Complainant is Groupon, Inc., United States of America (the “United States”), represented by Greenberg Traurig, LLP, United States.
Respondent is Name Redacted.1 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2019. On January 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 17, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 20, 2020. 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 Respondent of the Complaint, and the proceedings commenced on January 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2020. Respondent sent email communications to the Center on January 28, 2020 and February 3, 2020, which in part provided background regarding the fraudulent use of Respondent’s identity in registering the Domain Names. The Center notified the Parties that it was proceeding to appoint the Panel on February 21, 2020. The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 4, 2020. 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 Groupon, Inc. (“Groupon” or “Complainant”) offers consumers a marketplace of deals all over the world. As of Q3 2019, Groupon is active in 15 countries and over 500 markets, with over 45 million active customers and over 6,000 employees worldwide. Groupon’s mobile apps have over 200 million downloads, and Groupon has sold more than 1.5 billion units to date. In 2018, Groupon reported USD 5.2 billion in gross billings. Complainant owns multiple trademark registrations for the GROUPON Mark or “the Mark” in the United States, where Respondent is purportedly located, and in at least 50 other countries in connection with the marketing of its services, including United States Registration No. 3,685,954 (issued September 22, 2009) and United States Registration No. 4,222,645 (issued October 9, 2012). Respondent registered the Domain Name On December 20, 2019, Complainant’s counsel sent letters to Respondent at the email addresses then listed in the WhoIs database, advising Respondent of Complainant’s rights in the GROUPON mark and demanding that Respondent cease and desist from all use of the GROUPON Mark and immediately transfer the Domain Names to Complainant. 5. Parties’ Contentions A. Complainant Complainant’s United States and worldwide registrations are valid and subsisting in law and were duly and legally issued demonstrating Complainant’s rights in the GROUPON Mark. The Domain Names both incorporate the GROUPON Mark in full, changing the Mark only by adding the descriptive words “no reply,” a hyphen, and the generic top-level domain (“gTLD”) “.com” or “.info” after the Mark. Those changes fail to avoid confusing similarity with the Mark. The term “no reply” is commonly used in email addresses for automated emails, to inform the recipient of the email that the sender does not receive replies. One of Complainant’s official email addresses is “[…]@r.groupon.com”, which makes it even more likely that Complainant’s customers and other Internet users would be confused by Respondent’s use of “noreply” with the famous GROUPON trademark in the Domain Names. Respondent is not commonly known by the Domain Names, has not used or prepared to use them in connection with a bona fide offering of goods or services, and has not been authorized, licensed, or permitted by Complainant to register or use the Domain Names. The pertinent WhoIs information identifies the registrant of the Domain Names by a name, other than Groupon, constraining the Panel to conclude that Respondent is not commonly known by the Domain Names and thus lacks rights and legitimate interests in the them. Also, long after Complainant established its rights in the GROUPON Mark, Respondent, without Complainant’s authorization or consent, registered the Domain Names, wholly incorporating the GROUPON Mark. Respondent is passively holding the Domain Names without posting content, and they do not currently resolve to any active website. This type of passive holding of a domain name containing a well-known trademark does not constitute a bona fide or legitimate business use. Furthermore, to Complainant’s knowledge, there are no prior trademark applications or registrations in the name of Respondent for any mark incorporating Complainant’s GROUPON Mark anywhere in the world. The fact that Respondent has registered Domain Names that incorporate the trademark of a well-known company is alone sufficient to give rise to an inference of bad faith. The Domain Names are so obviously connected to Complainant’s GROUPON Mark that their very use by someone with no connection to Complainant suggests opportunistic bad faith. In addition to Respondent’s obvious actual knowledge of Complainant’s GROUPON Mark, Respondent also had constructive knowledge of it based on the trademark registrations in the United States, where Respondent purportedly resides based on the WhoIs information. Even if Respondent could claim lack of knowledge, bad faith can exist when a search of the trademark registry would reveal the registration rights of a complainant. Furthermore, Respondent’s passive holding of the Domain Names, which do not resolve to any active website, is a further indication of bad faith use and registration. On December 20, 2019, Complainant’s counsel sent letters to Respondent at the email addresses then listed in the WhoIs database, advising Respondent of Complainant’s rights in the GROUPON Mark and demanding that Respondent cease and desist from all use of the Mark and immediately transfer the Domain Names to Complainant. As of the filing of this Complaint, Complainant has not received a substantive response from Respondent regarding Complainant’s demands. The fact that Respondent failed to respond to Complainant’s demands further indicates that the Domain Names have been registered and are being used in bad faith. B. Respondent Besides the email informing of the fraudulent use of Respondent’s identity, Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Supplemental Submission By an email dated February 4, 2020, Complainant requested that the Panel accept and consider a Supplemental Filing. Neither the Policy nor the Rules, provide for Supplemental Filings by either party except in a few narrow instances. The Panel has the sole discretion to determine the admissibility of the Supplemental Filing. The applicable principles for exercising this discretion have been considered in numerous cases decided under the Policy and Rules. See e.g., The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447 (denying a supplemental submission because, among other things, it did not sufficiently identify the alleged new facts and misstatements to satisfy the panel that they were indeed new facts or misstatements which required a reply). Applying these principles to the present case, the Panel notes Complainant’s reason for filing the Supplemental Submission: “to address recently revealed information regarding the false nature of the WhoIs information submitted by the Respondent when it registered the Disputed Domain Names. Complainant would have addressed these misrepresentations in its complaint, but Complainant just became aware of these misrepresentations after being contacted by the attorney representing the person whose personal information was used without her permission to register the Disputed Domain Names.” Based on this representation, the Panel has accepted and considered Complainant’s Additional Submission. B. Identical or Confusingly Similar The Panel concludes that Complainant has rights in the GROUPON Mark by virtue of the United States trademark registrations cited above. The Domain Names For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. C. Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interests in the Domain Names. It is undisputed that Complainant has not licensed or otherwise permitted Respondent to use the GROUPON Mark in any manner, including as a domain name. Respondent has not provided any evidence establishing it has been commonly known by the Domain Names. For example, the pertinent WhoIs information identifies the registrant of the Domain Names by a name, other than Groupon. Also, long after Complainant established its rights in the GROUPON Mark, Respondent, without Complainant’s authorization, registered the Domain Names, incorporating the GROUPON Mark in its entirety. Complainant posits that Respondents passive holding of the Domain Names – without posting content or resolving to any active website – does not constitute a bona fide or legitimate business use. Furthermore, to Complainant’s knowledge, there are no prior trademark applications or registrations in the name of Respondent for any mark incorporating Complainant’s GROUPON Mark anywhere in the world. Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. D. Registered and Used in Bad Faith Respondent registered the Domain Names on October 17, 2019, many years after Complainant’s above-referenced trademark registrations for the GROUPON Mark issued. Given Complainant’s widespread and long-term use of the Mark, the Panel finds it is highly unlikely Respondent was unaware of the Mark when it registered the Domain Names. Respondent’s bad faith registration is also evidenced by the fact that the Domain Names: (1) were formed simply by adding the descriptive words “no reply” and a hyphen to Complainant’s well-known GROUPON Mark; (2) are confusingly similar to Complainant’s Mark; and (3) Respondent has not shown any legitimate use for them. On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Names in bad faith. To begin, as set forth in the additional submission, it appears that Respondent utilized false contact information in registering the Domain Names by using the name and address of a person who has been the victim of identity theft and who has confirmed that she had nothing to do with, and was unaware of, the registration of the Domain Names. In this regard, the additional submission attached a copy of a letter from an attorney hired by the identify theft victim confirming that the victim “has never opened or registered any domain names,” including the Domain Names. UDRP panels have routinely held that the provision of false contact information by respondents is evidence of bad faith registration and use of disputed domain names. See Statoil ASA v. Registration Private, Domains by Proxy, LLC / Eldar Saetre,WIPO Case No. D2018-0563; see also, Euromarket Designs, Inc. d/b/a Crate & Barrel v. Namesnet,WIPO Case No. D2000-1196; Inkkas, LLC v. Katherine Garcia,WIPO Case No. D2017-1992 (“The false contact information is evidence of use and registration in bad faith”). Furthermore, there is no evidence Respondent actually used or contemplated a good faith use of the Domain Names. Respondent is passively holding two Domain Names that incorporate Complainant’s well-known GROUPON Mark. There is no plausible reason for Respondent’s selection of the Domain Names other than as a deliberate attempt to profit unfairly from confusion with the Mark. See, Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 (“the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”); Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (finding bad faith when the registration of domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”) For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Harrie R. Samaras 1 As it appears, Respondent has fraudulently used the identity of Complainant when registering the Domain Names. The Panel has decided that no purpose can be served by including the named Respondent in this Decision, and has therefore redacted Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Domain Names that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
Sole Panelist
Date: March 6, 2020
Full & Egal Universal Law Academy