The Complainant is Groupon, Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Hily Jiang, China.
The disputed domain name <groupon.app> is registered with 1API GmbH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2019. 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 6, 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 on January 7, 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 of the Complaint, and the proceedings commenced on January 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2020.
The Center appointed Andrew F. Christie as the sole panelist in this matter on February 14, 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.
The Complainant is a major player in local commerce that offers consumers a marketplace of deals all over the world. As of the third quarter of 2019, it was active in 15 countries and over 500 markets, with over 45 million customers and over 6,000 employees worldwide. The Complainant’s mobile apps have over 200 million downloads, and it has sold more than 1.5 billion units to date. In 2018, the Complainant reported USD 5.2 billion in gross billings.
The Complainant owns multiple trademark registrations for trademarks consisting of or incorporating the word trademark GROUPON, including United States Trademark Registration No. 3,685,954 for GROUPON, registered on September 22, 2009. It also owns several trademark registrations in China where the Respondent is purportedly located, including Chinese Registration No. 10547657 for the word trademark GROUPON GOODS registered on August 21, 2013. In addition to these trademark registrations, the Complainant has trademark registrations for its GROUPON trademark in at least 50 countries.
The disputed domain name was registered on July 20, 2019. It currently resolves to a parked webpage at “www.dan.com”, at which it is stated “The domain name groupon.app is for sale!” next to a box saying “Make an offer”.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights because: (i) it incorporates the Complainant’s GROUPON trademark in full, adding only the generic Top-Level Domain (“gTLD”) “.app”; and (ii) as the Complainant provides its goods and services under the GROUPON trademark through a mobile app, which is the sixth-highest ranked app of all time on iOS, the addition of the “.app” gTLD to the Complainant’s trademark only increases the likelihood of confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) long after the Complainant established rights in the GROUPON trademark, without the Complainant’s authorization or consent, the Respondent registered the disputed domain name which misappropriates and is confusingly similar to the Complainant’s GROUPON trademark; (ii) the Respondent is not commonly known by the disputed domain name and has not used or prepared to use it in connection with a bona fide offering of goods or services; (iii) the Respondent has not been authorized, licensed, or permitted by the Complainant to register or use the disputed domain name; (iv) the WhoIs information identifies the registrant of the disputed domain name as “Hily Jiang”, constraining the Panel to conclude that the Respondent is not commonly known by the disputed domain name; (v) the Respondent has not operated any bona fide or legitimate business under the disputed domain name, but instead is passively holding the disputed domain name, which merely resolves to a parked webpage stating “The domain name groupon.app is for sale”, next to a form for entry of a dollar amount to “make and offer”; (vi) the Respondent’s attempts to auction the disputed domain name while well aware it contains the Complainant’s reputable trademark does not create rights and legitimate interests in the disputed domain name; and (vii) to the Complainant’s knowledge, there are no prior trademark applications or registrations in the name of the Respondent for any mark incorporating the Complainant’s GROUPON trademark anywhere in the world.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent has registered a domain name that incorporates the famous trademark of a well-known company; (ii) the disputed domain name is so obviously connected to the Complainant’s famous GROUPON trademark that its very use by someone with no connection to the Complainant suggests opportunistic bad faith; (iii) because the Complainant provides its GROUPON-branded goods and services through a mobile app, the Respondent’s combination of the GROUPON trademark with the “.app” gTLD is highly unlikely unless the Respondent knew of the Complainant’s trademark at the time of registration; (iv) in addition to actual knowledge of the Complainant’s GROUPON trademark, the Respondent also had constructive knowledge because of the Complainant’s GROUPON trademark registrations; (v) the Respondent has listed the disputed domain name for sale and offered to sell it to the Complainant for “$1,950” (in a currency unspecified, but presumed to be US dollars), which is far in excess of the Respondent’s investment in it; (vi) on December 20, 2019, the Complainant’s counsel sent the Respondent correspondence advising it of the Complainant’s rights in the GROUPON trademark and demanding that the Respondent cease and desist from all use of the GROUPON trademark and immediately transfer the disputed domain name to the Complainant, to which, at the time of filing this complaint, the Complainant had not received a response from the Respondent; and (vii) registration of a domain name to prevent the owner from using its trademark in a domain name is evidence of bad faith where it is part of a pattern of such conduct.
The Respondent did not reply to the Complainant’s contentions.
Once the gTLD “.app” is ignored (which is appropriate in this case), the disputed domain name consists of the Complainant’s registered word trademark GROUPON in its entirety. Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its GROUPON trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to a parked webpage at “www.dan.com”, where it is offered for sale. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name was registered many years after the Complainant first registered its GROUPON trademark. The evidence on the record provided by the Complainant with respect to the use of its GROUPON trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s GROUPON trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has offered the disputed domain name for sale at a price in excess of out-of-pocket costs directly related to the disputed domain name – being circumstances which, according to paragraph 4(b)(i) of the Policy, is evidence of registration and use of the disputed domain name in bad faith. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <groupon.app> be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Date: February 28, 2020