WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupon, Inc. v. Domain Administrator, See PrivacyGuardian.org / |||| ||||

Case No. D2021-1016

1. The Parties

Complainant is Groupon, Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.

Respondent is Domain Administrator, PrivacyGuardian.org, United States of America (“United States”) / |||| ||||, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <slickdealsgroupon.com> (the “Domain Name”) is registered with Shinjiru Technology Sdn Bhd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2021. On April 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 9, 2021.

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 Respondent of the Complaint, and the proceedings commenced on April 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 5, 2021.

The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on May 12, 2021. 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

Complainant provides consumers with discounted deals on a variety of goods and services through mobile apps, downloads and other forms of online and printable coupons.

As at 2020, Complainant was active in 15 countries with 30 million active customers. Complainant’s mobile apps have over 200 million downloads with a reported revenue of USD 1.4 billion for the year 2020.

Complainant owns multiple United States trade mark registrations for its various GROUPON marks (“Complainant’s Mark”) including:

- registration no. 3685954, issued September 22, 2009;
- registration no. 4222645, issued October 9, 2021;
- registration no. 4302184, issued March 12, 2013;
- registration no. 4283740, issued January 29, 2013;
- registration no. 3965843, issued May 23, 2011; and
- registration no. 4,09987, issued March 26, 2013.

In addition to its United States trade mark registrations, Complainant also has trade mark registrations for Complainant’s Mark in at least 50 other countries including trade mark registration no. 152480 in the United Arab Emirates, registered on October 15, 2012, where Respondent appears to be located.

According to the Registrar, the Respondent is identified by the name “IIII” in the country of the United Arab Emirates and with a physical address, which Complainant asserts is false. Accordingly, not only has Respondent employed a privacy service to maintain its anonymity, it has also provided a fictional name and, apparently, a false address.

Complainant is also the owner of the website “www.groupon.com”.

According to publicly available WhoIs, the Domain Name was registered on August 18, 2020. The Domain Name resolves to a website displaying the message “SLICKDEALSTM POWERED BY GROUPONTM” in a prominent manner. The website also seems to offer computer programs at an apparent discounted price.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the Domain Name is confusingly similar to Complainant’s Mark because it incorporates Complainant’s Mark in its entirety. The addition of the descriptive words “slick” and “deals” does not avoid confusing similarity but rather enhances the likelihood of confusion because “slick” is commonly used to describe something that is great or extremely good, and “deals” is strongly associated with and directly describes Complainant’s business of providing great deals for customers.

Complainant contends that Respondent lacks rights to and legitimate interests in the Domain Name as it registered the Domain Name long after Complainant established rights in Complainant’s Mark. Further, Complainant asserts that Respondent is not commonly known by the Domain Name, nor has Respondent used or prepared to use the Domain Name in connection with a bona fide offering of goods or services. Complainant states that Respondent has not been authorized or permitted by Complainant to register or use the Domain Name.

Complainant additionally submits that Respondent has provided a false name and address in the registration of the Domain Name in that the registrant’s first and last name consist of vertical lines “III III”, which is clearly a false name and Complainant’s research shows that the registrant’s address does not exist.

Complainant goes on to submit that the Domain Name resolved to webpages and product listings that fraudulently state, “Powered by GROUPON” and used GROUPON marks to impersonate Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has established it has rights in Complainant’s Mark, providing its 30 million customers with discounted deals via mobile apps, downloads and coupons. Complainant has also secured registration of Complainant’s Mark in, at least, the United States.

Complainant’s Mark, which have been both registered and used in the course of trade, contains as a dominant and distinctive element the word “groupon”. The Domain Name reproduces Complainant’s Mark in its entirety along with the dictionary words “slick” and “deals”. As Complainant points out, the word “slick” is commonly used to describe something that is great or extremely good, and “deals” describes Complainant’s business of providing great deals for customers. The addition of these two words, either separately or together, describes good discounted deals, does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The Domain Name is not identical, but is certainly confusingly similar to, Complainant’s Mark. Accordingly, the first ground under the Policy is made out.

B. Rights or Legitimate Interests

Complainant asserts that the Domain Name resolves to webpages and product listings that indicate they are “Powered by GROUPON” and use Complainants Mark to impersonate Complainant. Such conduct allows the inference to be drawn that Respondent is benefiting, either directly or indirectly, from wrongly associating itself with Complainant. Complainant has therefore put forward a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

In addition, Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name, and that there is no link or authorization given by Complainant to Respondent. Absent any attempt to challenge or refute these allegations, the Panel concludes that the Domain Name was not registered and has not been used for any legitimate or fair purpose.

Accordingly, the second ground under the Policy is made out.

C. Registered and Used in Bad Faith

Complainant contends that Respondent has registered the Domain Name in bad faith. Complainant alleges that Respondent has provided a false name and address in the registration of the Domain Name. First, the registrant’s first and last name consist of vertical lines “III III”, which is clearly a false name. Secondly, Complainant asserts that according to its research, the registrant’s address does not exist. On the face of it, and in the absence of any response, Complainant’s allegations appear to have merit.

Under the circumstances, noting the composition of the Domain Name and its use, the Panel has no difficulty concluding that the Domain Name was registered and used for the purpose of taking advantage of Complainant’s reputation and Complainant’s Mark to misleadingly attract Internet users to webpages and to profit thereby. Such conduct amounts to bad faith under the Policy.

Complainant has therefore clearly established the third ground under the Policy.

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 Domain Name, <slickdealsgroupon.com>, be transferred to the Complainant.

Clive L. Elliott
Sole Panelist
Date: May 26, 2021