Westmore · UDRP DecisionGoodwellgroupon.com, Goodwillgroupon.com
The Panel ordered the transfer of both disputed domain names. It found them confusingly similar to the Complainant’s widely known and distinctive GROUPON mark because adding “goodwell” or “goodwill” did not distinguish the mark. The Respondent’s use of a domain name for a website mimicking the Complainant’s site was neither bona fide nor fair or noncommercial, and the Panel found no evidence that the Respondent was commonly known by either domain name. Bad faith was established from the confusing imitation website, the coordinated registration of the inactive companion domain, use of a privacy service, and failure to respond to the Complainant’s cease-and-desist letter.
The timeline behind goodwellgroupon.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
How each disputed name was decided in this proceeding.
The decision illustrates how a panel may evaluate related domain names collectively when one hosts an imitation website and the other is inactive. It also shows that a stated charitable objective does not establish a legitimate interest where the domain name and website presentation misleadingly appropriate a widely known mark.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Groupon Inc. v. SchoolBizPromotion, Osama Amer Case No. D2014-1607 1. The Parties The Complainant is Groupon Inc. of Chicago, Illinois, United States of America, internally-represented. The Respondent is SchoolBizPromotion, Osama Amer of Cumming, Georgia, United States of America. 2. The Domain Names and Registrar The disputed domain names <goodwellgroupon.com> and <goodwillgroupon.com> (the “Domain Names”) are registered with Launchpad.com Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2014. On September 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on September 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2014. The Respondent sent several email communications to the Center but did not submit a formal response. The Center appointed Michelle Brownlee as the sole panelist in this matter on October 20, 2014. 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 owns United States Trademark Registration Nos. 3685954 for the mark GROUPON, 4222645 for the mark GROUPON and design, 4302184 for GROUPON GOODS, 4068591 for GROUPONLIVE, 3965842 for GROUPONWORKS, and 4010592 for GROUPON NOW in connection with “promoting the goods and services of others by providing a web site featuring coupons, rebates, price-comparison information, product reviews, links to the retail web sites of others, and discount information” in International Class 35. The Complainant also owns several other United States trademark registrations for marks that include the term GROUPON in connection with related services. The Respondent registered the domain name <goodwellgroupon.com> on or about May 1, 2014 and registered the domain name <goodwillgroupon.com> on or about May 10, 2014. 5. Parties’ Contentions A. Complainant The Complainant states that it is a worldwide leader in local commerce, offering hundreds of daily deals on restaurants and local businesses to over 53 million active customers and more than 200 million subscribers worldwide. The Complainant has worked with more than 500,000 merchants worldwide and has sold nearly 400 million deals since its inception. The Complainant offers daily deals in hundreds of markets in North and South America, Europe, Africa, Asia and Australia, and currently operates in at least 48 countries worldwide, including more than 1,000 cities. The Complainant offers its services primarily through its web site located at the <groupon.com> domain name, which attracts more than 15 million unique visitors per month. The Complainant contends that its GROUPON mark is a unique and fanciful name with no real-world correlation, and that the mark has become famous through extensive use. The Complainant submits that the Domain Names are confusingly similar to its GROUPON mark, that the Respondent has no rights to or legitimate interests in respect of the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant argues that the Respondent is using the <goodwillgroupon.com> domain name in connection with a “clone” site that is designed to copy the look and functionality of the Complainant’s web site. The Complainant contends that the use of the <goodwillgroupon.com> domain name with a site that is designed to look like the Complainant’s site is likely to deceive Internet users into believing that the domain name is associated with the Complainant. The Complainant states that the domain name <goodwellgroupon.com> resolves to a blank page that lacks content. The Complainant argues that the Respondent’s absence of any content is evidence of bad faith use of the domain name. The Complainant notes that the Respondent hid his identity through a privacy service and did not respond to a cease and desist letter sent by the Complainant, and argues that these facts are further evidence of the Respondent’s bad faith registration and use of the Domain Names. B. Respondent The Respondent did not submit a formal response to the Complainant’s contentions. However, the Respondent did make arguments in support of his good faith in the communications that he made to the Center, and the Panel will consider those as a response. The Respondent stated that he is in the process of getting a non-profit organization recognized by the Internal Revenue Service that will raise money for public schools in Georgia. The Respondent stated, “We named our web site goodwillgroupon.com in good faith and because we admire your company greatly, not to take your customers away from you. We thought that any name as long as it is not the same, we should be ok.” The Respondent also argued that his services were different than those of the Complainant. The Respondent stated, “As far as our website concept, it is totally different than your company. The advertising is free to merchants and we just sell the offers as coupons to consumers where they have to donate part of their savings to a school of their choice.” The Respondent also offered to transfer his web site to the Complainant “for a small compensation” if the Complainant would promise to help the public schools nationwide in the United States. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has demonstrated that it owns rights in the GROUPON trademark, and that this mark is widely-known and distinctive. The addition of the words “goodwill” or “goodwell” in the Domain Names does not serve to distinguish them from the Complainant’s trademark. When a widely-known mark is paired with less distinctive terms, the combination will typically be found to be confusingly similar to the mark. See , e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions , WIPO Case No. D2007-1140 . Under these circumstances, the Panel finds that the Domain Names are confusingly similar to the Complainant’s GROUPON mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts: (i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; or (iii) 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 at issue. The Respondent has not presented evidence showing that the Respondent is commonly known by either of the Domain Names. The Respondent argues that his use of the Domain Names is legitimate because he is using it with a service that raises money for schools. However, because the Respondent is using the Complainant’s trademark in Domain Names that direct Internet users to a web site that mimics the Complainant’s web site, this use cannot, under the circumstances, be considered to be a bona fide offering of services. Nor can the Respondent’s use be considered a noncommercial or fair use of the Domain Names. Accordingly, the Panel finds that the Complainant has established this element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or (ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. This list of factors is not exhaustive. Other factors can indicate bad faith. The Complainant has presented evidence that the Respondent is using the <goodwillgroupon.com> domain name in connection with a web site that mimics the appearance and functionality of the Complainant’s site. Although the Respondent argues that he did not intend to take business away from the Complainant, this argument is not credible in light of the Respondent’s adoption of a domain name that incorporated the Complainant’s widely-known trademark and use of that domain name in connection with a site that is likely to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site. Although the Respondent is not actively using the <goodwellgroupon.com> domain name in connection with a web site at the current time, the fact that the Respondent registered this domain name around the same time as the <goodwillgroupon.com> domain name suggests that the two domain names were part of the same business scheme. Further, there are other facts that tend to indicate that the Respondent is not acting in good faith, namely that the Respondent registered the Domain Names using a privacy service, and did not respond to a cease and desist letter that the Complainant sent to the Respondent. Under the circumstances, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith. 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 Names, <goodwellgroupon.com> and <goodwillgroupon.com>, be transferred to the Complainant. Michelle Brownlee Sole Panelist Date: November 4, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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