON mark. Complainant has provided evidence that the Domain Name is the Punycode equivalent for the term “groupon”, which is identical to Complainant’s distinctive GROUPON mark. Complainant has demonstrated that the Domain Name uses Punycode to generate an exact transcription of the lettering of its trademark. The Panel agrees with the UDRP decision, Instagram, LLC. v. WhoisGuard Protected, WhoisGuard, Inc. / Alex Viznigaev, WIPO Case No. D2019-2741, involving the disputed domain name <ìnstaɡram.com> (Punycode equivalent <xn--nstaram-yya574a.com>), where the panel found as follows:
“The disputed domain name has been registered using Punycode and can therefore be displayed as <ìnstaɡram.com>.
This Panel agrees with the Complainant’s assertion that this use of Punycode to create the disputed domain name is irrelevant in countering the confusing similarity between the Complainant’s renowned INSTAGRAM trademark and the disputed domain name.”
See also Société Air France v. Domain Administrator, China Capital, WIPO Case No. D2018-1220 (Punycode translation <xn--airfrance-qf0d.com> reproduces complainant’s trademark AIRFRANCE almost in its entirety; the addition of the terms in the Punycode translation “xn”, “qf0d” does not dispel confusing similarity); Dr. Ing, h.c. F. Porsche AG, v. Moniker Privacy Services / Sergey Korshunov, WIPO Case No. D2011-0100 (in a case where disputed domain name was <порше.com> with the Punycode equivalent <xn--e1arcf4b.com>, the panel stated, “[u]ltimately, the focus of paragraph 4(a)(i) of the Policy relates to confusion over the association of the disputed domain name with the Complainant’s mark. Phonetic or visual similarity may be factual indicators of such confusion. There may be other facts which suggest a likelihood of confusion. The Panel considers that the relevant facts of this case are suggestive of such confusion”).
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1, states that “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”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its GROUPON trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name has been used to resolve to a parked landing webpage of the Registrar containing PPC links.
See Instagram, LLC. v. WhoisGuard Protected, WhoisGuard, Inc. / Alex Viznigaev, WIPO Case No. D2019-2741 (the panel found complainant had made a prima facie case that the respondent did not have rights or legitimate interests in the disputed domain name, because the respondent (i) did not appear to be commonly known by the name “instagram” or any similar name; (ii) had no connection or affiliation with the complainant; (iii) was not licensed or otherwise authorized to register or use any domain name incorporating the complainant’s mark; (iv) did not appear to make any legitimate noncommercial or fair use of the domain name, nor any use in connection with a bona fide offering of goods or services; and (v) did not come forward with any explanation to demonstrate any rights or legitimate interests in the domain name).
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent.
The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, there is little doubt that Respondent was aware of Complainant and its well-known GROUPON mark, and intentionally targeted that mark, when it registered the Domain Name comprised of the Punycode equivalent to Complainant’s GROUPON trademark. Given the fame of the GROUPON mark and the fact that the Domain Name is so obviously connected with Complainant’s mark, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its GROUPON mark when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc. / PrivacyProtect.org, WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered, as complainant demonstrated that its mark is well-known globally and is vested with significant goodwill); The Elizabeth Taylor Cosmetics Company v. NOLDC, Inc., WIPO Case No. D2006-0800 (finding that the domain name <elizabethtaylorperfume.com> was so obviously connected with complainant, who sold perfume under the ELIZABETH TAYLOR mark, that its use suggested opportunistic bad faith).
Furthermore, the Panel rules that Respondent’s holding of the Domain Name, which is the Punycode equivalent to Complainant’s well-known and distinctive GROUPON mark, and directing it to a PPC webpage, in combination with use of a privacy service to register the Domain Name and failure to respond to Complainant’s letters, supports a finding of bad faith use of the Domain Name. This decision is in accord with WIPO Overview 3.0, section 3.5, which provides in relevant part as follows:
“Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).
Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”
In conclusion, in this case, where Respondent failed to submit a formal response to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element 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 Name, <ɡroupon.com> [xn--roupon-h0c.com], be transferred to Complainant.
Christopher S. Gibson
Date: November 5, 2020