The Complainant is Groupon Inc. of Chicago, Illinois, United States of America (“United States”), internally represented.
The Respondent is Kunal Pandya, NCrypted Technologies of Rajkot, Gujarat, India, internally represented. 2. The Disputed Domain Names and Registrar
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2014. On September 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 20, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 proceeding commenced on September 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2014. The Response was filed with the Center on October 14, 2014.
The Center appointed Steven A. Maier as the sole panelist in this matter on October 28, 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 a corporation organized under the laws of Delaware, United States.
The Complainant operates a worldwide Internet business offering daily deals and discounts on restaurants and local businesses.
The Complainant is the owner of numerous trademark registrations for the mark GROUPON, including United States trademark number 3685954 for the mark GROUPON filed on March 10, 2009 and registered on September 22, 2009 in International Class 35 for: “promoting the goods and services of others by providing a website featuring coupons, rebates, price-comparison information, product reviews, links to the retail websites of others, and discount information.”
The Respondent is a web development company located in Gujarat, India.
The disputed domain names and were registered on September 28, 2013.
Neither of the disputed domain names has resolved to any active website. 5. Parties’ Contentions A. Complainant
The Complainant submits that it is a worldwide leader in local commerce. It states that it offers daily deals and discounts to over 53.2 million active customers, operating in 48 countries worldwide and has worked with over 500,000 merchants. It commenced business under the name and mark GROUPON in 2008 and is currently a publicly held corporation which earned USD 2.6 billion in revenue in 2013. It operates principally through its websites linked to its domain name and offers deals to hundreds of thousands of visitors every day based on their city or regional location.
The Complainant states that its website at “www.” attracts over 15 million unique visitors monthly and that the GROUPON mark has become known by users to represent the gold standard in local commerce. The name “Groupon” is a fanciful name with no real-world correlation and is uniquely associated with the Complainant and its services. It was accepted by the panel in Groupon Inc. v. Eileen Dixon,WIPO Case No. D2014-0934 that: “through extensive use around the world, the GROUPON trademark has generated vast goodwill and has become famous.”
The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant relies on its trademark registrations and on the international fame of the GROUPON mark. It submits that each of the disputed domain names captures its GROUPON trademark in its entirety and has added only a generic or descriptive term to it, the addition of which does nothing to eliminate the likelihood of confusion between the disputed domain names and the Complainant’s mark.
The Complainant submits that the term “Groupon Clones” as indicated by the disputed domain names refers to businesses that fraudulently model themselves on the Complainant’s business model, often emulating the Complainant’s brand and website including its look and feel. The Complainant states that this is achieved through “cloning software”.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii) of the Policy).
The Complainant submits that the Respondent is not known by the name “Groupon” and has made no attempt to use that name. The Respondent is not sponsored by or affiliated with the Complainant in any way and has not been authorized to use its GROUPON trademark. The Respondent has used the disputed domain names only to redirect Internet users to blank web pages and has not demonstrated any attempt to make any legitimate use of the names. Nor is the Respondent making legitimate noncommercial or fair use of the disputed domain names. Accordingly, the Complainant submits that the Respondent is unable to demonstrate any rights or legitimate interests in respect of the disputed domain names.
The Complainant submits that the disputed domain names have been registered and are being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant submits that the Respondent registered the disputed domain names well after the Complainant first used the GROUPON mark in commerce and well after the filing date of the United States trademark referred to above. The fact that the Respondent registered the disputed domain names after the GROUPON trademark had become famous is in itself indicative of bad faith and an intention to trade off the goodwill in the Complainant’s mark. The Complainant submits that it is inconceivable that the Respondent was unaware of the Complainant’s trademark at the date it registered the disputed domain names (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) and that “[their] very use by someone with no connection with the products suggests opportunistic bad faith” (Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226).
The Complainant also submits that the disputed domain names are designed to mimic the Complainant’s business.
The Complainant states that disputed domain names do not resolve to any active website and are therefore a “passive holding”. This constitutes a holding in bad faith because the disputed domain names incorporate the Complainant’s internationally-known trademark and there is no conceivable use to which the disputed domain names could legitimately be put.
The Complainant also asserts that the Respondent failed to respond to a cease and desist letter from the Complainant and that this, and the Respondent’s initial use of a privacy protection service, provides further evidence of registration and use of the disputed domain names in bad faith.
The Complainant requests a transfer of the disputed domain names. B. Respondent
The Respondent states that it is a web application development company which develops outsourcing, websites, software and projects based on client requirements. It is a legitimate small and medium-sized enterprise (SME) business with a clean business history and clients in over 40 countries.
The Respondent states that, through its business named “NCrypted”, it has promoted a service at URL “/groupon-clone”. This offers custom web development services to clients seeking to develop group discount and daily deals websites similar to that of the Complainant. The Respondent states that the disputed domain names and were registered in order to support this service.
The Respondent states that the marketing terminology “clone script” is liable to be misunderstood. It is not currently possible to make an automatic copy of a website “as is” and the service offered by NCrypted is “pretty much legal” in view of the information contained on the Respondent’s relevant webpage. The webpage states that the service relates to custom development of website similar to that of the Complainant, that the entire design and code has been developed by the Respondent, and that it does not conflict with the Complainant, its trademark or intellectual property. The webpage also makes clear that the Respondent is not associated with the Complainant. The Respondent submits that its concept involves the completely legal practice of following a successful business model.
The Respondent submits that it does not plan to operate any website of its own that would directly compete with the Complainant. It asserts that any clients seeking such websites are most probably inspired by the Complainant’s success and that the Respondent’s service adds indirectly to the popularity of the Complainant’s own website.
The Respondent submits that the disputed domain names are not confusingly similar to the Complainant’s trademark. While the term “clone” is generic, the disputed domain names could not mislead an Internet user into confusing any website linked to the disputed domain names with the Complainant’s website.
The Respondent states that it has rights or legitimate interests in respect of the disputed domain names because it was offering a bona fide service, namely the web development and “custom clone” services referred to above, prior to receiving any notice of the present dispute. The Respondent exhibits a web archive page from November 2011 featuring its “Groupon Clone” service (the page is prominently titled “Groupon” and continues “chance to get your own Groupon Clone for daily deal website”).
The Respondent denies that it is “redirecting” Internet users to blank webpages as alleged by the Complainant. It is simply the fact that there are no live websites running on these domains and there are multiple possibilities and reasons why that may be the case.
The Respondent asserts that, in addition to having made legitimate use of the disputed domain names as described above, it also intends to make legitimate fair use of the names without commercial gain, and without misleadingly diverting Internet users or tarnishing the Complainant’s trademark.
The Respondent denies having registered or used the disputed domain names in bad faith. It repeats that there are multiple reasons why the domain names may not be used for any live website. It states that it has been providing custom web development services to small clients and that the disputed domain names are intended for the same purpose. The Respondent does not pose any threat of direct competition with the Complainant. In addition, the Respondent denies that it registered or has used the disputed domain names in any of the circumstances set out in paragraph 4(b) of the Policy as being indicative of bad faith.
The Respondent states that it never received any cease and desist letter from the Complainant. It notes that the Complainant appears to have emailed this letter to PrivacyP rather than communicating with the Respondent in the manner clearly prescribed by that organization. The Respondent submits that the Complainant’s argument concerning a privacy service is also inappropriate, as the Respondent has publicly been offering the services referred to above and has never sought to conceal its contact information. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights for the mark GROUPON. It has also established to the satisfaction of the Panel that its mark GROUPON has the status of a well-known or famous trademark in connection with an Internet business offering daily deals and discounts on restaurants and local businesses.
Ignoring the respective generic Top-Level Domains (gTLDs) “.com” and “.org” (which are to be generally disregarded for the purposes of comparison) each of the disputed domain names comprises the term “groupon” together with the term “clone”. The term “groupon” is identical to the Complainant’s trademark and the Panel accepts the Complainant’s submission that the term is a fanciful name has no recognized meaning in commerce other than to refer to the Complainant and its business.
While accepting that the additional term “clone” is generic, the Respondent argues that there is no realistic likelihood of any Internet user being misled by the disputed domain names into believing that the names are associated with the Complainant’s own website. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2:
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms… typically being regarded as insufficient to prevent threshold Internet user confusion.”
On the basis of this approach, the Panel finds that the addition of the dictionary term “clone” is insufficient to distinguish the disputed domain names from the Complainant’s mark. The Panel therefore concludes that the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent does not dispute the fact that it was never authorized by the Complainant to use its GROUPON trademark for the purposes of the disputed domain names. Nor does the Panel find there to be any arguable case that the Respondent has been commonly known by the disputed domain names or that it has made legitimate noncommercial or fair use of the names. The Panel therefore considers that the question of rights or legitimate interests will turn in this case on whether the Respondent is able to satisfy the requirement set out in paragraph 4(c)(i) of the Policy as follows:
“before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
It is the Respondent’s case, in summary, that it has for several years offered web development services, by reference to the Complainant’s GROUPON trademark, providing custom websites for clients who wish to replicate the Complainant’s successful business model using websites similar to the Complainant’s. The Respondent asserts that these activities are “pretty much legal” as it is doing no more than following a successful business model, and relies on disclaimers contained on its website as making clear that it is not associated with the Complainant. While the Respondent asserts that the disputed domain names were registered to “support” the above activities, it does not explain in what way, save to say that the names will not be used in competition with the Complainant. The Respondent also states that there may be multiple reasons why the names have not been used for the purpose of any active website, but once again fails to offer any specific explanation.
In the view of the Panel, the Respondent’s explanation of its activities does not establish any bona fide use of, or preparations to use, the disputed domain names such as would give rise to rights or legitimate interests on the part of the Respondent. On any reasonable view, the Respondent is, at a minimum, taking unfair advantage of the goodwill in the Complainant’s trademark GROUPON to offer services to third parties who wish to replicate the Complainant’s website and business model in competition with the Complainant. The use of the Complainant’s trademark for this purpose is not bona fide in the view of the Panel and the (albeit vague) association by the Respondent of the disputed domain names with this activity fails to establish any rights or legitimate interests for the purposes of paragraph 4(a) of the Policy. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
In the light of the Respondent’s own submissions, there can be no serious dispute that the Respondent registered the disputed domain names with the Complainant’s GROUPON trademark in mind and with the intention of offering the services described above by reference to that trademark. Just as the Respondent’s activities in this regard are not legitimate or bona fide for the purposes establishing rights or legitimate interests, the Panel also finds that the Respondent’s registration of the disputed domain names in order to take unfair advantage of the Complainant’s goodwill in its trademark represents registration of the names in bad faith.
While the Respondent has not used the disputed domain names for the purposes of any active website, it is well established that the “passive” holding of a domain name does not prevent a finding of use in bad faith where such a finding is indicated by an examination of all the other circumstances of the case (see, e.g., WIPO Overview 2.0, paragraph 3.2). In this case, the Respondent makes clear that the intended use of the disputed domain names (although vague) is associated with its activities by reference to the Complainant’s trademark as described above, and in these circumstances the “passive” holding does nothing to mitigate the Panel’s finding of bad faith.
Accordingly, the Panel finds that that the disputed domain names have been registered and are being used in bad faith. 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 names, and be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: November 11, 2014
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