Westmore · UDRP DecisionGrouponers.xyz
The Panel ordered transfer of <grouponers.xyz> to Groupon, Inc. It found the domain confusingly similar to the GROUPON mark because it begins with the mark and the additional letters “ers” do not avoid confusing similarity. The Complainant made an unrebutted prima facie showing that the Respondent lacked rights or legitimate interests. Bad faith was established by use of the Complainant’s well-known mark to divert users to a website featuring nudity and an obscenity.
The timeline behind grouponers.xyz
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The decision illustrates a straightforward application of the UDRP where a well-known mark is reproduced in full with a short suffix and the domain is used to divert visitors to sexually explicit or obscene content. The Respondent’s default left the Complainant’s prima facie showing on rights or legitimate interests unrebutted, while the Panel treated the diversion itself as strong evidence of bad faith.
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. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise Case No. D2016-2087 1. The Parties The Complainant is Groupon, Inc. of Chicago, Illinois, United States of America (“United States”), represented by Greenberg Traurig LLP, United States. The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama City, Panama / Vashti Scalise of Hardy, Nebraska, United States. 2. The Domain Name and Registrar The disputed domain name <grouponers.xyz> is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2016. On October 13, 2016, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 2016, the Registrar transmitted to the Center its verification response disclosing the registrant of the disputed domain name and the registrant’s contact information, which differed from the named respondent and contact information indicated in the Complaint. On October 18, 2016, the Center notified the Complainant of the registrant and contact information provided by the Registrar, and invited the Complainant to amend the Complaint. The Complainant filed an amended Complaint on October 19, 2016. 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 proceeding commenced on October 20, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was November 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2016. The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on November 18, 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 describes itself as “a global leader of local commerce and the place you start when you want to buy just about anything, anytime, anywhere.” For its operations, the Complainant relies on a website resolving from the domain name <groupon.com>, which it registered on May 29, 2002. In the United States Patent and Trademark Office, the Complainant has obtained registration for a number of marks containing GROUPON. One such service mark is United States Trademark no. 3,685,954 GROUPON (word mark), which was registered on September 22, 2009, for “promoting the goods and services of others by providing a website featuring coupons, rebates, price-comparison information, product reviews, link to the retail websites of others, and discount information” in International Class 35. Registration materials indicate a first use in commerce of October 21, 2008. The disputed domain name <grouponers.xyz> was registered on July 18, 2016. 5. Parties’ Contentions A. Complainant The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to a 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. In addition, the Complaint states, 1 inter alia : - “Groupon operates in 47 countries and over 500 markets, with over 250 million subscribers worldwide.” - “Its website at www.groupon.com has more than 150 million unique monthly visitors ….” - “Respondent is only using the Offending Domain to divert internet users looking for Complainant[‘]s website who misspell the mark to an unrelated website featuring sexually explicit and pornographic images ….” - “Complainant has not authorized, licensed, or consented to Respondent’s registration and use of domain name incorporating Complainant’s GROUPON mark, or any confusingly similar variation thereof.” - “Respondent had actual knowledge of Complainant’s famous GROUPON mark, as evidenced by Respondent’s use of the mark in the Offending Domain.” - “Respondent also used a privacy service to register the Offending Domain ….” B. Respondent The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(f) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint in such circumstances. Pursuant to paragraph 14(b), the Panel may draw appropriate inferences from the Respondent’s default. 6. Discussion and Findings In order to prevail on the merits, the Complainant must satisfy each of the three elements under paragraph 4(a) of the Policy. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name <grouponers.xyz> is identical or confusingly similar to a mark in which the Complainant has rights - GROUPON. GROUPON begins the disputed domain name and is prominently presented therein. The addition of the letters “ers” does not defeat confusing similarity. The addition of “.xyz”, the generic Top-Level Domain (“gTLD”), is a technical requirement of every domain name registration. The first element is demonstrated. B. Rights or Legitimate Interests The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has met its initial burden of making a prima facie showing. The Respondent thus has the burden to demonstrate any such rights or legitimate interests, but has declined to take part in this mandatory proceeding. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise. The second element is present. C. Registered and Used in Bad Faith The case record indicates that the Respondent, using the Complainant’s well-known mark, diverted users, some of them who were likely customers of the Complainant, to a website featuring nudity and an obscenity. This is evidence of bad faith under paragraph 4(a)(iii). As one panel stated, “[I]t is commonly understood, under WIPO case law, that, whatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.” Six Continents Hotels, Inc. v. Seweryn Nowak , WIPO Case No. D2003-0022 (Mar. 4, 2003) (Carabelli, Pan.). The third element is satisfied. 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 disputed domain name <grouponers.xyz> be transferred to the Complainant. Ilhyung Lee Sole Panelist Date: November 25, 2016 1 These statements are repeated verbatim in the Amended Complaint.
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