The Complainant is Groupon Inc. of Chicago, Illinois, United States of America, represented by UDRP Coordinator, United States of America.
The Respondent is Eileen Dixon of Manassas, VirginiaUnited States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2014. On June 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2014.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 1, 2014. 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 is Groupon Inc., a corporation organized under the laws of the State of Delaware, United States of America. The Complainant was established in 2008 and is a worldwide leader in the collective buying business. The Complainant offers online and mobile users daily discount deals on restaurants, local businesses and various goods and services. The Complainant gradually expands its activity and currently offers daily deals worldwide in hundreds of markets in North and South America, Europe, Africa, Asia and Australia, including in Virginia, United States of America, where the Respondent is based. In 2013, the Complainant earned USD 2.6 billion in revenue.
The Complainant offers its services mainly online through its website and related web sites. attracts over 15 million visitors monthly.
The Complainant has been using the mark GROUPON since 2008 and is the owner of multiple trademark registrations for the mark GROUPON around the world and in the United States of America where the Respondent is based. For example: United States of America U.S. trademark Registration No. 3685954, registered on September 22, 2009.
Through extensive use around the world, the GROUPON trademark has generated vast goodwill and has become famous.
The disputed domain name was registered on October 28, 2013.
The disputed domain name leads Internet users to a website in Chinese displaying links to women’s apparel items offered for sale.
The Complainant sent the Respondent a cease and desist letter, to which no response was received. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the GROUPON trademark, in which the Complainant has rights, seeing that the disputed domain name incorporates the GROUPON trademark as a whole, with the additional generic word “shoes”.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, that it had not licensed or otherwise permitted the Respondent to use its GROUPON trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent is not generally known by the disputed domain name, or has acquired trademark rights in the name “groupon”.
The Complainant further argues that the Respondent is using the disputed domain name to direct Internet users to a Chinese website featuring generic links to third-party websites in Chinese, and as such, the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under the Policy.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.
The Complainant contends that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark and disrupting the Complainant’s business.
The Complainant argues that it sent the Respondent a cease and desist letter in an attempt to resolve the dispute outside the administrative proceeding, to which the Respondent did not respond, which further supports the Respondent's bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of multiple trademark registrations for the mark GROUPON around the world and in the United States of America where the Respondent is based. For example: United States of America U.S. trademark Registration No. 3685954, registered on September 22, 2009.
The disputed domain name differs from the registered GROUPON trademark by the additional word “shoes”.
The disputed domain name integrates the Complainant’s trademark GROUPON in its entirety, as a dominant element, with additional descriptive word “shoes” that does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s well-known GROUPON trademark. Many of the Complainant’s daily deals pertain to shoes.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differ the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
Also, the addition of a generic Top-Level Domain (gTLD) “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its GROUPON trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant used the GROUPON trademark as early as 2008 and owns a registration for the GROUPON trademark since the year 2009. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademark’s vast goodwill. The Panel cites the following with approval in the context of a commercial website that is using the disputed domain name to sell products, as contrasted with a non-commercial website that makes only fair uses: “The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947).
Indeed, in the context of commercial websites that cannot claim fair use, “when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith” . (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a Respondent, if by using the disputed domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to.
The disputed domain name leads Internet users to a website in Chinese displaying links to women’s apparel items offered for sale. The Respondent’s use of the well-known trademark GROUPON with the addition of the term “shoes”, noting that many of the Complainant’s deals pertain to shoes, is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its GROUPON trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.
Furthermore, the disputed domain name is confusingly similar to the Complainant’s famous trademark. Previous UDRP panels ruled, in the context of commercial websites as contrasted with noncommercial fair use only websites that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic to a commercial website by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent’s lack of response to the cease and desist letter sent by the Complainant, is a further indication of the Respondent's bad faith registration and use of the disputed domain name.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name and the similarity between the disputed domain name and the Complainant’s mark, and failure to answer the cease and desist letter, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: July 15, 2014
Full & Egal Universal Law Academy