Discover Financial Services v. Web volution
Claim Number: FA1211001472912
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is Web volution (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discoverycreditcard.org>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 27, 2012; the National Arbitration Forum received payment on November 28, 2012.
On November 28, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <discoverycreditcard.org> 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 November 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 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@discoverycreditcard.org. Also on November 29, 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 December 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Complainant is a leading credit card issuer and electronic payment services company with a highly recognizable brand in financial services. Complainant operates the DISCOVER card in addition to offering personal and student loans, online savings products, certificates of deposit and money market accounts through its DISCOVER Bank subsidiary. Complainant has thousands of employees and the products and services sold under the DISCOVER mark are advertised and promoted around the world.
2. Complainant owns and shows evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DISCOVER mark (Reg. No. 1,479,946, registered March 8, 1988). Complainant also owns and provides evidence of trademark registrations with the Canadian Intellectual Property Office (“CIPO”) for the DISCOVER mark (e.g., Reg. No. TMA331565, registered September 4, 1987).
3. Respondent’s <discoverycreditcard.org> domain name is confusingly similar to Complainant’s DISCOVER mark as it fully incorporates Complainant’s mark and adds an extra letter “y,” as well as the generic terms “credit” and “card.”.
4. Respondent has no rights or legitimate interests in the disputed domain name.
i. Respondent has never been commonly known by the disputed domain name and has never used any trademark or service mark similar to the disputed domain name. Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks.
ii. Respondent’s disputed domain name resolves to a parked web page containing various links to financial services, many of which are direct competitors of Complainant.
5. Respondent has registered and is using the disputed domain name in bad faith.
i. Respondent is using the disputed domain name to advertise links to related products, constituting bad faith registration and use under Policy ¶ 4(b)(iii).
ii. Respondent’s disputed domain name is being used to attract intentionally, for commercial gain, Internet users to Respondent’s website or other online locations.
iii. Respondent, at the time that it registered the disputed domain name, had constructive and actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company and is a leading credit card issuer and electronic payment services company with a highly recognizable brand in financial and related services.
2. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DISCOVER mark (Reg. No. 1,479,946, registered March 8, 1988) and trademark registrations with the Canadian Intellectual Property Office (“CIPO”) for the DISCOVER mark (e.g., Reg. No. TMA331565, registered September 4, 1987).
3. Respondent registered the <discoverycreditcard.org> domain name on February 14, 2012. Respondent uses the domain name in conjunction with a pay- per-click advertising scheme which features advertisements for Complainant’s direct competitors.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends and the Panel accepts that it is a leading credit card issuer and electronic payment services company with a highly recognizable brand in financial services. Complainant asserts that it operates the DISCOVER card in addition to offering personal and student loans, online savings products, certificates of deposit and money market accounts through its DISCOVER Bank subsidiary. Complainant argues that it has thousands of employees and the products and services sold under the DISCOVER mark are advertised and promoted around the world. Complainant argues that it owns and shows evidence that the Panel accepts of trademark registrations with the USPTO for the DISCOVER mark (Reg. No. 1,479,946, registered March 8, 1988). Complainant also asserts that it owns and provides evidence that the Panel accepts of trademark registrations in Canada with the CIPO for the DISCOVER mark (e.g., Reg. No. TMA331565, registered September 4, 1987). The Panel therefore finds that Complainant’s registration of the DISCOVER mark with the USPTO and CIPO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DISCOVER mark. Complainant asserts that Respondent’s <discoverycreditcard.org> domain name is confusingly similar to Complainant’s DISCOVER mark as it fully incorporates Complainant’s mark and adds an extra letter “y.” The Panel finds that the addition of a letter does not distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Complainant argues that Respondent also adds the generic words “credit” and “card” to the DISCOVER mark to make the disputed domain name. Complainant contends that the word “credit” is the product offered by Complainant to its customers and “card” is the method of delivery. The Panel notes that the addition of a descriptive term does not differentiate Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). In the present case, the objective internet user would assume that the domain name related to the services provided by Complainant in the use of its own credit card .The Panel notes that Respondent also adds the generic top-level domain (“gTLD”) “.org.” The Panel finds that the addition of a gTLD does not eliminate confusing similarity between Respondent’s disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Thus, the Panel concludes that Respondent’s <discoverycreditcard.org> domain name is confusingly similar to Complainant’s DISCOVER mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s DISCOVER trademark and to use it in its domain name, adding only the single letter “y” and two generic words ‘”credit” and “card” which emphasizes the confusing similarity between the domain name and the trademark;
(b) Respondent has then caused the disputed domain name to resolve to a website displaying pay-per-click links to Complainant’s direct competitors;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant argues that Respondent has never been commonly known by the disputed domain name and has never used any trademark or service mark similar to the disputed domain name. The Panel notes that the WHOIS information identifies “Web volution” as the registrant of the disputed domain name. See Complainant’s Exhibit B. Complainant asserts that it has not granted Respondent any license, permission, or authorization by which it could own or use a domain name registration which is confusingly similar to any of Complainant’s marks. The Panel notes that Respondent does not submit any evidence proving that it is commonly known by the disputed domain name. Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e)Complainant asserts that Respondent’s disputed domain name resolves to a parked web page containing various links to financial services, many of which are direct competitors of Complainant. The Panel notes that Respondent’s disputed domain name connects to a website featuring links titled “Debt Settlement-Whos Good,” “Great Offer on Remittance,” “End Credit Card Debt,” and others. See Complainant’s Exhibit D. The Panel finds that Respondent’s use of the disputed domain name to feature links to Complainant’s competitors is 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). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent is using the disputed domain name to advertise links to related products, constituting bad faith registration and use under Policy ¶ 4(b) (iii). The Panel notes that Respondent’s disputed domain name connects to a website featuring links titled “Debt Settlement-Whos Good,” “Great Offer on Remittance,” “End Credit Card Debt,” and others. See Complainant’s Exhibit D. The Panel finds that Respondent’s use of the disputed domain name to link to Complainant’s competitors disrupts Complainant’s business, showing bad faith use and registration under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Secondly, Complainant argues that Respondent’s disputed domain name is being used to attract intentionally, for commercial gain, Internet users to Respondent’s website or other online locations. Complainant contends that Respondent’s disputed domain name is likely to create confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location for a “pay-per-click” ad scheme. The Panel finds that Respondent’s use of the disputed domain name to attract Internet users for its own commercial benefit evidences 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).
Thirdly, Complainant contends that Respondent, at the time that it registered the disputed domain name, had constructive and actual knowledge of Complainant’s mark. Complainant argues that Respondent should have known of Complainant’s marks based on Complainant’s registrations of its marks in Canada and due to the fact that Respondent registered a domain name which incorporated the famous trademark of a well-known company. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds by inference that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the DISCOVER mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <discoverycreditcard.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 1, 2013
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