Australia’s domain name regulator late last week said the scuffle between US online coupon giant Groupon and local imitator Scoopon was out of its jurisdiction, because the Australian company had registered the “Groupon” business name in Australia as well as the local domain name associated with it.
Last week, deal of the day site Groupon — which has shot to global prominence and accumulated hundreds of millions of dollars in revenue since it launched in late 2008 — accused Scoopon of “domain squatting” its Australian domain name, and stealing its local trademark. The war of words has also spilled over into court cases in the US and in Australia.
“We believe that they’ll only sell us the domain and trademark if we’re willing to buy the entire Scoopon business from them,” wrote Groupon chief executive Andrew Mason in a blog post.
Australia’s domain name regulator, .au Domain Administration, often steps in to adjudicate cases where the ownership of a certain domain name is in dispute. However, in this case, auDA chief executive Chris Disspain (pictured, above) said his organisation’s hands were tied.
“Simply put, the Australian company [is] entitled to the domain name because they have the company name,” he said in an email last week.
“So the issue is a legal one re: the company name and cannot be solved in the domain name arena. If [the Australian Securities and Investments Commission] allows them to have the company name, they meet the .au policy for the domain name.”
In a response to a request for comment issued late last week, one of the founders of Scoopon, Hezi Leibovich, said Groupon’s publicity around the legal action was inappropriate.
“Groupon’s attempt to try and have this matter ‘determined’ in the court of public opinion is unfortunate and possibly amounts to sub-judice,” Leibovich wrote. “As the matters in dispute are presently before the court, it is inappropriate to publicly comment on matters before the court.”
The executive said Scoopon was “confident” of its position and would continue to defend it, while at the same time continuing to provide what it described as “the leading online group buying service in Australia”, despite what it said was attempts by Groupon to “bully” it out of the market.
Leibovich pointed out that Scoopon was the sister site of Catch of the Day, which he said — according to tracking service Hitwise — was the nation’s number one most visited online store in its category.
Catch of the Day had been “offering daily deals (including the provision of entertainment services) to Australian consumers since 2006, well before Groupon came into existence,” he added. “The development of Scoopon was a natural extension of the existing consumer offering provided by the founders of Catch of the Day.”
“Consequently, Scoopon refuses to bow to the US giant’s attempt at trying to bully it out of the Australian market.”
Image credit: Veni Markovski, Creative Commons
Agree with the auDA position here.
Scoopon haven’t broken any domain registration regulations. The problem here is that Groupon took too long to register their business name in Australia.
It’s now up to the trademark people to sort out whether or not the registration of “Groupon” as a business name and trademark in Australia by Scoopon was vexatious/spurious.
I suspect Groupon will get it’s domain back eventually.
I wonder who is bullying who here.
auDA is 100% justified in it’s position.
It is now a matter for the Federal Court to determine, which in my opinion will no doubt end up providing relief to Groupon.
There is a very clear link that the registrant of groupon.com.au knowingly registered the domain, company and trademark in Australia to trade off the reputation of Groupon (US) and/or to position themselves to sell the domain , business name & trademark to Groupon (US) providing a financial jackpot.
Interesting to note that Scoopon/Leibovich registered the ‘groupon.com.au’ domain in July 2010. They also don’t point it anywhere which I would suggest is a result of strong legal advice.
Advice for any US company planning to come to Australia or any Australian company planning to do anything outside of Australia: Protect you IP in as many domain extensions as possible. It’s called good risk management. The costs of registration and renewals is far less than a couple hours with your solicitor.
I agree with your assumption.
Regardless of the legalities surrounding the challenge, it should be plain as day that the brothers Leibovich are blatant profiteers. Sure they may have had Catch of the Day as one of the earliest product aggregator sites in Australia but its hightly ingenuous to suggest that they brainstormed as uncommon a name as Groupcon and decided to register it (and pay the $412 company registration fee to fortify their claim). The truth is that mavens of the digital economy such as the Leibovich brothers dont operate in a vacuum. The whole deal was one big shady practice. Still, they no doubt profited handsomely from it and are obviously comfortable with the morally bankrupt manner in which they do business.
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