Groupon, Inc. v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org / Tapash Kar
Case No. D2015-1818
1. The Parties
The Complainant is Groupon, Inc. of Chicago, Illinois, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org of Queensland, Australia / Tapash Kar of New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name is registered with Domainshype.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2015. On October 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2015, 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 October 21, 2015 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 October 26, 2015.
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 October 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2015.
The Center appointed Adam Samuel as the sole panelist in this matter on November 18, 2015. 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 provides information about where to purchase a variety of goods and services including travel in a number of different countries. It owns United States of America trademark number 3685954 for GROUPON which was registered on December 22, 2009 and an Indian trademark number 1169997, registered on May 20, 2014. The disputed domain name was registered on December 11, 2014. The Complainant has registered a number of domain names, notably on May 29, 2002 and on September 22, 2009.
5. Parties’ Contentions
These are the Complainant’s submissions with which the Panel may or may not agree.
The Complainant owns trademark registrations for GROUPON in a number of countries, including India where the Respondent is located.
The addition, in the disputed domain name, of the descriptive word “travel” to front of and the generic Top-Level Domain (“gTLD”), “.net”, to the end of the Complainant’s trademark fails to prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
The Respondent has not at any time been commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Long after the Complainant established its rights in its GROUPON trademark, the Respondent without the Complainant’s authorization or consent, registered the disputed domain name which is virtually identical to the Complainant’s trademark.
The Respondent has used the disputed domain name to publish a website offering travel services that compete directly with the Complainant. The website posted on that website prominently displays the name “Travelo” not “Travelgroupon”.
The Respondent knew about the Complainant’s trademark as can be seen from the Respondent’s use of the trademark in the disputed domain name. One can infer bad faith on the part of the Respondent from this and the similarity between the disputed domain name and the Complainant’s world renowned trademark.
Use of a privacy service to shield its identity and elude enforcement efforts by the legitimate trademark owner demonstrates the Respondent’s bad faith use and registration of the disputed domain name.
On July 31, 2015, the Complainant’s counsel wrote to the Respondent telling the latter of the Complainant’s rights and asking the Respondent to transfer the domain name to the Complainant. No reply has been received.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(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 disputed domain name consists of the Complainant’s trademark preceded by the generic word “travel” which describes one of the Complainant’s business activities and followed by the gTLD “.net”. The Complainant’s trademark consists of two generic words “group” and “on” which have no connection to each other. As such, it is quite distinctive. The addition of a generic word to such a trademark which describes one of the business activities for which the trademark is used and a gTLD is insufficient to prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark
B. Rights or Legitimate Interests
The Respondent is not called “Travelgroupon” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name clearly reflects the Complainant’s trademark, an artificial name consisting of an apparently random combination of words. The Respondent must have known about the Complainant’s trademark in order to be able to replicate it so precisely in the disputed domain name. The disputed domain name has been used to promote travel experiences with a firm by the name of “Travelo” which as such seeks to compete with the Complainant. It is unclear why a domain name including the words “groupon” should be used for this purpose other than to exploit the Complainant’s trademark.
In this Panel’s view, one is left with three possible motives for the Respondent’s decision to register the disputed domain name: to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for commercial gain or persuade the Complainant to buy the disputed domain name from him for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent’s motivation may have been more than one of these and perhaps all three.
For all these reasons, the Panel concludes that the disputed domain name was 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 be transferred to the Complainant.
Date: November 19, 2015