Discover Financial Services v. Cybersearch-US, Inc
Claim Number: FA1206001449862
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Cybersearch-US, Inc (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discovercash.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2012; the National Arbitration Forum received payment on June 21, 2012.
On June 21, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <discovercash.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2012 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@discovercash.com. Also on June 22, 2012, the 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
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" 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 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
1. Complainant operates a diversified financial services company under the DISCOVER mark.
2. Complainant owns a trademark registration for the DISCOVER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,479,946 registered March 8, 1988).
3. The disputed domain name is confusingly similar to Complainant’s DISCOVER mark.
4. Respondent is not commonly known the <discovercash.com> domain name.
5. The <discovercash.com> domain name resolves to a website featuring links to third-party sites, many of which directly compete with Complainant’s financial services business.
6. Respondent commercially benefits from the operation of its website through the collection of click-through fees.
7. Respondent had constructive and actual knowledge of Complainant’s rights in the DISCOVER mark at the time Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds a registered trademark for the DISCOVER mark. Respondent did not submit a Response in this proceeding.
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.
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.”).
Complainant has provided the Panel with evidence of its registration of the DISCOVER mark with the USPTO (Reg. No. 1,479,946 registered March 8, 1988) in support of its claim to rights in the mark. The registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel holds that Complainant’s registration of the DISCOVER mark confers rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <discovercash.com> domain name is confusingly similar to its DISCOVER mark within the meaning of Policy ¶ 4(a)(i). Complainant asserts that the disputed domain name wholly includes Complainant’s mark, while adding the generic term “cash.” The Panel disputed domain name affixes the generic top-level domain (“gTLD”) “.com” as well. The Panel finds that neither alteration is sufficient to distinguish the disputed domain name from Complainant’s DISCOVER mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that it has not granted Respondent any license, permission, or authorization to use Complainant’s mark or register domain names which are confusingly similar to it. The WHOIS information lists the domain name registrant as “Cybersearch-US, Inc” for the <discovercash.com> domain name. There is no apparent similarity between “Cybersearch-US, Inc” and the <discovercash.com> domain name. Thus, there is no evidence in the record to suggest that Respondent is in fact commonly known by the disputed domain name. With these findings in mind, the Panel concludes that Respondent is not commonly known by the <discovercash.com> domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also asserts that Respondent’s use of the <discovercash.com> domain name to resolve to a page featuring third-party links to financial services that directly compete with Complainant demonstrates that Respondent’s use of the disputed domain names can be considered neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The use of a confusingly similar domain name to redirect Internet users to a site displaying competing links demonstrates a respondent’s lack of rights or legitimate interests in a disputed domain name pursuant to Policy ¶ 4(a(ii). See 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 under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Accordingly, the Panel concludes that Respondent’s use of the <discovercash.com> domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s provision of links to sites offering financial services that directly compete with those offered by Complainant illustrates Respondent’s disruption of Complainant’s business in bad faith under Policy ¶ 4(b)(iii). Respondent’s registration of a confusingly similar domain name increases the likelihood that Internet users will mistakenly visit Respondent’s site when they had intended to access information associated with Complainant’s business. The substitution of information about Complainant’s business for information about Complainant’s competitors’ businesses disrupts Complainant’s business which constitutes bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant further alleges that Respondent’s registration and use of the <discovercash.com> domain name also evidences bad faith pursuant to Policy ¶ 4(b)(iv). Complainant urges that Respondent’s use of a confusingly similar domain name proves Respondent’s intent to create confusion as to Complainant’s endorsement of, or affiliation with, Respondent’s sites. The Panel infers that Respondent seeks to use this confusion to draw traffic to its site, where Respondent presumably receives click-through fees, allowing Respondent to generate commercial gain from the confusion it creates. Respondent’s conduct demonstrates attraction for commercial gain, evidencing bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant argues that the Respondent’s use of the DISCOVER mark and the industry-relevant (and product-specific) term “cash” in the disputed domain name indicate that Respondent had actual knowledge of Complainant and its rights. The Panel agrees with Complainant regarding Respondent's actual knowledge, concluding that Respondent registered the <discovercash.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <discovercash.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 31, 2012
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