The Complainant is Groupon, Inc. of Chicago, Illinois, United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Juan Carlos of Brussels, Belgium. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2018. On November 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 29, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 30, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 5, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2018.
The Center appointed Gareth Dickson as the sole panelist in this matter on January 4, 2019. 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 the proprietor of a number of trade mark registrations around the world for, or incorporating, GROUPON. These include registrations: in the United States, where the Complainant is registered; in Panama, where WhoisGuard is located; and in the European Union, which includes Belgium, where the Respondent is located, such as:
1. United States registration number 3,685,954 for GROUPON, issued on September 22, 2009, in Class 35;
2. Panama registration number 202052 for GROUPON, issued on July 11, 2008 (Class not identified);
3. European Union Trade Mark registration number 8226508 for GROUPON, November 14, 2009, in Class 35,
(the “Trade Marks”).
Complainant is also the registrant of the domain names and (“.be” being the country code Top-Level Domain for Belgium).
The Domain Name was registered on December 5, 2017 and resolves to a website offering deals on consumer electronics and other goods. 5. Parties’ Contentions A. Complainant
The Complaint says it has been using the GROUPON mark since at least 2008 and that in that time it has become a global leader of local commerce, operating in 15 countries and over 500 markets, including Belgium, with over 49.5 million active customers worldwide. It states that it has more than 6,000 employees worldwide and has exceeded USD 5.6 billion in trailing-twelve month gross billings, and that its website at “www.” has more than 67 million unique monthly visitors with more than 183 million people worldwide having downloaded its mobile apps. It argues that the Domain Name is confusingly similar to the Trade Marks and that neither the addition of “ttm-” to the GROUPON mark nor the use of the generic Top-Level Domain (“gTLD”) suffix “.com” distinguishes the Domain Name from the Trade Marks.
The Complainant contends that the Respondent registered the Domain Name without its authorisation, licence or consent, long after the Complainant had established its registered rights in GROUPON and several years after it had begun using it around the world. It says the Respondent is not commonly known by the Domain Name, has not used or prepared to use the Domain Name in connection with a bona fide offering of goods or services, and has not been authorised, licensed, or otherwise permitted by the Complainant to register and/or use the Domain Name, has never operated any bona fide or legitimate business under the Domain Name, and is not making a protected noncommercial or fair use of the Domain Name. It alleges that the website to which the Domain Name directs traffic is designed to emulate the Complainant’s website.
Finally, the Complainant submits that the Respondent’s use of the GROUPON mark is evidence of its actual knowledge of that mark at the point of registration of the Domain Name, since it is a coined term and has not meaning independent of the Complainant. It also submits that the use of the Domain Name to publish a website offering deals on consumer electronics and other goods directly in competition with the Complainant falls squarely within the examples of bad faith registration and use found in the Policy at paragraph 4(b)(iv). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Trade Marks. The Panel also accepts that the Domain Name is confusingly similar to the Trade Marks: GROUPON is reproduced in its entirety in the Domain Name and is instantly recognisable as the dominant and distinctive element of the Domain Name. The addition of the non-distinctive characters “ttm” and “-” does not alter that conclusion or render the Domain Name distinctive. The addition of the gTLD suffix “.com” may also be disregarded for the purposes of comparison under the first element. See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Section 1.8 of the WIPO Overview 3.0 points to a finding of confusing similarity in these circumstances, stating that: “Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Trade Marks, in which the Complainant has rights. B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0 the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case by stating that it has not authorised or consented to the registration or use of the Domain Name by the Respondent and by showing that the only active use by the Respondent of the Domain Name has been to provide access to a website that appears to be intended to emulate the Complainant’s website and compete with it. Such use of a domain name is not a bona fide offering that amounts to a legitimate noncommercial or fair use of a domain name.
The Respondent has failed to respond to the Complaint and there is no evidence that the Respondent has acquired any rights to use the Trade Marks or that it is commonly known by any name that corresponds to them.
As clearly stated in Section 2.1 of the WIPO Overview 3.0: “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed.”
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. Therefore, having reviewed and weighted all available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Panel accepts that the Domain Name was registered by the Respondent with the Complainant in mind. GROUPON is distinctive of the Complainant alone yet the Respondent chose to incorporate that mark into the Domain Name and has not put forward any argument to attempt to explain or defend such unauthorised registration and use. As a result, the Panel must conclude that the Respondent knew of the Complainant’s rights in the globally-recognized Trade Marks when it registered the Domain Name, and that it also knew that it had not been authorised to do so. The Panel therefore finds that the Respondent’s registration of the Domain Name was in bad faith.
The Panel also finds that the Domain Name is being used in bad faith. The Respondent’s use of the Trade Marks for commercial purposes not unauthorised (and indeed objected to) by the Complainant is inconsistent with the Complainant’s exclusive rights in its Trade Marks. Where such use is undertaken in full knowledge of the Complainant’s rights in the Trade Marks and of the Respondent’s lack of rights to use them, such use amounts to a bad faith use of the Domain Name.
As a result of the above, the Panel finds the Domain Name has been registered and is 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 Domain Name, , be transferred to the Complainant.
Gareth Dickson
Sole Panelist
Date: January 18, 2019
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