The Complainant is Groupon, Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is tun ming, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English 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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 7, 2020 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 in English on January 10, 2020. On January 7, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding on January 9 and January 16, 2020. The Complainant confirmed its request that English be the language of the proceeding on January 10, 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on January 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was originally February 4, 2020. The Respondent requested an extension for the submission of its Response on February 2, 2020. The Respondent was granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules on February 3, 2020, so that the due date for Response became February 8, 2020. The Respondent filed the Response in Chinese on February 7, 2020. The Center acknowledged the receipt of the Response and confirmed to proceed with the appointment of the Panel on February 10, 2020. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on February 13, 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 company headquartered in the United States, and is active in the e-commerce sector, offering a digital marketplace connecting customers with promoted and discounted goods and services from local merchants. The Complainant claims it is a large and famous company, providing evidence that it is active in 15 countries and over 500 local markets, with over 45 million active customers and over 6,000 employees worldwide, and with an annual global revenue for the year 2018 of approximately USD 5.2 billion. The Complainant provides evidence of ownership of a number of United States trademark registrations (word and device marks) for GROUPON, for instance trademark number 3,685,954, registered on September 22, 2009 (word mark) and trademark number 4,222,645, registered on October 9, 2012 (device mark). The Complainant also provides evidence of ownership of a series of United States trademarks related to the GROUPON mark (such as MY GROUPON and GROUPONWORKS). The Complainant also claims to own registered trademarks for GROUPON and related marks in approximately 50 other countries and regions. The disputed domain name was created on April 6, 2012 and the Complainant provides evidence that it was linked to an active webpage, displaying what appears to be pay-per-click hyperlinks to third party service providers of payment, credit and e-commerce services, as well as a hyperlink where bids for the disputed domain name were requested. It is noted that on the date of this decision the disputed domain name is not linked to an active webpage. The Respondent is a natural person from China, and is self-represented in this proceeding. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its trademarks for GROUPON, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. In particular, the Complainant argues that its trademarks are famous and highly distinctive; that the incorporation of the term “merchant” into the disputed domain name increases the likelihood of confusion with its trademarks and shows bad faith, as one of the Complainant’s main business activities is to develop relationships with merchants worldwide, for which the Complainant uses the name “Groupon Merchant” on its official webpage; that the Respondent is not known by the name “Groupon” and that the Respondent is not a licensee and has no right to use the Complainant’s trademarks in the disputed domain name. In relation to bad faith, the Complainant contends that the Respondent has parked the disputed domain name in bad faith, seeking revenues from pay-per-click links and a profitable assignment of the disputed domain name. B. Respondent Regarding the first element under the Policy, the Respondent essentially contends that the Complainant owns no Chinese trademarks for either GROUPON or Groupon Merchant, and merely owns Chinese trademarks for GROUPON GOODS and GROUPON NOW. The Respondent contends that the disputed domain name is not identical to or confusingly similar to the Complainant’s Chinese trademarks. Regarding the second element under the Policy, the Respondent essentially contends that the Complainant’s Chinese trademark registrations for the GROUPON-related marks were granted after the registration date of the disputed domain name. The Respondent also contends that it was preparing to use the disputed domain name in good faith to sell the GROUPON-branded rubber products (such as tires). It this regard, the Respondent provided a screen shot of a trademark for GROUPON in China, in the name of 潍坊华日橡胶有限公司 (Weifang Huari Rubber Co., Ltd.). The Respondent further contends that it had no intention to sell the disputed domain name. Regarding the third element under the Policy, the Respondent essentially contends that it was preparing to use the disputed domain name in good faith to commercialize its goods and had no intention to sell the disputed domain name, that there is no evidence that the Parties are competitors or that the Respondent registered the disputed domain name to undermine the Complainant’s business. The Respondent also contends that it uploaded random links to the website at the disputed domain name for testing and did not receive any profit in relation to this. Moreover, the Respondent contends that the Complainant is conducting reverse domain name hijacking in this case, and therefore requests the Panel to reject the Complaint. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant submitted its Complaint in English, and requested that the language of the proceeding be English. On January 3, 2020, the Registrar confirmed that the language of the Registration Agreement is Chinese. On January 7, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding on January 9 and 16, 2020, essentially claiming that it does not understand English sufficiently to defend its interests in this proceeding. The Complainant confirmed its request that English be the language of the proceeding on January 10, 2020, essentially referring to prior communication between the Parties in English, and to the contents of the website linked to the disputed domain name, which are exclusively in English. Given the circumstances of this case, the Center accepted the Complaint as filed in English, accepted the Response as filed in Chinese, and appointed the present Panel, wh0 is familiar with both English and Chinese. The Panel has carefully considered all elements of this case, and in particular, the Complainant’s request that the language of the proceeding be English; the Respondent’s request that the language of the proceeding be Chinese; the fact that the website linked to the disputed domain name was exclusively written in English. Further, it is noted that the Respondent sent an email to the Complainant in English on January 2, 2020, and in its Response, the Respondent replies to the specific arguments presented in the Complaint (which was written exclusively in English). All of these factors has led the Panel to conclude that the Respondent is clearly able to understand and communicate in English. Conversely should Chinese be used as the language of the proceeding, this could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English. Nevertheless, in accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1, the Panel accepts the Response and the annexes to the Response drafted in Chinese, and does not require a translation of the Response or the annexes to the Response into the language of the proceeding. 6.2. Discussion and Findings on the merits The Policy requires the Complainant to prove three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the 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. Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has provided sufficient evidence that it owns valid rights in the mark GROUPON, based on its use and registration of the same as trademarks in the United States. As to the Respondent’s contentions that the Panel should only take the Complainant’s Chinese trademarks into account in this administrative proceeding, the Panel disagrees. The Panel refers to WIPO Overview 3.0, section 1.1.2: “Noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element.” The Panel also refers to earlier UDRP decisions on this issue, e.g. F. Hoffmann-La Roche AG v. Relish Enterprises,WIPO Case No. D2007-1629. Moreover, as to whether the disputed domain name is identical or confusingly similarity to the Complainant’s trademarks, the disputed domain name consists of two elements, namely the Complainant’s GROUPON trademark and the descriptive word “merchant”. According to the WIPO Overview 3.0, section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its dominant feature. The addition of the merely descriptive component “merchant” does not prevent a finding of confusing similarity. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademarks, and the Panel concludes that the Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). In its Response, the Respondent alleges that it has rights or legitimate interests in the disputed domain name because it has the intention to use the disputed domain name to sell the GROUPON-branded rubber products (such as tires). In this regard, the Respondent has also provided a screen shot of a registered trademark in GROUPON, i.e.,Chinese trademark number 14215769, registered on April 28, 2015, in the name of 潍坊华日橡胶有限公司 (Weifang Huari Rubber Co., Ltd., hereinafter referred to as “潍坊(Weifang)”). It is not clear whether the Respondent claims ownership of this registered Chinese trademark or not. However, the Complainant contends, citing certain investigations and statements of which it submits no evidence to the Panel, that 潍坊(Weifang) and its affiliate are in liquidation, and that its administrator has stated to the Complainant that they have no connections with the Respondent. The Respondent denies this, and submits evidence from China’s National Enterprise Credit Information Publicity System, showing that 潍坊(Weifang) is still listed as an active company. On the basis of the foregoing elements, the Panel has undertaken necessary limited factual research into matters of public record (see WIPO Overview 3.0, section 4.8), and has accessed the freely and publicly available website of China’s National Enterprise Credit Information Publicity System, to review the ownership structure for, and identity of the legal representative of 潍坊(Weifang). The information indicates the shares in said company are owned by Wang Guiqing (王桂庆) and Liu Meifang (刘美芳) and that the legal representative of said company is Wang Guiqing (王桂庆). The Respondent has not demonstrated its authority or relationship with this entity. The Panel also notes that it appears from the Registrar’s email of January 3, 2020, that the Respondent had reported its “registrant organization” for the disputed domain name as “tunming” with the Registrar, and not as “潍坊华日橡胶有限公司”. On the basis of the foregoing elements, even if the Respondent claims to be the owner of the Chinese trademark number 14215769, the Panel will not rely on the trademark registration raised by the Respondent. In its Response, the Respondent also contends that it was still preparing to use the disputed domain name in good faith to sell the rubber products (such as tires). However, no evidence was provided in this regard. The Panel concludes that the absence during several years (i.e. since the creation date of the disputed domain name in 2012) of good faith use of the disputed domain name for goods or services of the Respondent, does not confer any rights or legitimate interests on the Respondent. Moreover, reviewing the facts, the Panel notes that the disputed domain name directed to a webpage (before it was taken offline), displaying what are presumed to be pay-per-click hyperlinks to third party service providers of payment, credit and e-commerce services, as well as a hyperlink where bids for the sale of the disputed domain name were requested. The Panel concludes that this shows a clear intent on the part of the Respondent to take unfair advantage of the Complainant’s trademarks to attract Internet traffic to the disputed domain name for commercial gains (see in this sense also prior UDRP decisions such as Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267), and that such actions do not confer any rights or legitimate interests on the Respondent. Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks, and using the Complainant’s trademark followed by the word “merchant”, carries a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain name. On the basis of the foregoing elements, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith The Complainant has provided sufficient evidence that its trademarks are famous and enjoy a strong reputation. Therefore, the Panel considers that the registration of the disputed domain name, which incorporates such trademarks in their entirety, was intended to mislead and attract consumers to the disputed domain name. Even a cursory Internet search by the Respondent at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned, and owns trademarks in GROUPON and used them extensively. Moreover, the addition of the term “merchant” in the disputed domain name reinforces this finding, as it misleads Internet users, and induces them to believe that the website linked to the disputed domain name provides business-to-business services offered by the Complainant, which offers identically named “Groupon Merchant” services on its official website hosted at “www.groupon.com/merchant”. In the Panel’s view, all above elements taken as a whole are clear evidence of the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith. As to use of the disputed domain name in bad faith, the disputed domain name currently does not link to an active website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” Having regard to all elements of the case at hand, and in particular to: the fact that the only distinctive element in the disputed domain name is the Complainant’s trademark; the global fame of the Complainant’s trademark; the fact that the website linked to the disputed domain name contained what are presumed to be pay-per-click links to third party service providers, and contained a hyperlink to a page where bids for the disputed domain name were requested; and the fact that the disputed domain name is identical to the name the Complainant uses for its business-to-business services, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith. On the basis of the elements set out above, the Panel rules that the Complainant has satisfied the requirements of the third element under the Policy. D. Reverse Domain Name Hijacking Noting the Complainant has satisfied the three elements under paragraph 4(a) of the Policy, the Panel finds that the Complaint was not brought in bad faith and does not constitute an abuse of the administrative proceeding. 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 Deanna Wong Wai Man
Sole Panelist
Date: March 2, 2020
Full & Egal Universal Law Academy