Discover Financial Services v. Whois Protection
Claim Number: FA0707001032026
Complainant is Discover Financial Services (“Complainant”), represented by Baila
H. Celedonia, of Cowan, Liebowitz & Latman, P.C., 1133
Avenue of the
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dicovercard.com>, registered with Rebel.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 16, 2007.
On July 12, 2007, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <dicovercard.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 8, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@dicovercard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dicovercard.com> domain name is confusingly similar to Complainant’s DISCOVER mark.
2. Respondent does not have any rights or legitimate interests in the <dicovercard.com> domain name.
3. Respondent registered and used the <dicovercard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Discover Financial Services, has been in the credit
card business for over thirty years.
Complainant provides credit card services for over 50 million members,
and markets its services throughout the
Respondent registered the <dicovercard.com> domain name on June 28, 2001. Respondent’s disputed domain name resolves to a website that displays hyperlinks to Complainant’s website and various third-party websites, some of which are in direct competition with Complainant.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s trademark registration
with the USPTO sufficiently establishes Complainant’s rights in the DISCOVER
mark, pursuant to Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum
The Panel also finds that the <dicovercard.com> domain name is confusingly
similar to Complainant’s DISCOVER mark, in that it merely removes the “s” from
Complainant’s mark and adds the generic term “card” to Complainant’s mark. This does nothing to alleviate the confusing
similarity, as the term “card” has an obvious relationship to Complainant’s
business as a credit card service provider.
Furthermore, the addition of the generic top-level domain “.com” does
not make the disputed domain name unique under Policy ¶ 4(a)(i), as a top-level
domain is a requirement for all domain names.
See State Farm Mut.
Auto. Ins. Co. v. Try Harder &
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
First, Complainant must establish that Respondent lacks rights and legitimate interests with respect to the <dicovercard.com> domain name. Once Complainant makes a prima facie case, the burden of proof then shifts to Respondent, who must then prove that it indeed has rights or legitimate interests in the disputed domain name. In the case at hand, the Panel finds Complainant has presented a prima facie case. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent is using the <dicovercard.com> domain name to display
hyperlinks to Complainant’s website, as well as to several third-party
websites, some of which are direct competitors of Complainant. The Panel presumes that Respondent is using
the disputed domain name to earn click-through fees, and therefore finds that
Respondent has not made a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4 (c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services); see also WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy).
Furthermore, Respondent’s WHOIS information does not indicate, and nothing in the record suggests that Respondent is commonly known by the <dicovercard.com> domain name. Additionally, Complainant asserts, and Respondent has not refuted, the fact that Complainant neither authorized nor licensed respondent to used the DISCOVER mark in any manner. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
The Panel finds that Respondent is using the <dicovercard.com> domain name to lure
Internet users to a website that features hyperlinks directing users to
Complainant’s website as well as competitor’s sites. This use qualifies as a disruption of
Complainant’s business and constitutes a bad faith registration and use under
Policy ¶ 4(b)(iii). See EBAY, Inc. v.
MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
Based on unchallenged evidence presented by Complainant, the
Panel finds that Respondent receives click-through fees for the hyperlinks
displayed on the website that resolves from the <dicovercard.com> domain name. The
Panel also finds that the disputed domain name registered to Respondent is
capable of creating a likelihood of confusion as to Complainant’s affiliation
with the disputed domain name and resulting website. This type of commercial benefit evidences bad
faith registration and use under Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent
has attempted to commercially benefit from the misleading
<qwestwirless.com> domain name by linking the domain name to adult
oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”); see
also Associated Newspapers
Ltd. v. Domain Manager, FA 201976 (Nat.
Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dicovercard.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 23, 2007
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