Groupon details Aussie trademark stoush

Online coupon website Groupon has outed further details of a dispute it filed in the Federal Court last year against Aussie website Scoopon, which it accuses of trademark infringement and cybersquatting.

(My trusty gavel image by Brian Turner, CC2.0)

Groupon today via a blog pointed the finger squarely at Scoopon as being responsible for delaying Groupon's expansion into Australia.

In the blog, Groupon accused Aussie brothers Gabby and Hezi Leibovich of "making life difficult" by purchasing the Groupon.com.au domain and registering Groupon Pty Limited as their business.

A search of Intellectual Property Australia returns results that indicate Scoopon registered the Groupon Pty Ltd business name a mere five days before Groupon in March 2010.

Groupon said it had previously offered to pay US$286,000 for the Groupon.com.au domain and Groupon Pty Ltd trademark, which Groupon said the brothers initially accepted. Problems arose, however, according to the US coupon site, when the brothers changed their mind and told Groupon they would only part with the name if it purchased the entire Scoopon business.

Groupon is now pursuing Scoopon via legal channels, with a federal court date set down for 4 February. In the meantime, Groupon has established an Australian foothold under the temporary name of Stardeals, and has urged customers angered by the Scoopon's actions to support the campaign via Facebook.

"Post a note for Hezi Leibovich, politely asking them to accept the US$286,000 (which we are still willing to pay) so we can get on with business," Groupon said in its blog.

"Not a bad paycheck for simply registering a domain name and company name and applying to register another company's trademark!" it added.

The US-based coupon site will also take Scoopon to court in Illinois, claiming trademark infringement. Groupon told its customers that legal action could take up to a year.

Scoopon — a sister site of daily deals domain Catch of the Day — told ZDNet Australia that Groupon's attempts to settle the matter in the court of public opinion bordered on an attempt to subvert the course of justice.

"Groupon's attempt to try and have this matter 'determined' in the court of public opinion is unfortunate and possibly amounts to sub judice. As the matters in dispute are presently before the court, it is inappropriate to publicly comment on matters before the court," said Catch of the Day's director, Gabby Leibovich.

Gabby Leibovich added that Catch of the Day has been around well before Groupon entered the market.

"Scoopon is the 'sister' website of CatchoftheDay.com.au, Australia's number one online department store (Hitwise), which has been offering daily deals (including the provision of entertainment services) to Australian consumers since 2006, well before Groupon came into existence. 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," the company director said.

"Scoopon is confident of its position which it will continue to defend, whilst at the same time continuing to provide the leading online group buying service in Australia, despite attempts by Groupon to bully it out of the market," he added.

This isn't the first time that an online giant has taken umbrage with the name of an Australian site: search monolith Google took legal action against liquor search engine Groggle in April last year.

A lengthy negotiation saw Groggle re-brand itself as Drinkle in an undisclosed settlement.

Even state governments have been dragged into cybersquatting disputes, with the Northern Territory Government shelling out $100,000 to purchase a company that held three domain names intended for tourism advertising.

Despite its legal dramas, Groupon is entering 2011 in a strong position after a take-over offer from Google for up to US$6 billion in December.