Complainant is Groupon, Inc. of Chicago, Illinois, United States of America, internally represented.
Respondent is Hongbo Li of Beijing, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2015. On March 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On March 30, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 31, 2015, Complainant requested English be the language of the proceeding and submitted the amended Complaint to the Center. On April 1, 2015, Respondent requested Chinese be the language of the proceeding.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on April 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2015. The Response was filed with the Center on April 30, 2015.
The Center appointed Yijun Tian as the sole panelist in this matter on May 8, 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 A. Complainant
Complainant, Groupon, Inc, is a company incorporated in Chicago, Illinois, United States of America. It is a worldwide leader in local commerce. It currently operates in 47 countries. It has worked with over 500,000 merchants worldwide and has sold nearly 400 million deals since its inception. Complainant’s deals are primarily offered online using its domain name and website, as well as related websites.
Complainant has exclusive rights in the GROUPON Marks. It is the owner of various trademark registrations that comprise “Groupon” in the US since 2009 (Annex 1 to the Complaint). Complainant’s deals are primarily offered online using its domain name and website, as well as related websites (Annexes 4-5 and 7 to the Complaint).
The disputed domain name resolves to a website featuring what appear to be pay-per-click links to Complainant and its competitors. B. Respondent
Respondent, Hongbo Li of Beijing, China, registered the disputed domain name with the Registrar on January 5, 2010. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to its trademark GROUPON, the registration and use of which by Complainant precedes the registration of the disputed domain name.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not reply to Complainant’s contentions on time.
Respondent contends that the disputed domain name does not contain Complainant’s GROUPON Mark in its entirety.
Respondent contends that its domain parking conduct is not in bad faith.
Respondent contends that it obtained the disputed domain name in a legitimate manner and that the disputed domain name was not registered in bad faith. Specifically, Respondent states that the disputed domain name was registered for a friend whose name is pronounced similarly to the disputed domain name.
Respondent contends that Complainant’s conduct constitutes reverse domain name hijacking.
Complainant requests that it maintain the registration and use of the disputed domain name . 6. Discussion and Findings 6.1. Language of the Proceeding
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. According to information from the Registrar, the language of the Registration Agreements for the disputed domain names is Chinese. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. However, Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) Respondent clearly understands English as evidenced by his email to Complainant following the initial filing of this case (see Annex 6 to the Complaint);
(b) the fact that the translation would unfairly disadvantage Complainant and delay the proceeding;
(c) the obvious abusive nature of the domain/website and the risk inherent to Complainant and unsuspecting consumers;
(d) the fact that the disputed domain name itself, chosen by Respondent, is a misspelling of an English trademark that has no meaning in Chinese and the fact that the website posted on the disputed domain name is only available in English (see Annex 3 to Complaint);
(e) The Complaint has been submitted in English.
Respondent objected to the use of English as the language of the proceeding and has requested that Chinese be the language of the proceeding for the reason that the disputed domain name was registered with a Chinese Registrar.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. Munhyunja, WIPO Case No. D2003-0585).
The Panel has taken into consideration in this case the facts that Complainant is a company from the US, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the website at the disputed domain name includes the Latin characters “griup” (changed spelling of the English word “group” by one letter) and the English word “on” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant: (a) the disputed domain name is registered in Latin characters and particularly in the English language, rather than Chinese script; (b) the website at the disputed domain name resolves to an English-based website; 1 (c) the website appears to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceeding in both Chinese and English; (e) the Center informed Respondent that it would accept a Response in either English or Chinese; (f) Respondent’s English-language email referred to above indicates a familiarity with the English language.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name be transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of paragraphs 4(a), (b), (c) of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The disputed domain name differs from Complainant’s trademark by only one letter – Respondent has changed the spelling of “groupon” by one letter. This does not eliminate the confusing similarity between Complainant’s registered trademark and the disputed domain names.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Moreover, as to “typosquatting”, paragraph 1.10 of WIPO Overview 2.0 states:
“A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”
As the disputed domain name is a one letter typographical error of Complainant’s GROUPON Marks, the Panel finds the disputed domain name must be considered a prototypical example of typosquatting.
Thus, the Panel finds that the one letter typographical error of Complainant’s GROUPON Marks is not sufficient to negate the confusing similarity between the disputed domain name and the GROUPON Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and the cases cited therein).
Complainant has rights in the GROUPON Marks, including registration in the US (since 2009), which precedes Respondent’s registration of the disputed domain name on January 5, 2010.
According to the Complaint, Complainant is a worldwide leader in local commerce, which currently operates in 47 countries under the GROUPON brand and mark. It has worked with over 500,000 merchants worldwide and has sold nearly 400 million deals since its inception.
Moreover, Respondent is not an authorized dealer of GROUPON branded service. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:
There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided persuasive evidence of a legitimate use of the disputed domain name or a persuasive reason to justify the choice of the word “griupon” in its business operation or the use of the GROUPON Marks and design on its website (without disclaimer or other clarifying details). Respondent contends that “griupon” and the user name “葛瑞平” (the name of Respondent’s friend) have similar pronunciations. The Panel noted the pinyin of “葛瑞平” is “ge rui ping”, which is different from “g rui on”. Neither has Respondent provided any evidence that indicates Respondent has a friend under the name “葛瑞平”.
There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the GROUPON Marks or to apply for or use any domain name incorporating the GROUPON Marks.
There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2010, after Complainant’s registrations of the GROUPON Marks (in the US since 2009). The disputed domain name is identical or confusingly similar to Complainant’s GROUPON Marks.
There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, and the Panelist’s investigation, Respondent is in actuality using the website resolved by the disputed domain name to provide multiple links to both Complainant and Complainant’s competitors.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iii) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the GROUPON Marks with regard to its services. Complainant has registered its GROUPON Marks in the US since 2009. Moreover, the website resolved by the disputed domain name has been used to provide multiple links to Complainant’s competitors’ websites. Respondent would likely not have provided links of both Complainant and Complainant’s competitors if it was unaware of Complainant’s reputation. In the other words, it is not conceivable for this Panel that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the GROUPON Mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s GROUPON branded services.
For the sake of the completeness, the Panel reiterates under the third element discussion that Respondent’s proffered good faith reason for registering the dispute domain name (that Respondent registered it for a friend with a name similar in pronunciation to the disputed domain name) is, at least without evidence, unpersuasive.
b) Use in Bad Faith
Complainant has adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” by providing the web links of Complainant’s competitors as per paragraph 4(b)(iv) of the Policy.
To establish an “intention for commercial gain” for the purpose of the Policy, evidence is required to indicate that it is “more likely than not” that intention existed (See The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the GROUPON Marks as well as the content on the website at the disputed domain name (links to Complainant’s and Complainant’s competitors’ websites), the Panel finds that the public is likely to be confused as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved. In other words, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the GROUPON Marks. The Panel therefore concludes that the disputed domain name is used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to free ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of sufficient evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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 Complainant.
Yijun Tian
Sole Panelist
Dated: June 1, 2015
1 “www.”
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