The Complainant is Groupon, Inc. of Chicago, Illinois, United States of America ("United States"), represented by Greenberg Traurig, LLP, United States.
The Respondent is Paul Marzolla of Fort Lee, New Jersey, United States.
The disputed domain name <groupon.nyc> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 11, 2017. On August 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 16, 2017. In accordance with the Rules, paragraph 5, the due date for the Response was September 5, 2017. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on September 6, 2017.
The Center appointed D. Brian King as the sole panelist in this matter on September 15, 2017. 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 Groupon, Inc., a corporation registered in Delaware with its principle place of business in Chicago, Illinois. It operates an online marketplace and a mobile application through which 52.7 million active customers access discounts and offers from local businesses in 15 countries.
As the Respondent did not respond to the Complaint, the only information about the Respondent available to the Panel was provided by the Complainant. The Respondent is Paul Marzolla of Fort Lee, New Jersey. According to WhoIs records, the Respondent is the registrant for several ".nyc" domain names incorporating the marks of well-known brands, including <audi.nyc>, <chevrolet.nyc>, <chipotle.nyc>, <buzzfeed.nyc>, <ferrari.nyc>, <gnc.nyc>, and <hrblock.nyc>. See Annex 12 to the Complaint.
The Complainant has rights in trademarks associated with its corporate name "Groupon" in many countries around the world. SeeAnnexes 8 and 9 to the Complaint. The trademarks registered in the United States to which Complainant has rights include the following:
|
Trademark |
Registration No. |
Date of Issuance |
|
GROUPON |
3,685,954 |
September 22, 2009 |
|
GROUPON |
4,222,645 |
October 9, 2012 |
|
GROUPON GOODS |
4,302,184 |
March 12, 2013 |
|
GROUPON RESERVE |
4,283,740 |
January 29, 2013 |
|
GROUPONICUS |
3,994,088 |
July 12, 2011 |
|
GROUPON LIVE |
4,068,591 |
December 6, 2011 |
|
GROUPON NOW |
4,580,428 |
August 5, 2014 |
|
GROUPONWORKS |
3,965,842 |
May 24, 2011 |
|
GROUPON VIP |
4,309,987 |
March 26, 2013 |
|
LIVE OFF GROUPON |
3,994,090 |
July 12, 2011 |
|
MY GROUPON |
4,547,861 |
June 10, 2014 |
The Domain Name <groupon.nyc> was registered through GoDaddy.com, LLC in February 2017. The website associated with the Domain Name is currently inactive. SeeAnnex 10 to the Complaint. However, the Domain Name has been listed for sale at a minimum price of USD 1,999 through Sedo, a website that serves as an Internet domain name marketplace. See Annex 11 to the Complaint.
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met, such that the Domain Name should be transferred to it.
The Complainant argues that the Domain Name is confusingly similar to its GROUPON marks. Its position is that a domain name that wholly incorporates a registered mark is confusingly similar, such that the first requirement of the Policy, paragraph 4(a) is met.
The Complainant next argues that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent is not commonly known by the name "Groupon". It further asserts that the Respondent has not made any legitimate noncommercial use of the Domain Name, as the underlying website is inactive.
Third, the Complainant argues that the Respondent has registered and is using the Domain Name in bad faith. The Complainant contends that the Respondent had actual knowledge, or at least constructive knowledge, of the Complainant's rights in the GROUPON mark based upon the multiple prior registrations of it, rendering the registration of the Domain Name in bad faith. The Complainant proceeds to argue that bad faith use can be inferred from the mere passive holding of a domain name, as is the case here. Moreover, the Complainant contends, bad faith use is further established by the Respondent's attempt to sell the Domain Name for more than its registration cost, as well as the Respondent's pattern of conduct in registering other ".nyc" domains that wholly incorporate other famous marks.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The Complainant has provided evidence showing that it has registered numerous trademarks incorporating its corporate name "Groupon" in the United States and abroad. See Annexes 8 and 9 to the Complaint. Where a domain name wholly incorporates a well-known mark in a recognizable manner, it will typically be deemed confusingly similar, even when the domain name incorporates additional, non-distinctive text. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Revlon Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000.
Here, the Domain Name does not even incorporate additional text, aside from the generic ".nyc" Top-Level Domain, which is disregarded for purposes of comparison with the Complainant's trademarks. See CANAL + FRANCE v. Franck Letourneau, WIPO Case No. DTV2010-0012; Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919. Accordingly, the Panel has no difficulty in concluding that the first element of the three-part test under paragraph 4(a) of the Policy has been met.
Prior UDRP panels have found that a complainant, in the first instance, needs only to establish a prima facie case in relation to the second element of the test under paragraph 4(a) of the Policy. See, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205; Mahindra & Mahindra Limited v. RV ABC Consulting, Inc., Roy Smith, WIPO Case No. D2010-1576. Once a prima facie showing is made, the burden of production shifts to the respondent to prove that it has rights or legitimate interests in the disputed domain name. To overcome a complainant's prima facie showing, a respondent can, for example, provide evidence of a bona fide offering of goods or services, being commonly known by the domain name, or a legitimate noncommercial or fair use.
The Panel concludes that the Complainant has presented a prima facie case. The Respondent registered the Domain Name many years after the GROUPON mark had been registered as a trademark and had obtained widespread notoriety. There is no apparent connection between the term "Groupon" and the Domain Name's registrant, Mr. Paul Marzolla. The Complainant states that it has no affiliation with the Respondent and did not authorize the Respondent's use of its trademarks. Given the Respondent's failure to respond to the Complaint, the Panel accepts those representations.
As the Complainant has made a prima facie showing on the second element of the test, the burden of production shifts to the Respondent to prove that it has rights or legitimate interests in the Domain Name. The Respondent has failed to do so, and therefore the Panel finds that the Complainant has satisfied that second element under paragraph 4(a) of the Policy.
The final element of the test under paragraph 4(a) requires the Complainant to establish that the Domain Name was registered and is being used in bad faith.
Previous UDRP panels have found that the mere registration of a domain name that is confusingly similar to a well-known mark can indicate bad faith. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Georgia-Pacific Corporation v. Charlie Kalopungi, WIPO Case No. D2011-0634. Here, the GROUPON mark is highly recognizable, and the Respondent was on at least constructive notice of the Complainant's rights in the mark, based upon the Complainant's multiple trademark registrations accomplished years before the Respondent registered the Domain Name.
Beyond that, the evidence shows that the Respondent has engaged in a pattern of registering domain names that wholly incorporate other well-known trademarks. This provides further evidence of bad faith registration on the part of the Respondent. See, e.g., Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798.
On both of these grounds, the Panel finds bad faith registration to be established.
As for the use of the Domain Name, the evidence shows that the Respondent is seeking to sell it for USD 1,999 on a domain name auction website. SeeAnnex 11 to the Complaint. The attempt to sell a confusingly similar domain name, at a price plainly in excess of the Respondent's out-of-pocket cost in registering it, constitutes sufficient evidence of bad faith use under paragraph 4(b)(iv) of the Policy. See, e.g., AT&T Corp v. rnetworld, WIPO Case No. D2006-0569; Ferrari S.p.A. v. Allen Ginsberg, WIPO Case No. D2002-0033; CONOCO INC. v. RDH Computer Solutions / Ronald D. Harris, WIPO Case No. D2000-0960; Harrods Limited v. Robert Boyd, WIPO Case No. D2000-0060; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
The Panel therefore determines that the Respondent registered and is using the Domain Name in bad faith, and accordingly that the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 Domain Name <groupon.nyc> be transferred to the Complainant.
D. Brian King
Sole Panelist
Date: September 29, 2017