WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupon, Inc. v. Registration Private, Domains By Proxy, LLC / Ivan Sandoval

Case No. D2015-1658

1. The Parties

The Complainant is Groupon, Inc. of Chicago, Illinois, United States of America, represented by Greenberg Traurig, LLP, United States of America.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Ivan Sandoval of Benito Juarez, Mexico.

2. The Domain Name and Registrar

The Disputed Domain Name <groupondemexico.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 18, 2015. On September 22, 2015, the Center transmitted by email to the Registrar, a request for registrar verification in connection with the disputed domain name. On September 22, 2015, 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 October 15, 2015, 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 October 27, 2015.

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 October 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2015. The Respondent did not submit any Response.

Accordingly, the Center notified the Respondent's default on November 18, 2015.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on November 19, 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

The Complainant is a global leader of local commerce offering consumers a vast marketplace of deals all over the world. The Complainant owns, in particular, the following trademarks (the "Trademarks") for many goods and services in connection with its services:

- U.S. trademark No. 3685954 GROUPON registered on September 22, 2009

- U.S. trademark No. 4222645 GROUPON registered on October 9, 2012

- Mexican trademark No. 1196494 GROUPON registered on March 26, 2010

- Mexican trademark No. 1499523 GROUPON registered on April 7, 2014

- Mexican trademark No. 1499522 GROUPON registered on April 7, 2014

The Disputed Domain Name <groupondemexico.com> was registered on March 4, 2014. At the time the Complaint was filed, the website at the Disputed Domain Name redirected to an error page.

5. Parties' Contentions

A. Complainant

The Complainant, a global leader of local commerce, offers consumers a vast marketplace of unbeatable deals all over the world. It operates in 47 countries and over 500 markets, including Mexico.

The Complainant asserts that it owns several trademarks and domain names for the sign GROUPON in a number of countries, including the United-States where the Respondent Registration Private, Domains By Proxy, LLC is located and Mexico where the Respondent Ivan Sandoval is purportedly located.

The Complainant operates a website accessible at "www.groupon.com". On its website, the Complainant prominently uses its Trademarks and features general information regarding its various products and services.

The Disputed Domain Name consists of two elements, being the second level domain name "groupondemexico" and the generic Top-Level Domain ("gTLD") ".com".

The Disputed Domain Name consists of the reproduction of the Trademarks with the addition of the generic and geographic terms "de" and "mexico". The fact that the Disputed Domain Name wholly incorporates the Trademark is sufficient to establish identity of confusing similarity despite the addition of generic terms or the addition of the gTLD ".com" to such trademarks.

The Complainant notified, by email at the email address "[email protected]", the Respondent of the infringement of its trademarks by the Disputed Domain Name. The Complainant summoned the Respondent to bring such infringement to an end, by a cease and desist from all use of the Trademarks and the transfer of the Disputed Domain Name to the Complainant. The Respondent has not responded to the Complainant's email.

The Respondent was not authorized by the Complainant to register and/or use the Disputed Domain Name. Also, before the present dispute, there is no evidence of the Respondent's use of, or demonstrable preparations to use the Disputed Domain Name or a corresponding name in connection with a bona fide offering of goods or services. Additionally, the Respondent is not commonly known (neither as a person, business, nor organization) by the Disputed Domain Name. Finally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Complainant contends that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. At the time of registration of the Disputed Domain Name, the Respondent had at least constructive knowledge of the Complainant's trademarks. And even if the Respondent was able to claim lack of knowledge, a trademark search at the time the Respondent registered the Disputed Domain Name would have revealed the Trademarks.

The Complainant's belief that the Respondent acted in bad faith is reinforced by the fact that the Respondent used a privacy registration service to register the Disputed Domain Name.

B. Respondent

The Respondent did not reply to the Complainant's contentions and is therefore in default.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that a Respondent's default does not automatically result in a decision in favor of the Complainant. Although, the Panel may draw appropriate inferences from a Respondent's default, paragraph 4 of the UDRP requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.

In order to obtain the transfer of the Disputed Domain Name and according to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(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;

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

At the same time, in accordance with paragraph 14(b) of the Rules:

"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate".

The Panel finds that in this case there are no such exceptional circumstances. Consequently, failure on the part of the Respondent to file a response to the Complaint permits an inference that the Complainant's reasonable allegations are true. It may also permit the Panel to infer that the Respondent does not deny the facts that the Complainant asserts (see Harrods Limited v. Harrod's Closet, WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

A. Identical or Confusingly Similar

There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the Disputed Domain Name is identical or confusingly similar to such trademark.

The Panel is satisfied that the Complainant is the owner of a variety of registered trademarks for the GROUPON sign, including the examples cited in the factual background. The Panel therefore turns to the second part of the inquiry.

It is well-established that "a domain name that wholly incorporates a Complainant's registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP" (see Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888).

Here, the Disputed Domain Name incorporates the Complainant's GROUPON trademark in its entirety with the mere addition of the Spanish preposition "de" and the geographic term "mexico".

The said addition of the Spanish preposition "de" and the geographic term "mexico" related to the Complainant's business increases the confusing similarity between the Disputed Domain Name and the Complainant's trademarks.

Regarding the addition of the gTLD ".com" to the Disputed Domain Name, it is well-established that gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy. Indeed, "a principle which applies to all the domain names is that the addition of generic top level domains (gTLDs) or country code top level domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trade mark(s) in issue. This has been clearly established from the beginning of the UDRP process, and now is no longer an issue. Thus, the addition of various types of gTLDs to the domain names (".com", ".net") does not change the assessment of confusing similarity" (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In these circumstances, the Panel finds that the Disputed Domain Name is confusingly similar to the trademarks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by a respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case.

The Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Complainant's Trademarks.

The Respondent's name does not bear any resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the Trademarks or the Disputed Domain Name. Furthermore, there is no evidence that the Respondent has made demonstrable preparations to use or is using such terms in connection with a bona fide offering of goods and services.

The Respondent has not rebutted this by way of a formal Response or otherwise the way that the Respondent has been "using" the Disputed Domain Name, see below under section C, does not support a finding of rights or legitimate interests.

In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".

The Disputed Domain Name is not actively used and it does not resolve to a website. However, it is well-established that "the concept of a domain name 'being used in bad faith' is not limited to positive actions; inaction is also within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith" (see Telstra Corporation Limited v. Nuclear Marshmallows, Supra).

The Panel finds it very likely that the Respondent had the Complainant's distinctive and widely-known Trademark in mind when registering the Disputed Domain Name. Indeed, "had Respondent done a trademark search at the time Respondent registered the domain name at issue, Respondent would have received notice of Complainant's pending application for registration" (see Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384).

Finally, the Respondent registered the Disputed Domain Name by using a privacy registration service. As set out in paragraph 3.9 of the WIPO Overview 2.0, the "use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith". Given the facts of this case, the registration of the Disputed Domain Name by the use of a privacy registration service reinforces the Panel's belief that the Respondent acted in bad faith (see Confederation Nationale du Credit Mutuel v. Domain Privacy Service Fbo Registrant / Globallink, Germain Nzitat Nana, WIPO Case No. D2015-0944).

Noting that the Disputed Domain Name incorporates the particular GROUPON trademark, with the addition of the Spanish preposition "de" and the geographic term "mexico", together with the gTLD ".com"; that no Response has been filed; and that there appears to be no conceivable good faith use that could be made by the Respondent of the Disputed Domain Name, and considering all the facts and evidence submitted by the Complainant, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <groupondemexico.com> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist
Date: November 30, 2015