Complainant is Groupon, Inc. of Chicago, Illinois, United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
Respondent is C W of Houston, Texas, United States.
The disputed domain name <grouponapp.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2018. On December 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 24, 2019.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on January 28, 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.
Complainant is the owner of registration on the Principal Register of the United States Patent and Trademark Office (“USPTO”) for the word service mark GROUPON, registration number 3,685,954, registration dated September 22, 2009, in international class 35, covering, inter alia, promotion of goods and services of others by website offering coupons. Complainant is owner of additional registrations at the USPTO for various GROUPON-formative trademarks and service marks, and is owner of additional registrations for various GROUPON and GROUPON-formative trademarks and service marks outside the United States.
Complainant operates and advertises a business based on promoting the sale of goods and services by third parties through the offering of discounts. Complainant operates in 15 countries, and with over 49.5 million active customers. Complainant operates a commercial website (at “www.groupon.com”) attracting more than 67 million unique monthly visitors. More than 183 million individuals worldwide have downloaded its mobile apps.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created on July 6, 2018, and Respondent was the initial registrant.
Respondent has used the disputed domain name to direct Internet users to a link-based parking page headed with “grouponapp.com” that offers users links to Complainant as well as to direct competitors of Complainant (e.g., <smarter.com> and <kansaq.com>). In addition, Respondent has offered the disputed domain name for sale at “www.sedo.com” for a “buy now” price of USD 549.
Complainant has provided evidence that Respondent also has registered domain names that incorporate the well-known trademarks of third parties (i.e. <ciscoinc.com> and <washingtonpost.us>) and has offered to sell those domain names at “www.sedo.com” (for USD 3,999 and USD 9,999, respectively).
By email dated November 28, 2018, Complainant (through its counsel) transmitted a cease-and-desist and transfer demand to Respondent, to which Respondent did not reply.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute resolution under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant alleges that it owns rights in the trademark GROUPON and that the disputed domain name is confusingly similar to that trademark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not commonly known by the disputed domain name; (2) Respondent has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services; (3) Respondent has not been authorized, licensed or otherwise permitted by Complainant to register and use the disputed domain name; (4) Respondent is presumably earning income based on click throughs of its advertising links, and; (5) Respondent has offered the disputed domain name containing Complainant’s trademark for sale.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent registered the disputed domain name long after Complainant acquired rights in its trademark and has used it to divert Internet traffic to third-party website goods and services directly competitive with those of Complainant; (2) Respondent registered the disputed domain name for the purpose of disrupting the business of a competitor, i.e. Complainant; (3) Respondent had actual or constructive knowledge of Complainant’s trademark when it registered the disputed domain name; (4) Complainant’s trademark is distinctive and Respondent must have engaged in opportunistic use of Complainant’s trademark; (5) Respondent’s use of a privacy shield is evidence of bad faith; (6) Respondent has offered the disputed domain name for sale at a price substantially in excess of its out-of-pocket costs; (7) Respondent has engaged in a pattern of registering domain names incorporating the trademarks of third parties and offering them for sale; (8) Respondent used a transparently false address in registering the disputed domain name, and (9) Respondent’s failure to reply to Complainant’s cease-and-desist and transfer demand is evidence of bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. The express courier was unable to deliver Written Notice to the transparently false address listed in Respondent’s record of registration. There is no indication on the record of difficulties in connection with email transmission or receipt of Written Notice. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has provided evidence of rights in the word service mark GROUPON based on registration at the USPTO and through use in commerce. See Factual Background, supra. Respondent has not disputed Complainant’s assertion of rights. The Panel determines that Complainant owns rights in the word service mark GROUPON.
The disputed domain name incorporates Complainant’s GROUPON service mark in its entirety, adding the term “app”. The term “app” is a conventional abbreviation for “application” used to denote a functional computer program.1 The term “app” is commonly used to refer to applications that may be downloaded and executed on mobile devices, and Complainant makes available a downloadable mobile app for customer use of its services. Respondent’s addition of the term “app” to Complainant’s service mark does not distinguish the disputed domain name from Complainant’s service mark from the standpoint of the Policy.2 The Panel determines that the disputed domain name is confusingly similar to Complainant’s service mark.
The Panel determines that Complainant owns rights in the service mark GROUPON and that the disputed domain name is confusingly similar to that service mark.
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent has used the disputed domain name to direct Internet users to a link-based parking page that offers services and goods directly competitive with those offered by Complainant. Respondent is using the disputed domain name to take advantage of Complainant’s rights in its service mark without consent or endorsement by Complainant. Such use by Respondent does not constitute a bona fide offering of services or goods, nor does it constitute fair use of Complainant’s service mark. Such use does not establish rights or legitimate interests in favor of Respondent.
Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These are “(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 [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”
Respondent registered and is using the disputed domain name in ways that evidence bad faith in several respects, including offering the disputed domain name for sale at a price substantially in excess of its out-of-pocket expenses in connection with the disputed domain name, and by preventing Complainant from registering its service mark in a corresponding domain name as part of a pattern of conduct.
Respondent registered and is using the disputed domain name for commercial gain to attract Internet users by creating a likelihood of confusion with Complainant’s service mark as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website identified by the disputed domain name.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
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, <grouponapp.com>, be transferred to Complainant.
Frederick M. Abbott
Sole Panelist
Date: February 2, 2019
1 See, e.g. “https://en.wikipedia.org/wiki/Application_software”.
2 Addition of the generic Top-Level Domain “.com” is not relevant for purposes of confusing similarity analysis in circumstances such as those here.