WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupon, Inc. v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), Denise Beattie

Case No. D2015-1605

1. The Parties

Complainant is Groupon, Inc. of Chicago, Illinois, United States of America ("USA"), represented by Greenberg Traurig, LLP, USA.

Respondent is YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China and Denise Beattie of Lincoln, North Dakota, USA.

2. The Domain Names and Registrars

The disputed domain names <groupdeals-ca.com> and <shop-groupon.com> are registered with HiChina Zhicheng Technology Ltd. (the "Registrar").

The disputed domain name <shopgroupon.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 9, 2015. On September 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 10, 2015, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant with respect to <shopgroupon.com> and providing the contact details. On September 10, 2015, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for <groupdeals-ca.com> and <shop-groupon.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 16, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant requested that YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) remains as Respondent.

On September 28, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On October 1, 2015, Complainant requested that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.

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 Respondent of the Complaint, and the proceeding commenced on October 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 26, 2015.

The Center appointed Yijun Tian as the sole panelist in this matter on November 4, 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

Complainant, Groupon, Inc., is a company incorporated in Chicago, Illinois, USA. It is a leading company in providing a global e-commerce marketplace connecting millions of subscribers with local merchants by offering activities, travel, goods and services around the world. As of Q4 2014, Groupon operates in 47 countries and over 500 markets, with over 250 million subscribers worldwide.

Complainant has exclusive rights in multiple trademarks incorporating its GROUPON Mark. Complainant is the exclusive owner of the registered GROUPON Mark globally (Annexes 7-9 to the Complaint), including registration in the USA (since September 22, 2009) and registration in China (since July 12, 2011). Complainant also owns the domain name <groupon.com>, which has more than150 million unique monthly visitors worldwide, and more than 100 million people worldwide have downloaded Groupon's mobile apps.

Respondent is YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China and Denise Beattie of Lincoln, North Dakota, United States.

The disputed domain name <groupdeals-ca.com> was registered on August 20, 2015, <shop-groupon.com> was registered on June 16, 2015, and <shopgroupon.com> was registered on November 22, 2014 long after the GROUPON Marks were registered.

5. Parties' Contentions

A. Complainant

Complainant contends that the disputed domain names <groupdeals-ca.com>, <shopgroupon.com> and <shop-groupon.com> are identical or confusingly similar to the GROUPON Mark in which Complainant has rights.

Complainant contends that Respondent has no rights or legitimate interests in 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 names <groupdeals-ca.com>, <shop-groupon.com> and <shopgroupon.com> be transferred to it.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

6.1. Consolidation

As a preliminary matter the Panel finds it appropriate, given the evidence of common control of the disputed domain names provided by Complainant, to allow the consolidation of the registrants as Respondent.

6.2. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. 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. 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. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) The disputed domain names <groupdeals-ca.com>, <shop-groupon.com> and <shopgroupon.com> are under common control with the <shopgroupon.com> domain name.

(b) Since the registration agreement for <shopgroupon.com> is in English, and <groupdeals-ca.com> and <shop-groupon.com> were registered by the same person or are under common control, it can be inferred that the registrant of <groupdeals-ca.com> and <shop-groupon.com> speaks and understands English.

(c) The phishing website resolved by disputed domain name <shop-groupon.com> was entirely in English and both <groupdeals-ca.com> and <shopgroupon.com> redirected to <shop-groupon.com>. This demonstrates that Respondent is familiar with the English language and can communicate in English without apparent difficulties.

(d) Thus, conducting the proceeding in English will not result in unfairness to Respondent given its competence in English. However, conducting the proceeding in Chinese will result in significant unfairness to the Complainant as Complainant does not speak Chinese.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) 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 the facts that Complainant is a company from the USA, 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 websites at the disputed domain names includes the English words "group", "on", "shop", "deals" and Latin characters "ca" respectively (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, 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 names <groupdeals-ca.com>, <shopgroupon.com> and <shop-groupon.com> all registered in Latin characters and particularly in English language, rather than Chinese script; (b) The website resolved by the disputed domain names is an English website (as mentioned above, the website resolved by disputed domain name <shop-groupon.com> was entirely in English and both <groupdeals-ca.com> and <shopgroupon.com> redirected to <shop-groupon.com>). The content of the website is available in English rather than in Chinese; (c) the website appears to have been directed to users worldwide, particularly English 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.

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.

6.3. 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 names should be cancelled or transferred:

(i) the disputed domain names registered by Respondent are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the GROUPON Marks acquired through registration. The GROUPON Mark has been registered worldwide, including registration in the USA (since September 22, 2009) and registration in China (since July 12, 2011), and Complainant has a widespread reputation as a leading company in providing a global e-commerce marketplace connecting millions of subscribers with local merchants by offering activities, travel, goods and services around the world. As of Q4 2014, Groupon operates in 47 countries and over 500 markets, with over 250 million subscribers worldwide.

The disputed domain names <shopgroupon.com> and <shop-groupon.com> comprise the GROUPON Mark in its entirety. The disputed domain names only differ from Complainant's trademark by the addition of the English word "shop" or "shop" and "-" . This does not eliminate the identity or at least the confusing similarity between Complainant's registered trademark and the disputed domain names.

The disputed domain name <groupdeals-ca.com> comprise the English word "group", which is part of the GROUPON mark. The disputed domain name only differs from Complainant's trademark by the absence of "on" and the addition of the English word "deals", a hyphen "-", and "ca" which is the abbreviation and country code for Canada. This does not eliminate the confusing similarity between Complainant's registered trademark and the disputed domain name. The Panel further notes that <groupdeals-ca.com> (and <shopgroupon.com>) redirected to <shop-groupon.com>. See Schering-Plough Corporation, Schering Corporation v. Dan Myers, WIPO Case No. D2008-1641.

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).

Generally a respondent "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it" (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).

The addition of a hyphen and the descriptive term "shop", "deals" or "ca" as a suffix(s) to Complainant's mark fails to distinguish to this Panel the disputed domain names from Complainant's trademark. By contrast, it may increase the likelihood of confusion. Moreover, Complainant is a leading company in providing a global e-commerce marketplace connecting millions of subscribers with local merchants (as mentioned above). Internet users who visit Respondent's website are likely to be confused and may falsely believe that the disputed domain names <shopgroupon.com>, <shop-groupon.com>, and <groupdeals-ca.com> are operated by Complainant for providing GROUPON-branded services.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain names and the GROUPON Marks.

The Panel therefore holds that the Complaint fulfils the first element 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 names:

(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain names; or

(iii) legitimate noncommercial or fair use of the disputed domain names.

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 cases cited therein).

Complainant has rights in the GROUPON Mark, including registration in the USA (since September 22, 2009) and registration in China (since July 12, 2011). According to Complainant, it operates in 47 countries and over 500 markets, with over 250 million subscribers worldwide. It has nearly 12,000 employees worldwide and has exceeded USD 7 billion in trailing-twelve month gross billings.

Moreover, Respondent is not an authorized dealer of GROUPON branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; 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 name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the word "groupon" or "group" in its business operation or the use of the GROUPON Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the GROUPON Mark or to apply for or use any domain name incorporating the GROUPON Mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. The disputed domain names <groupdeals-ca.com>, <shop-groupon.com> and <shopgroupon.com> were registered on August 20, 2015, on June 16, 2015, and on November 22, 2014 respectively, which are after the GROUPON Marks became widely known. The disputed domain names are identical or confusingly similar to Complainant's GROUPON Mark.

(c) 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, Respondent was advertising and offering purported GROUPON products and services at <shop-groupon.com>. And both <groupdeals-ca.com> and <shopgroupon.com> redirected to <shop-groupon.com>.

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore holds also taking into consideration the Panel's findings below, that Complainant has established the second element 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 names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 names; or

(ii) Respondent has registered the disputed domain names 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 names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, 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 websites or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(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 internationally, including China. Moreover, the website at the disputed domain names advertises for sale various purported GROUPON products or services.

Respondent would likely not have advertised products or services purporting to be GROUPON products or services on the website if it was unaware of GROUPON's reputation. In other words, it is not conceivable that Respondent would not have had actual notice of Complainant's trademark rights at the time of the registration of the disputed domain names.

The Panel therefore finds that the GROUPON Mark is not a mark that a trader would randomly adopt for the purpose other than to creat 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 names were registered in bad faith with the intent to create an impression of an association with Complainant's GROUPON-branded products or services.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using the disputed domain names, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites" purportedly offering Complainant's GROUPON -branded products and services without authorization. .

To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, supra).

Given the widespread reputation of the GROUPON Marks (as well as the content on Respondent's website mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain names resolve. In other words, Respondent has through the use of the disputed domain names created a likelihood of confusion with the GROUPON Marks. Noting also that apparently no clarification as to Respondent's relationship to Complainant is made on the homepage of the disputed domain names, potential Internet users are led to believe that the website at <groupdeals-ca.com>, <shop-groupon.com> and <shopgroupon.com> is either Complainant's site or the site of an official authorized agent of Complainant, which is not the case.

Moreover, according to Complainant, Respondent is using the disputed domain names to engage in fraud by impersonating Complainant's website in order to collect personal and financial information from visitors to a phishing website resolved by the disputed domain names (Annex 6 to the Complaint).

The Panel therefore concludes that the disputed domain names are being used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use the disputed domain names, intended to 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 evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the website to which the disputed domain names resolve is indicative of registration and use of the disputed domain names in bad faith.

The Panel therefore holds that the Complaint fulfils the third element 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 names <groupdeals-ca.com>, <shop-groupon.com> and <shopgroupon.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: November 25, 2015