The Complainant is Groupon Inc. of Chicago, Illinois, United States of America, represented internally.
The Respondent is Andrew Williamson of Norton Park, Worcester, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2015. On March 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2015, 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 March 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2015. On April 7, 2015, the Complainant requested a suspension of the proceedings to engage in settlement discussions with the Respondent. On April 8, 2015, the Center suspended the proceedings until May 7, 2015. On May 6, 2015, the Complainant requested reinstitution of the proceedings. The Center reinstituted the proceedings on May 8, 2015, indicating a new Response due date of May 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2015.
On May 18, 2015, the Respondent submitted an email which did not substantively address any of the issues raised in the Complaint.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on May 28, 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. 4. Factual Background
The Complainant offers hundreds of daily deals on restaurants and local businesses to over 53.8 million active customers and has over 250 million subscribers worldwide. The Complainant is a publicly-held corporation operating in 47 countries worldwide, earning USD 2.6 billion in revenue in 2013.
The Complainant holds a number of trademark registrations, which include the name GROUPON, in the United States and other countries, the oldest of which dates back to March 10, 2009 (the “Trade marks”).
The Domain Name was registered on November 29, 2014. Initially, the website under the Domain Name resolved to an online electronics retail store that offered discounts of up to 80% off “deal” gifts. At the time of filing the Complaint, the Domain Name resolved to a pay-per-click website. 5. Parties’ Contentions A. Complainant
According to the Complainant, the GROUPON name, which constitutes the Trade marks, is a unique and fanciful name with no real-world correlation. As a result of this, the Complainant submits, and its success in operating a marketplace for deals and discounts, users immediately associate the Trade marks with the Complainant and its services. The Complainant further states that the Trade marks are famous and that users strongly associate them with the Complainant’s services. The Complainant further puts forward that its reputation gives it an edge over its competitors, in the marketplace. See Groupon, Inc. v. Eileen Davis,WIPO Case No. D2014-0934 (“through extensive use around the world, the GROUPON trademark has generated vast goodwill and has become famous”).
According to the Complainant, the Respondent has captured the Complainant’s Trade marks in their entirety and merely added the generic and descriptive term “gadgets”, that closely relates to and describes a portion of the Complainant’s business and services, to the Trade marks, thereby creating a domain name that is confusingly similar to the Trade marks.
The Complainant points out that, prior to resolving to a pay-per-click website, the Respondent had been using the Domain Name to host an online electronics retail store that claimed to offer steep discounts of up to 80% off “deal” gifts. According to the Complainant, this suggests that Respondent intended the Domain Name to be confusingly similar to the Trade marks, and to deceive Internet users into believing that the website was associated with, or approved by, the Complainant. Furthermore, the Complainant submits, on that website the Respondent included a logo that very closely resembled the GROUPON logo – both logos are compromised of the GROUPON Trade mark, written in green font, with the only difference being that the logo on the Respondent’s website was written in lowercase letters versus the Complainant’s uppercase logo.
The Complainant states that the Respondent has never been known by the name GROUPON and that the Respondent registered the Domain Name well after the Complainant acquired rights to the Trade marks and was using it worldwide. The Complainant also submits that the Respondent has no legitimate interest in using the Trade marks for any purpose. According to the Complainant, the Respondent is not authorized to use the Trade marks, is not sponsored by or affiliated with the Complainant in any way and the Complainant has not given the Respondent permission to use the Trade marks in any manner, including in a domain name.
To the Complainant’s knowledge, Respondent has not been commonly known by the Domain Name.
In the view of the Complainant, the Respondent is not making a bona fide offering of goods or services or legitimate noncommercial fair use of the Domain Name. The Respondent submits that the term GROUPON in any language is not a natural term used to describe deals for a variety of goods and services, the Complainant submits, and the Respondent’s inclusion of the term is a direct effort to take advantage of the fame of the Complainant’s Trade marks.
As regards bad faith, the Complainant points at the fact that the Respondent registered the Domain Name on November 29, 2014, well after the Complainant filed for registration of the first of the Trade marks.
This, together with the reputation of the Trade marks and the use by the Respondent of a very similar logo for a website with similar offers, demonstrates in the eyes of the Complainant that at the time of registration of the Domain Name, the Respondent knew, or at least should have known, of the existence of the Trade marks.
The impression given by the Domain Name and its website, the Respondent submits, would cause consumers to believe the Respondent was somehow associated with the Complainant, when, in fact, it is not. The Complainant states that all of these actions created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Domain Name and the Respondent was thus using the fame of the Trade marks to improperly increase traffic to the website previously listed at the Domain Name for its own commercial gain by selling the products displayed on the website.
Finally, the Complainant points out that it sent the Respondent a demand letter outlining its rights in the Trade marks and requesting the transfer of the Domain Name. According to the Complainant, the Respondent replied, acknowledging the Complainant’s rights in the name, and removed the website, but refused to cooperate in transferring the Domain Name. B. Respondent
The Respondent did not substantively reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the Trade marks. The Domain Name consists of the name GROUPON which is incorporated in its entirety and the generic word “gadgets”. The latter does not change the confusing similarity of the Trade marks and the Domain Name, also taking into account that GROUPON is not a generic term or word, as well as the reputation of the Trade marks (see also WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade marks. B. Rights or Legitimate Interests
The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Names (WIPO Overview 2.0, paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent is not commonly known by the Domain Name and has not acquired trade mark rights to the Domain Name. The Complainant has not authorized, licensed or otherwise consented to the Respondent’s registration and use of the Domain Name. The use of the Domain Name for a website offering competing services, using a logo similar to that used by the Complainant, clearly indicates together with the aforementioned facts, that the Respondent did not use the Domain Name for a bona fide offering of goods or services.
Furthermore, also taking into account the reputation of the Trade marks and the name GROUPON, the Panel cannot conceive of any fair use of the Domain Name which would not infringe the Complainant’s rights in the Trade marks.
In view of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Based on the information and the documents provided by the Complainant, the Panel assumes that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks.
First, the oldest registration of the Trade marks on which the Complainant relies predates the Domain Name registrations by five years. Secondly, the name GROUPON, which is incorporated in its entirety in the Domain Name, is not a name that a person wishing to register a domain name would likely accidently think of. Thirdly, the Panel is satisfied that, in view of the worldwide sales, the number of transactions and subscribers to the Complainant’s services and the countries where those services are offered, at the time of registration the Trade marks were well known, also in the United Kingdom where the Respondent is located.
In addition, if the Respondent had not actually been aware of the Complainant or the Trade marks, a small effort on its part would have revealed those rights. A simple trade mark register search would have informed the Respondent of the existence of the Trade marks.
On this basis, the Panel concludes that the Domain Name has been registered in bad faith.
The fact that the Domain Name, incorporating the GROUPON name, was connected to a website offering competing services, using a logo similar to that of the Complainant, clearly indicates that the Respondent was seeking to attract Internet users to his website by creating the impression that it was somehow supported or approved by or connected to the Complainant. The fact that it apparently changed this web site to a pay-per-click site after receiving a warning letter from the Complainant, underlines this.
Therefore, the Panel concludes that the Domain Name has been registered and 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 name be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Date: June 8, 2015
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