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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupon, Inc. v. Chen Fuxin

Case No. D2016-1599

1. The Parties

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

The Respondent is Chen Fuxin of Guangzhou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <groupon.store> (the "Disputed Domain Name") is registered with 101domain GRS Limited (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 9, 2016. On August 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 12, 2016, 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 August 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2016. On August 18, 2016, two email communications were received from the Respondent. No further email communication was received from the Respondent by September 7, 2016. Accordingly, on September 9, 2016, the Center informed the parties that it would proceed with panel appointment.

The Center appointed Nick J. Gardner as the sole panelist in this matter on September 26, 2016. 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 U.S. company. Its business involves offering to consumers the opportunity to buy goods or service from other suppliers with whom the Complainant has negotiated favourable terms. It is a very substantial business. As of the last quarter of 2014, it operated in 47 countries and over 500 markets, with over 250 million subscribers worldwide. It had nearly 12,000 employees worldwide and its website at "www.groupon.com" has more than 150 million unique monthly visitors,

The Complainant owns many trademark registrations for the word GROUPON (for example U.S. Registration No. 3,685,954 for GROUPON, issued on September 22, 2009 and Chinese Registration No. 10547657 for GROUPON GOODS, issued on August 21, 2013).

The word Groupon is a coined word with no meaning other than in relation to the Complainant.

The Disputed Domain Name was registered on June 14, 2016. It resolves to a holding page generated automatically by the Registrar.

5. Parties' Contentions

A. Complainant

The Complainant sets out its case in detail and cites numerous authorities in support of that case. It is not necessary to repeat all of that material in this decision. The Complainant's case can be summarized as follows.

a) The Disputed Domain Name is confusingly similar to the GROUPON trademark.

b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.

c) The Respondent has registered and used the Disputed Domain Name in bad faith. The Disputed Domain Names must have been registered with knowledge of the Complainant. The Complainant refers to a number of previous UDRP cases in support of its case that the passive holding of a well-known and distinctive name amounts to bad faith registration and use. Further evidence of bad faith is also present as the Respondent is engaged in a pattern of registering well-known names as ".store" domain names – for example <adidas.store>, <adobe.store>, <bmg.store>, <carmax.store>, <lowes.store>, <macys.store>, <ncaa.store>, <netflix.store>, <newegg.store>, <nhl.store>, <pinterest.store>, <qvc.store>, <southpark.store>, <teslamotors.store>, <teslas.store>, <ticketmaster.store> and <toysrus.store>.

B. Respondent

No Response has been filed. The Respondent did however email the Center on August 18, 2016. His email read as follows:

"Hello there! I have received your e-mail! I do not speak English, so I can not turn on your phone, thank you!
I use Google translate".

The Center replied to this email informing the Respondent that the language of the proceeding was English as that was the language of the Registration Agreement, and indicating the date by which a Response was due. Nothing further was heard from the Respondent.

In the circumstances given that the Respondent's email does not make much sense, and does not contain anything of relevance to the issues before the Panel, the Panel will proceed on the basis that no Response has been filed.

6. Discussion and Findings

As a preliminary matter the Panel is satisfied that the proper language of this proceeding is English, that being the language of the Registration Agreement. The Panel is also satisfied that the Respondent has been properly served with notice of this proceeding in accordance with the Rules. Accordingly the Panel is able to proceed to decide this proceeding.

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) The Disputed Domain Name is identical with 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; and

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the word GROUPON by virtue of its trademark registrations and through use. The evidence clearly establishes the GROUPON trademark as being well known.

In the present case the Disputed Domain Name and the Complainant's GROUPON trademark are identical if the ".store" generic Top-Level Domain ("gTLD") suffix is ignored. So far as the ".store" suffix is concerned the Panel adopts and agrees with the reasoning of the panel in Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited, WIPO Case No. D2014-1564, where the panel stated that: "Commonly, it is permissible for a panel to ignore the top level domain identifier when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy. However, in this case the top level domain identifier '.pro', while descriptive (and in that sense, generic), is precisely descriptive of the market for which the Complainant claims that its electrical hair stylers are suitable, namely the professional market, and its presence in the Domain Name therefore renders the risk of confusion all the more likely."

Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark and the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to the Respondent of the dispute, 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(ii) 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 Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the GROUPON trademark. The Complainant has prior rights in the GROUPON trademark which precede the Respondent's registration and use of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Disputed Domain Name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (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).

The Respondent has not filed a Response and accordingly has not rebutted the Complainant's case. Accordingly the Panel finds that the Respondent has failed to establish he has rights or legitimate interests in the Disputed Domain Name. The second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present circumstances, the distinctive nature of the GROUPON trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the GROUPON trademark, and the confusingly similar nature of the Disputed Domain Name to the GROUPON trademark, and the lack of any explanation from the Respondent as to why he registered the Disputed Domain Name leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Name without knowledge of the Complainant. The webpage to which the Disputed Domain Name resolves is clearly automatically generated by the Registrar and there is no other evidence of the Respondent having used the Disputed Domain Name. In the circumstances of this case the Panel adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 3.2 as follows "With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)".

In this case the highly distinctive nature of the Complainant's GROUPON trademark and the fact that it is well known and extensively used, leads the Panel to conclude the registration and use of the Disputed Domain Name are in bad faith. The Panel cannot conceive of any credible use for the Disputed Domain Name that did not involve an attempt to trade off the Complainant's reputation and this must have been apparent to the Respondent when registering the Disputed Domain Name. Further the Panel notes the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of legitimate use that he might have. Accordingly, and applying the principles in the below noted UDRP decisions the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393 and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.

The Panel also accepts the Complainant's evidence that the Respondent is engaged in a pattern of registering well know names and third party trademarks as domain names in the ".store" gTLD, and this further establishes a finding of bad faith (see paragraph 4(b)(ii) of the Policy).

Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Disputed Domain Name <groupon.store> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: October 2, 2016

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