There’s an interesting post today on the Groupon Blog, written by CEO Andrew Mason, about a lawsuit filed in Australia concerning a ccTLD and trademark issue.
The blog post discusses how the founders of an Australian Groupon “clone,” known as Scoopon, registered the Australian ccTLD, Groupon.com.au. In addition, the company filed for an Australian trademark on the term “Groupon” about a week prior to the US-based company’s own filing.
Mason discussed how this seemingly risky endeavor almost paid off handsomely for the domain and trademark registrants:
“As Groupon became internationally known, opportunistic domain squatters around the world started to buy local Groupon domain names, thinking that we’d eventually be forced to buy them at an insane price. In fact, we tried to do just that, reluctantly offering Gabby and Hezi Leibovich about $286,000 for the Groupon.com.au domain and trademark—an offer they accepted.“
Allegedly, Gabby and Hezi Leibovich later backed out of the deal in an apparent attempt to get the company to buy their entire Scoopon company. As a result, Groupon was forced to file a lawsuit in Australia.
Interestingly enough, Groupon is trying to use the power of group persuasion to get the domain owners to sell for the $286,000 offer.  Mason is asking people to join  the “Groupon in Australia” Facebook  group to post a message on the wall encouraging Gabby and Hezi Leibovich to sell.
Im not a lawyer, nor am I familiar with the case so this is just a personal opinion. I’m not sure cybersquatting is a term that is relevent here and one might be sensible to avoid such a potential libel. I can understand why the Groupon ™ USA people would be annoyed, insensed even, however the whole point of Australia’s tm, ip etc structures are to protect AUSTRALIANS doing business in AUSTRALIA, including on .com.au .
*IF it were me* I would sell, because I dont like lawsuits and especially I wouldnt want to be involved with fighting a high profile big, popular co unless I knew it was a slamdunk. *IMO* this one isnt, and Groupon ™ lawyers probably know that too which is why they made the offer. I think morally they are on shaky ground but legally they could be ok.
This issue raises its head quite often, and shows a clear requirement for a more consolidated global tm/ip/patent system. As I understand it currently you would need to register your tm in the USA, EU inc UK, Australia, NZ, Canada, RSA, and a host of smaller territories just to cover the english speaking world. Just one area is often unaffordable for a small startup – its kinda worrying when even the big people can’t effectively protect their stuff.
I did some research a while back when my biz was taking off – it would cost tens of thousands of $ to register my tm throughout the world, often requiring regular ongoing topup payments, add on the cost of actually registering and maintaining all the main cctld domains it becomes highly unfeasible (for me), at this stage anyway.
It worries me that I cannot afford to cover all the bases on my main business throughout the world, doing so would eat such a massive chunk of profits as to make it not a business anymore, and yet not doing so runs the risk of someone else stealing the business.
NewsOk owns dot come version of scoopon
Groupon going to launch under the name StarDeals in Australia