The Complainant is Groupon, Inc. of Chicago, Illinois, United States of America (“USA”), represented internally.
The Respondent is JackPotSoft LLC of Vienna, Austria, represented internally. 2. The Domain Names and Registrar
The disputed domain names, and (the “Domain Names”), are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2014. On December 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 9, 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 December 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 4, 2015. The Response was filed with the Center on January 5, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 19, 2015. 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.
As noted above, the Response was filed one day out of time. While the Respondent has offered no explanation for this procedural deficiency, the Complainant has raised no objection. The Panel will accept the Response out of time.
On January 9, 2015 the Complainant filed with the Center a Supplemental Reply to Response. The Rules make no provision for further filings; however, in exceptional circumstances, the Panel has jurisdiction to accept further submissions. In this case the Complainant’s Supplemental Reply purported to expose material shortcomings in the Response and the Panel decided to accept that document (with annexes) into the Case File.
On January 20, 2015 the Panel issued Procedural Order No. 1 notifying the parties that the Complainant’s Supplemental Reply to Response was to be accepted into this administrative proceeding and inviting the Respondent to respond to it. The Respondent filed a timely response on January 22, 2015. 4. Factual Background
The Complainant is a company based in the USA but with an online presence across a wide spread of countries. It commenced business in 2008 offering subscribers deals and discounts tailored to their geographical location. The unchallenged claim of the Complainant is that it “has worked with over 500,000 merchants worldwide and has sold nearly 400 million deals since its inception”. It describes its business model as follows:
“Complainant’s deals are primarily offered online using its domain name and website, as well as related websites. Each day, hundreds of thousands of users visit Groupon’s web sites to browse and purchase the deals available. When users visit Groupon’s website, they are offered a variety of deals and discounts that they can purchase based on their location – Complainant offers deals specific to regions and cities, thus allowing users to receive deals that are relevant to them, which saves users the time and effort of sifting through the thousands of deals that Groupon offers. Users are then able to purchase local deals that they like and redeem the deal vouchers at the local business.”
The Complainant operates its primary website connected to its domain name.
The Complainant is the registered proprietor of a number of United States Trade Mark registrations of marks comprising or including the name “Groupon”. For present purposes it is only necessary to mention one of those registrations, namely No. 3685954 registered September 22, 2009 (filed March 10, 2009) for GROUPON (standard character mark) in class 35 “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”.1
The first of the Domain Names, , was registered on August 27, 2010. The second of the Domain Names, , was registered on February 9, 2012. As at the date of the Complaint the first of the Domain Names was connected to a website featuring a copyright notice reading “W Ó 2013 Groupon Clone Home / Groupon Clone Demo / Groupon Clone Download”. The legend at the top of the page read: “WroupOn – Daily Deal Script – Group Deal Script – A clean & perfect way to start your Daily Site”. References to the Complainant’s website featured elsewhere on the Respondent’s website. As at the date of the Complaint the second of the Domain Names, , redirected to .
On January 25, 2013 lawyers representing the Complainant wrote to the Respondent (addressed as “Domains By Proxy LLC”) accusing the Respondent of trade mark and copyright violations related to the first of the Domain Names. In response to that letter the Respondent claims to have removed the offending material.2
On January 30, 2014 the Complainant wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights and seeking inter alia transfer of the first of the Domain Names. The Complainant received no response to that letter.
The Domain Names now redirect to a website at . In response to the Panel’s Procedural Order No. 1 the Respondent disclosed that it had rebranded its Wroupon product as “DEALPHP”. However, in viewing the source material the Panel still found frequent references to the Complainant, in the form of “Groupon Clone”, “Groupon Clone Script”, “Groupon Admin features”, “Groupon Frontend”, “groupon for restaurant demo” etc. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to the Complainant’s GROUPON trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are being used in bad faith. The heart of the Complainant’s Complaint appears in the following passage:
“Further reinforcing Respondent’s intent to facilitate the creation of Groupon clone sites is the fact that Respondent explicitly refers to its software as ‘Groupon Clone’ software on its Privacy Policy page, and also references Complainant (and its website) expressly by name on its Features page as an example of what Respondent’s customers can expect to see in a final Groupon clone script product. Thus, there can be no doubt that Respondent has intentionally created a website that targets, and allows third parties to compete with, the Complainant and its business. Respondent charges [USD] 350 for its Groupon clone script, which provides evidence of the fact that Respondent is profiting and benefiting commercially by
misappropriating the GROUPON mark, copying Complainant’s website and business, and creating
direct competitors to Complainant.” B. Respondent
The Respondent denies the Complainant’s contentions. It contends that the Domain Names are not confusingly similar to the Complainant’s GROUPON trade mark. It contends that the names are pronounced differently and asserts that it is not a case of typosquatting because the initial letters are too far apart on a QWERTY keyboard.
The Respondent contends that it does have rights or legitimate interests in respect of the Domain Names. It states that it has been trading legitimately under the “Wroupon” name and that it has been developing its software for five to six years.
In denying the Complainant’s bad faith contentions the Respondent reiterates that it registered the Domain Names for the legitimate commercial purpose for which they are being used, namely in connection with its design services. It contends that the parties are in different service areas – the Complainant is in the Deals marketplace; whereas the Respondent sells a script program – and the Respondent cannot therefore make any commercial gain on the back of the Complainant’s trade mark.
The Respondent also appears to deny knowledge of the Complainant at the date of acquisition of the first of the Domain Names: “Complainant has not established any rights in respect of Wroupon PHP Script,
Respondent registered domain in Aug 2010 which is much earlier the Groupon was even launch to my place (Area) or in my knowledge.”3
In its response to the Panel’s Procedural Order No. 1 the Respondent reiterates that it was unaware of the Complainant in May 2010 when there was publicity associated with the Complainant’s business. It states that “[t]he domain name [] was registered for being small in length, as also WROUPON is made of W + Roup + On, Where Roup has a meaning of Auction and On referred for auction is on. The concept was the create deal script for auction or online buying.”
In that document the Respondent cites a Community Trade Mark of the Complainant registered after registration of the Domain Names and stresses that the Complainant’s GROUPON Community Trade Mark was applied for and registered after the date of registration of the first of the Domain Names. From that the Panel assumes that the Respondent takes the view that the date of the earliest of the Complainant’s United States registrations is irrelevant on the basis that it does not cover Austria, the Respondent’s home territory.
The Respondent discloses that since the launch of the Complaint it has rebranded its product as “DEALPHP”.
Finally, the Respondent contends that the Complainant’s lawyers’ letter of January 25, 2013 was an intimidating letter and amounted to Reverse Domain Name Hijacking. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
Moreover, in writing its decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” B. Identical or Confusingly Similar
The Domain Names comprise the name “wroupon” and the generic “.com” and “.net” top level domain identifiers.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore these top level domain identifiers. Accordingly, the assessment is between “wroupon” on the one hand and “Groupon” on the other.
The Respondent contends that this is not a case of typosquatting because the letters “w” and “g” are too far apart on the keyboard for an Internet user to make a typing mistake. It also asserts that the names are differently pronounced. While that may be so, it is nonetheless the case that the remaining six letters in each name are identical and are distinctive and the overall appearance is very similar.
The Panel finds that the Domain Names are confusingly similar to the Complainant’s GROUPON trade mark. C. Rights or Legitimate Interests
The Complainant’s case is simple. The Complainant’s name is unusual and distinctive. The rapid success that its service achieved meant that it quickly attracted significant publicity. It was a well-known online brand by 2010. Registration of the Domain Names took place after the Complainant’s brand had become well-known and after the Complainant had acquired registered trade mark rights in the USA. On top of all that the Respondent’s website made liberal use of the Complainant’s trade mark and, indeed, referred to its product as a “Groupon Clone”. The Complainant contends that the Respondent adopted the Domain Names with a view to aligning itself with the Complainant’s brand and, for a USD 350 fee, to provide its customers with the ability to compete with the Complainant.
The Panel concludes that the Complainant has made out a prima facie case calling for an answer from the Respondent.
The extraordinary feature of both the Response and the Respondent’s response to the Panel’s Procedural Order No. 1 is that in neither document does the Respondent attempt to explain how or why, if it was unaware of the Complainant’s trade mark and and if the Complainant’s brand is an irrelevance to the Respondent, references to both appear in the text on the Respondent’s website (see section 4 above) and in the source material for the website. It appears to acknowledge that “Groupon”-related material was on the website4 , but there is no explanation as to why it was there. Still less is there any explanation in the latter document for the use of the Complainant’s trade mark in the metadata associated with the Respondent’s website, evidence of which was supplied by the Complainant in its Supplemental Reply to Response and which still appears to be there in the website to which the Domain Names now redirect (see section 4 above).
In the absence of an explanation the Panel concludes on the balance of probabilities that the Respondent was well aware of the Complainant and its trade mark when it registered the first of the Domain Names and that it selected the Domain Names with the Complainant’s trade mark in mind seeking to promote its product, which it describes as a Groupon Clone, by reference to the Complainant’s brand.
In the view of the Panel that is not a fair use of the Domain Names and cannot give rise to a bona fide offering of goods and services for the purposes of paragraph 4(a)(ii) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. D. Registered and Used in Bad Faith
By the same reasoning 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. While the use that the Respondent is making of the Domain Names does not fall squarely within any of the examples of bad faith registration and use set out in paragraph 4(b) of the Policy, that list is expressed to be a non-exclusive list. The Panel is satisfied that the unauthorized use of a confusingly similar domain name to a complainant’s trade mark with a view to promoting, for commercial gain, competition against the trade mark owner is an abuse to be condemned under the Policy.
The Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. E. Reverse Domain Name Hijacking
The Panel rejects the allegation of Reverse Domain Name Hijacking. There is nothing in the Case File to indicate that in filing the Complaint the Complainant was doing anything other than to protect its legitimate interests in its reputation and goodwill as represented by its trade mark. The lawyers’ letter to which the Respondent objects seems to the Panel to be unobjectionable. 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 Domain Names, and , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: January 24, 2015
1 In its Supplemental Reply to Response the Complainant draws attention to a Community Trade Mark, but this could have been included in the original Complaint and was obviously desirable in that it covered the Respondent’s home territory. However, it is unnecessary for the Panel to consider it.
2 “However Respondent was contacted by Complainant in year 2013, after 3 years of registration about removing terms registered by Groupon, which was later removed from website” [paragraph 2 of the Respondent’s response to Procedural Order No. 1]
3 It was this passage which was one of the motivators for the Complainant’s Supplemental Reply to Response and the Panel’s Procedural Order No. 1
4 see footnote 2 above
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