national arbitration forum

 

DECISION

 

Discover Financial Services Corp. v. Bruce Kaye, Systems Consultant / Bruce Kaye

Claim Number: FA1112001418455

 

PARTIES

Complainant is Discover Financial Services Corp. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Bruce Kaye, Systems Consultant / Bruce Kaye (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <applicationfordiscovercard.com>, <discoverapplication.com>, and <prepaiddiscover.com>, registered with Enom, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Linda M. Byrne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2011; the National Arbitration Forum received payment on December 5, 2011.

 

On December 5, 2011, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <applicationfordiscovercard.com>, <discoverapplication.com>, and <prepaiddiscover.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2011, 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@applicationfordiscovercard.com, postmaster@discoverapplication.com, and postmaster@prepaiddiscover.com.  Also on December 9, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.

 

A timely Response was received and determined to be complete on December 29, 2011.  Complainant’s timely Additional Submission was received on January 3, 2012.

 

On January 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed

Linda M. Byrne as Panelist.

 

RELIEF SOUGHT

Complainant requests that the three domain names (<applicationfordiscovercard.com>, <discoverapplication.com>, and <prepaiddiscover.com>) be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant argues that it owns significant rights in the DISCOVER mark in connection with financial, credit card, banking and loan services, as well as theft protection, credit score tracking, gift card services and money messaging.  Complainant also argues that the <applicationfordiscovercard.com>, <discoverapplication.com>, and <prepaiddiscover.com> domain names are confusingly similar to Complainant’s registered mark; that Respondent does not have any rights or legitimate interest with respect to the domain names; and that Respondent has registered and used the three domain names in bad faith. 

 

B. Respondent

Respondent argues that the disputed domain names are not confusingly similar to Complainant’s DISCOVER mark.  Respondent asserts that the objectionable part of the disputed domain names (the letter string “discover”) actually forms the term “Disc Over,” which is Respondent’s common law trademark for products that “effect the repair of Video, Audio, Software or Game Discs.”  Respondent argues that the only reason that “Disc Over” looks similar to the term “Discover” is because Respondent was unable to include spaces in the disputed domain names, so as to correspond more precisely with Respondent’s “Disc Over” brand. 

 

In addition to the term “Disc Over,” Respondent argues that the other portions of the three domain names are simply generic words.  Respondent asserts that it has a legitimate interest with respect to the domain names, and that the domain names have not been registered and used in bad faith.  Respondent further argues that he has been granted a constructive license in the DISCOVER mark pursuant to Respondent’s agreement with a third-party advertising service (which was not produced).

 

C. Additional Submissions

Complainant’s Additional Submission states that the additional terms “application,” “for,” “card,” and “prepaid” are descriptive of Complainant’s services and the financial and credit card industry in general.  Complainant also references the website associated with another one of Respondent’s domain names, <handmadepoker.com>.  The <handmadepoker.com> site features a list of links under the headline “Credit Cards,” and the three disputed domain names are part of this “Credit Card” list. 

 

FINDINGS

1.    Complainant is the recorded owner of a U.S. registration for “DISCOVER” in association with “financial services, namely credit card services.”  See U.S. Reg. No. 1,479,946.  The registration states that Complainant has been using the DISCOVER trademark since 1985.

2.    Complainant is a leading credit card issuer and electronic payment services company, with a well recognized brand associated with U.S. financial services. 

3.    Between May 1, 2011 and June 19, 2011, Respondent registered the domain names <applicationfordiscovercard.com>, <discoverapplication.com>, and <prepaiddiscover.com>.

4.    A site operated by Respondent (<handmadepoker.com>), contains lists of various categories of domain names.  Under the heading “Credit Cards,” the list includes the following domain names, with capitalization as follows: <ApplicationDiscover.com>, <ApplicationForDiscover.com>, and <DiscoverApplication.com>. 

5.    At least as early as November 7, 2011 (the date of Complainant’s second cease and desist letter to Respondent), the domain names <applicationfordiscovercard>, <discoverapplication.com> and <prepaiddiscover.com> all resolved to a website that featured the headline “Click Here to apply for your Discover Card!” 

6.    Complainant contacted Respondent at least twice to request that Respondent stop using <applicationfordiscovercard.com>, <discoverapplication.com>, and <prepaiddiscover.com>, and to request that Respondent transfer the three domain names to Complainant.  These communications included e-mails dated October 26, 2011, and November 7, 2011.  Respondent acknowledged receipt of these communications on November 15, 2011, but at that time Respondent made no substantive response to Complainant’s concerns.

 

DISCUSSION

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:

 

(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.

 

Identical or Confusingly Similar: Policy ¶ 4(a)(i)

 

Complainant has established rights in the DISCOVER mark, under Policy 4(a)(i) in view of its ownership of a U.S. trademark registration (Reg. No. 1,479,946 registered March 8, 1988).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").

 

Respondent asserts that its <applicationfordiscovercard.com>, <discoverapplication.com>, and <prepaiddiscover.com> domain names are not confusingly similar to Complainant’s DISCOVER mark, because the domain names do not refer to Complainant’s mark DISCOVER, but rather to Respondent’s disc cleaning products sold under the name “Disc Over.”  Respondent argues that users would understand that the relevant trademark associated with the three domain names is “Disc Over” given the content of the websites associated with the three domain names.  In support of this argument, Respondent submitted a “True Screenshot” that included a “Disc Over” title bar.

 

The Panel is not persuaded by Respondent’s argument.  As admitted by Respondent, “the only way to distinguish a difference is by the ‘Title Bar’ which appears above the URL address on a browser application, where the actual title of the webpage may be seen and where spaces are allowed as well as the content of the page.”  Further, not all browsers fully display the title bar.  As illustrated by Complainant’s Exhibit D, the Google Chrome browser displayed in the top window of the exhibit shows only part of the title bar in the window tab (“Welcome To The Applicatio”).  Respondent contends that Complainant’s screenshot (Exhibit D) fails to display the bottom half of the web page, and is therefore inferior to Respondent’s “True Screenshot” (Annex F).  Based on the scroll bar position and the size of the webpage being zoomed out to 35%, it is questionable whether the “Disc Over” description would be displayed to a user when the website is loaded under typical conditions.  In any event, even Respondent’s “True Screenshot” of Respondent’s website contains the words “Click here to apply for your Discover Card!”  in the upper portion of the web page.

 

The Respondent also asserts an absence of confusion because the domain names include additional terms (e.g., prepaid, application, and applicationfor), which are commonly used and not subject to monopolization by Complainant. The Panel is not persuaded by this argument either.  As noted in SAP AG v. Reffael Caspi, D2009-0060 (WIPO Mar. 6, 2009), a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998); see also, e.g., Google Inv. v. Babaian, FA 1060992 (Nat. Arb. Forum Oct. 1, 2007) (finding that where the Registrant merely added “generic words [like] ‘web,’ ‘date,’ ‘drive,’ and ‘storage’ that have an obvious relationship to [Google’s] business,” the domain names are confusingly similar). 

 

This Panel concludes that Respondent’s addition of various words to the term “Discover” does not diminish the confusing similarity created by Respondent’s three domain names.  On the contrary, the descriptive terms (application, application for, and prepaid) are strongly associated with financial and credit card services and therefore may exacerbate the likelihood of confusion. See Dimplex (UK) Ltd. v. Karen Duke, D2009-0935 (WIPO Aug. 21, 2009) (“The descriptive language added here, namely, “electric” and “electricfire” not only does not prevent the likelihood of confusion in this case; it increases the likelihood that the Disputed Domain Names will be taken to be referring to the Complainant's DIMPLEX brand electrical and fireplace products”).

 

This Panel concludes that the three disputed domain names are confusingly similar to Complainant’s DISCOVER mark because of the content of the associated websites (“Click here to apply for your Discover Card!”), and because the three domain names fully incorporate Complainant’s DISCOVER mark.  See Federated Western Prop., Inc. v. Chan, D2003-0472 (WIPO Sept. 17, 2003) (finding disputed domain names <macysflowerclub.com> and <macysvisa.com? confusingly similar to Complainant’s trademark in MACY’S, even where Complainant was not found to have rights in the terms “flower club” or “Visa”); see also Citigroup Inc. v. Acme Mail, FA 241987 (Nat. Arb. Forum Apr. 12, 2004); Apple Computer, Inc. v. Apple-Computers, FA 535416 (Nat. Arb. Forum Sept. 22, 2005) (ordering transfer of <apple-computers.us> in part because the domain name fully incorporated the complainant’s mark).

 

In this case, the three domain names are confusingly similar to Complainant’s DISCOVER mark because the only differences between Complainant’s DISCOVER mark and Respondent’s domain names are the addition of industry-relevant generic terms “application,” “for,” “card,” and “prepaid.”  Past panels have found that such alterations to a complainant’s mark do not negate the confusingly similar character of a respondent’s domain nameSee Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where a domain name contains the identical mark of a complainant combined with a generic word or term); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with a complainant’s registered mark “llbean” does not circumvent that complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). 

 

This Panel therefore rules in favor of Complainant with respect to the “identical or confusingly similar” factor of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must make a prima facie case that Respondent lacks rights and legitimate interests in the three disputed domain names.  If shown, the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

In this case, Respondent is not commonly known by any of the disputed domain names.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).  Respondent’s arguments regarding its alleged legitimate rights are analyzed below.

 

1.         Redirection Services.

 

Before receiving Complainant’s demand letter, it appears that Respondent used each domain name in conjunction with an advertising scheme that permitted users to click through the Respondent’s three websites to Complainant’s official application page. 

 

The Panel finds that Respondent’s activities are neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit from using the complainant’s mark by redirecting Internet traffic to its own website); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

2.         Promotion of Respondent’s “Disc Over Product.”

 

Respondent also argues that the domain names are legitimately associated with Respondent’s “Disc Over” product.  Respondent maintains that he has a legitimate right and interest in the domain names in connection with the sale of “Disc Genie” disc cleaning products under the “Disc Over” name.   It appears that Respondent’s first mention of the “Disc Over” brand or product post-dates Complainant’s demand letters dated October 26, 2011 and November 7, 2011. 

 

After the date of Complainant’s demand letter, Respondent revised the website content to insert the following description:

 

Welcome to this “Disc Over”™ Website…Where you can buy products to Apply to your Software, Game and Video Disc to use it Over and Over again!  Why buy your software, video and game disc over and over, every time there’s a little scratch on one?  With one Prepaid purchase and this easy to follow Application of our process, you can use this Card to renew your software, video and game Disc and use it Over again!

 

This Panel does not accept Respondent’s “Disc Over” argument.  Even the current version of Respondent’s websites refer to  Complainant’s DISCOVER trademark prominently near the top of each domain name’s web page.  The content relating to the alleged “Disc Over” products appears at the bottom of the page and is viewable only after scrolling below what would normally be the bottom of the page (Respondent’s “True Screenshot” (Annex F)).

 

3.  Respondent’s Implied License.

 

Respondent contends that it was granted an implied license to use the DISCOVER mark via a contract with a third party advertiser that pays Respondent to display advertisements that promote Complainant’s services.  Complainant points out, however, that Respondent has not been authorized by Complainant to use the DISCOVER mark, and the Respondent is ultimately responsible for the content of his own websites.  This Panel concludes that Respondent’s reliance on an implied license is misplaced.  In any event, any implied license if one existed, was clearly revoked by Complainant and expressly communicated to Respondent at least by November 7, 2011. See Rapier v. Dark Moon Mgmt., D2004-0221 (WIPO June 14, 2004) (holding that an implied license revoked by request of owner to stop using mark).

 

In this case, Complainant has not granted Respondent any license, permission or authorization by which it could own or use any domain name registration containing Complainant’s DISCOVER mark.  Cf. Amazon.com, Inc. v. Rayaneh Net, FA 196217 (Nat. Arb. Forum Oct. 28, 2003) (finding no legitimate rights in the <amazoniran.com> domain name, in part, because complainant did not grant respondent a license to use the AMAZON.COM mark); see also Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding absence of license permitting respondent to use complainant’s trademark in domain name evidence of respondent’s illegitimate interests).

 

On balance, Respondent’s use of <applicationfordiscovercard.com>, <discoverapplication.com>, and <prepaiddiscover.com> does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and 4(c)(iii).

 

Registration and Use in Bad Faith

 

This Panel concludes that Complainant’s trademark DISCOVER is famous and distinctive through longstanding use.  Respondent has used Complainant’s DISCOVER trademark on the three websites associated with the three disputed domain names, by inclusion of the statement “Click here to apply for your Discover Card!” The Panel therefore concludes that Respondent had knowledge of Complainant’s rights in the DISCOVER trademark at the time of his registration of the three disputed domain names.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

The Panel concludes that Respondent intended to take commercial advantage of the Internet users’ confusion as to the source, sponsorship, or affiliation of the disputed domain names pursuant to Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).  The Panel accepts the Complainant’s assertion that the Respondent’s registration of the domain names incorporating in its entirety the trademark of the Complainant is an attempt to intentionally divert customers to Respondent’s website for financial gain.

 

After Respondent received Complainant’s letter demanding transfer of the disputed domain names, it appears that Respondent altered the content of the three websites corresponding to the disputed domain names so that the websites referenced the Disc Genie disc cleaner when the user scrolls down. (This alteration seems supported by the different sizes of the scrollbars in Exhibit D and Annex F).  In his Response, Respondent maintains that he is using the website for bona fide marketing of the Disc Genie product.  The Panel is not persuaded by Respondent’s argument in view of the overall content of the website and all the evidence of record.

 

In view of the above, the Panel thus finds that Respondent has registered and used the three disputed domain names in bad faith. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <applicationfordiscovercard.com>, <discoverapplication.com>, and <prepaiddiscover.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Linda M. Byrne, Panelist

Dated:  January 26, 2012

 

 

 

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