Discovery, Inc. v. Wang Dong Yu / 王东玉
Claim Number: FA2104001942710
Complainant is Discovery, Inc. (“Complainant”), represented by Amy McFarland of Arent Fox LLP, District of Columbia, USA. Respondent is Wang Dong Yu / 王东玉 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discveryplus.com>, which is registered with DNSPod, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 23, 2021; the Forum received payment on April 23, 2021. The Complaint was received in both Chinese and English.
On April 26, 2021, DNSPod, Inc. confirmed by e-mail to the Forum that the <discveryplus.com> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 29, 2021, the Forum served the Chinese and English language Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of May 19, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@discveryplus.com. Also on April 29, 2021, the Chinese and English Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 24, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a media company, the global leader in real life entertainment, and one of the world’s largest pay-TV programmers.
Complainant holds a registration for the DISCOVERY service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,952,377, first registered April 26, 2011.
Complainant has for years operated an official website at the domain name <discoveryplus.com>.
Respondent registered the domain name <discveryplus.com> on September 23, 2020.
The domain name is confusingly similar to Complainant’s DISCOVERY mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the DISCOVERY mark.
Respondent does not use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent, for its commercial gain, uses the domain name to divert Internet users to third-party commercial websites via a webpage featuring pay-per-click hyperlinks.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the DISCOVERY mark when it registered the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Language Of The Proceeding
In ordinary circumstances, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Chinese. However, there are considerations evident in the Complaint that weigh on this question. They include that:
(i) the disputed domain name contains exclusively English words and characters, thus demonstrating Respondent’s familiarity with written English;
(ii) both the Complaint filed in this proceeding and the official Commencement Notification required to be delivered to Respondent at the outset of this proceeding have been rendered in Chinese and delivered to the attention of Respondent in that language.
Respondent does not contest any of this. For these reasons, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to conduct this proceeding in English. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true).
Complainant has rights in the DISCOVERY service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for …[its mark]… demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <discveryplus.com> domain name is confusingly similar to Complainant’s DISCOVERY service mark. The domain name incorporates the mark in its entirety, save only for deletion of the letter “o” and the addition of the generic term “plus,” as well as the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding the domain name <wllsfago.com> confusingly similar to the WELLS FARGO mark where the domain name omitted the letters “e” and “r” from the mark while adding the gTLD “.com.”).
See also Microsoft Corp. and Skype v. Abdu 1Salam /jus2communications, Case No. FA1513504 (Forum September 9, 2013):
Respondent’s … domain name incorporates [c]omplainant’s … mark in its entirety, adding only the generic term “plus” and then appending the top level domain name “.org.” Respondent’s addition of “plus” to [c]omplainant’s mark does not differentiate the domain name from [c]omplainant’s … mark and the addition of a top level domain name is irrelevant to the Panel’s analysis.”)
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <discveryplus.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged <discveryplus.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the DISCOVERY mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Wang Dong Yu / 王东玉,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent, for its commercial gain, uses the domain name to divert Internet users to third-party commercial websites via a webpage featuring pay-per-click hyperlinks. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018):
Respondent’s confusingly similar … domain name references a website displaying links to competing third parties…. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence before us that Respondent’s employment of the <discveryplus.com> domain name, which we have found to be confusingly similar to Complainant’s DISCOVERY service mark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1557007 (Forum June 6, 2014):
Therefore, the Panel finds that Respondent registered and is using the … domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.
We are also convinced by the evidence that Respondent registered the <discveryplus.com> domain name while knowing of Complainant and its rights in the DISCOVERY mark. This further illustrates Respondent’s bad faith in registering it. See, for example, AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum December 24, 2018):
The Panel here finds that Respondent did have actual knowledge of Complainant’s mark [when it registered a confusingly similar domain name], [thus] demonstrating bad faith registration … under Policy ¶ 4(a)(iii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <discveryplus.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 2, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page