The Complainant is Groupon, Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 1, 2020. On January 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 3, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2020. The Center appointed Andrew F. Christie as the sole panelist in this matter on February 11, 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 The Complainant is a major player in local commerce that offers consumers a marketplace of deals all over the world. As of the third quarter of 2019, it was active in 15 countries and over 500 markets, with over 45 million customers and over 6,000 employees worldwide. The Complainant’s mobile apps have over 200 million downloads, and it has sold more than 1.5 billion units to date. In 2018 the Complainant reported USD 5.2 billion in gross billings. The Complainant owns multiple trademark registrations for trademarks consisting of or incorporating the word trademark GROUPON, including United States Trademark Registration No. 3,685,954 for GROUPON, registered on September 22, 2009. It also owns trademark registrations for GROUPON in the Bahamas, where the Respondent is purportedly located, including Registration Nos. 34909 and 34910, both of which were registered on July 18, 2013. In addition to these trademark registrations, the Complainant has trademark registrations for its GROUPON trademark in at least 50 countries. The disputed domain name was registered on November 16, 2016. It currently resolves to the Complainant’s website at “www.groupon.com”. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because it incorporates its GROUPON trademark in full, adding only an additional letter “g” before the trademark and the generic Top-Level Domain (“gTLD”) “.com” after the trademark. The addition of the extra “g” is a likely typo and a case of “typo-squatting” causing confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) long after the Complainant established rights in its GROUPON trademark, the Respondent, without the Complainant’s authorization or consent, registered the disputed domain name which misappropriates and is confusingly similar to the Complainant’s GROUPON trademark; (ii) the Respondent is not commonly known by the disputed domain name and has not used or prepared to use it in connection with a bona fide offering of goods or services; (iii) the Respondent has not been authorized, licensed, or permitted by the Complainant to register or use the disputed domain name; (iv) the WhoIs information identifies the registrant of the disputed domain name as “Domain Admin”, constraining the Panel to conclude that the Respondent is not commonly known by the disputed domain name; (v) the Respondent has not operated any bona fide or legitimate business under the disputed domain name, but instead is using it to redirect visitors to the Complainant’s website at “www.groupon.com” through an affiliate program which pays the Respondent a fee every time the disputed domain name redirects a visitor to the Complainant’s website; and (vi) to the Complainant’s knowledge, there are no prior trademark applications or registrations in the name of the Respondent for any mark incorporating the Complainant’s GROUPON trademark anywhere in the world. The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent has registered a domain name that incorporates the famous trademark of a well-known company; (ii) the nearly identical disputed domain name is so obviously connected to the Complainant’s famous GROUPON trademark that its very use by someone with no connection to the Complainant suggests opportunistic bad faith; (iii) the Respondent has demonstrated knowledge of the Complainant’s GROUPON mark because it uses the disputed domain name to redirect visitors to the Complainant’s “www.groupon.com” website; (iv) long after the Complainant established its rights in the GROUPON trademark, the Respondent acquired and began using the disputed domain name to collect affiliate fees by redirecting Internet users to the Complainant’s own “www.groupon.com” website; (v) the Respondent uses a privacy service to shield its identity and elude enforcement efforts by the legitimate trademark owner; and (vi) on December 27, 2019, the Complainant’s counsel sent a cease and desist letter to the Respondent advising it of the Complainant’s rights in the GROUPON trademark and demanding the immediate transfer of the disputed domain name to the Complainant, to which, at the time of the filing of the Complaint, the Complainant had not received a response from the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark GROUPON with the addition of the letter “g” at the beginning. The Complainant’s trademark is clearly recognizable within the disputed domain name. The addition of the letter “g” does not avoid the confusing similarity of the disputed domain name with the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent is not a licensee of, or otherwise affiliated with, the Complainant. The Respondent has not been authorized by the Complainant to use its GROUPON trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name. The Respondent has not provided any evidence that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to the Complainant’s own website, without the Complainant’s consent, for commercial gain. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered many years after the Complainant first registered its GROUPON trademark. The evidence on the record provided by the Complainant with respect to the use of its GROUPON trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s GROUPON trademark. By using the disputed domain name to redirect Internet users to the Complainant’s website, the Respondent intentionally creates confusion in the minds of the public as to who controls the disputed domain name. In the particular circumstance of this case – which include that it is done for commercial gain and that the Complainant does not consent to it – the Panel considers such a use to be a bad faith use. Accordingly, the Panel finds that the disputed 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 disputed domain name Andrew F. Christie
Sole Panelist
Date: February 25, 2020
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