WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupon, Inc. v. Registration Private, Domains By Proxy, LLC / Online Resource, Online Resource Management Ltd.

Case No. D2019-0667

1. The Parties

The Complainant is Groupon, Inc. of Chicago, Illinois, United States of America (“United States” or “US”), represented by Greenberg Traurig, LLP, United States.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Online Resource, Online Resource Management Ltd. of Grand Cayman, Cayman Islands, Oversea territory of the United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <groupondc.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 March 26, 2019. On March 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2019, 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 April 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2019.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on May 7, 2019. 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. (the Complainant) is an American company offering deals with local businesses on its website.

This company operates in 15 countries, has millions of customers and thousands of employees worldwide.

The Complainant operates the website “www.groupon.com” that has millions of visitors every month, and its mobile app was downloaded hundreds of millions of times.

The Complainant is the owner of many trademarks including the sign GROUPON, such as:

- The US trademark GROUPON No 3685954 registered in September 22, 2009 under a priority dated October 21, 2008;
- The US trademark GROUPON No. 4222645 registered on October 9, 2012;
- The US trademark GROUPON GOODS No. 4302184 registered on March 12, 2013;
- The US trademark GROUPON RESERVE No. 4283740 registered on January 29, 2013;
- The US trademark GROUPONLIVE No. 4068591 registered on December 6, 2011;
- The US trademark GROUPON NOW No. 4580428 registered on August 5, 2014;
- The US trademark GROUPONWORKS No. 3965842 registered on May 24, 2011;
- The US trademark GROUPON VIP No. 4309987 registered on March 26, 2013;
- The US trademark MY GROUPON No. 4547861 registered on June 10, 2014.

The Complainant is the owner of many other GROUPON trademarks in various countries.

The Complainant mentions its domain name <groupon.com>.

The disputed domain name <groupondc.com> was registered on December 14, 2015, by Online Resource Management Ltd., located in the Cayman Islands.

The disputed domain name <groupondc.com> redirects to the Complainant’s website through a link letting it appear as an affiliate advertising link.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <groupondc.com> is confusingly similar to the GROUPON trademark and to the domain name <groupon.com>, because it fully incorporates the word GROUPON.

The Complainant asserts that the addition of the term “DC”, which is a descriptive geographical term referring to the District of Columbia where the Complainant has business offers, does not affect the similarity between the Respondent’s disputed domain name and the Complainant’s trademarks.

According to the WIPO jurisprudence, the generic Top‑Level Domain “.com” can be disregarded.

The Complainant asserts that the Respondent has no rights or legitimate interest in respect of the disputed domain name <groupondc.com>. It claims that the Respondent is not commonly known by the disputed domain name <groupondc.com>, that this disputed domain name <groupondc.com> is not used in connection with a bona fide offering of goods or services, and that the Respondent has not been authorized, licensed or permitted in any way to register and to use the disputed domain name <groupondc.com>.

The Complainant adds that it has prior rights as compared to the disputed domain name <groupondc.com> in respect of its several GROUPON trademarks.

To the Complainant, the Respondent does not make a noncommercial or fair use of the disputed domain name <groupondc.com>, and does not use it in connection with a bona fide offering of goods or services, because the disputed domain name is used to redirect to the Complainant’s website trough an affiliate advertising link on which the Respondent earns a commission.

According to the Complainant, this is a diversion of Internet traffic.

The Complainant claims that its advertising partners are not allowed to use or to register any trademark, domain name, or anything else including the trademark GROUPON, and declares that the disputed domain name <groupondc.com> is offered for sale on an auction website.

The Complainant contends that the disputed domain name <groupondc.com> was registered and is used in bad faith.

To the Complainant, the Respondent intentionally registered a domain name which is confusingly similar to its well-known trademark, for commercial gain. The fact that the Internet users do not know that they did not reach the Complainant’s website directly and that they triggered a commission for the Respondent is a sign of bad faith. This conduct violates the provisions that apply to the Complainant’s advertising partners.

The Complainant contends that the registration of the disputed domain name <groupondc.com> consisting of a famous trademark of a well-known company was made with full knowledge of these rights and that it establishes bad faith.

The Complainant highlights additional factors recognized by the jurisprudence as supporting their assertions of bad faith: the only known use of GROUPON is in connection with the Complainant, the Respondent used a privacy service to register the disputed domain name, the disputed domain name <groupondc.com> is on sale on an auction website, and the Respondent failed to acknowledge or comply with a cease and desist letter sent by the Complainant’ representatives to the Registrant email disclosed in the public Whois data.

On these grounds, the Complainant requests the transfer of the disputed domain name <groupondc.com>.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has submitted evidence of its prior registered GROUPON trademarks in the US.

The Complainant is the owner of a domain name <groupon.com>.

The Complainant’s GROUPON trademarks are well-known in the US for online deals with local businesses.

The disputed domain name <groupondc.com> incorporates entirely the Complainant’s GROUPON well-known trademark.

The addition of the letters “dc” may be the abbreviation for “District of Columbia”. In any case, it does not avoid the confusing similarity with the GROUPON trademark.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s GROUPON trademarks.

The condition of paragraph 4(a)(i) of the Policy has therefore been satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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 Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain name <groupondc.com>.

The Respondent is not known under the disputed domain name <groupondc.com> and has not been licensed or authorized to use the GROUPON trademark or to register the disputed domain name <groupondc.com>.

The disputed domain name <groupondc.com> resolves to the Complainant’s website trough an affiliate advertising link on which the Respondent earns a commission.

As provided by the UDRP rules, paragraph 10(a): “the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules”. Accordingly, the Panel has the general power to conduct its own online searches on the Internet.

The Panel checked the status of the domain name <groupon.com> and confirms that it was created in 2002 and that it’s registered in the name of the Complainant.

The Panel checked the way the disputed domain name is used by typing the address in the browser’s bar address.

The Panel notes that, after typing the address composed of the disputed domain name, the disputed domain name redirects to the official website “www.groupon.com” by using the redirection tool “www.siteplug.com”.

The Panel noticed that the URL of the page to which the disputed domain name redirects includes the term “redirect” twice.

The Complainant explains that this redirection enables the Respondent to earn a commission, as affiliates do.

The official affiliates are bound by an agreement forbidding use of the term “GROUPON” in a trademark, a domain name, an email address or anything else, which means that the Respondent cannot rely on a potential affiliate status to justify its decision to register the disputed domain name and to use it as it does.

Therefore, this use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which the Respondent has not rebutted.

The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.”

Given the well-known character of the GROUPON trademark in the US, the Respondent was well aware of the rights of the Complainant in the GROUPON trademarks when it registered the disputed domain name.

The abbreviation “DC” refers to the District in Columbia in the US. The Complainant is an American company with a lot of American users, which provides deals with local businesses. It is reasonable to consider the possibility of an American user typing the words “groupondc” to find deals with local businesses in the District of Columbia.

This addition cannot have been random, considering the activity of the Complainant. The Respondent intentionally registered the disputed domain name to target the Complainant’s GROUPON trademark and get advertising revenues, i.e., for commercial gain.

Therefore, the Panel finds that the disputed domain name was registered and used in bad faith.

The absence of any reaction to the C&D letter sent to the Respondent and then to the Complaint affirms a case of bad faith registration and use.

For all the above reasons, the Panel is of the opinion that the disputed domain name satisfy the requirement of paragraph 4(a)(iii) that the disputed domain name is registered and is being used in bad faith by the Respondent.

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 <groupondc.com> be transferred to the Complainant.

Marie-Emmanuelle Haas
Sole Panelist
Date: May 22, 2019