Discover Financial Services v. fdis commercial a/k/a chris sigfrid
Claim Number: FA1211001473779
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is fdis commercial a/k/a chris sigfrid (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <visamastercarddiscover.com>, registered with Fastdomain, Inc.
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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2012; the National Arbitration Forum received payment on December 3, 2012.
On December 3, 2012, Fastdomain, Inc. confirmed by e-mail to the National Arbitration Forum that the <visamastercarddiscover.com> domain name is registered with Fastdomain, Inc. and that Respondent is the current registrant of the name. Fastdomain, Inc. has verified that Respondent is bound by the Fastdomain, 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 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@visamastercarddiscover.com. Also on December 5, 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.
A timely Response was received and determined to be complete on December 25, 2012.
A timely Additional Submission from Complainant was received and determined to be complete on December 31, 2012.
On January 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
· Complainant, Discover Financial Services, claims that it is the owner of the DISCOVER mark with the United States Patent and Trademark Office vide Reg. No.1,479,946 and 2743341 registered on Mar. 8, 1988 and July 29, 2003 respectively (Exhibit-C). Complainant claims to be a leading credit card issuer and electronic payment services company with a highly recognizable brand in financial services with the mark DISCOVER.
· Complaint contends that the Respondent has registered the disputed domain name on March 8, 2012, having full knowledge of Complainant’s famous marks, and with the intention to profit from using the DISCOVER marks.
· Complainant contends that the Respondent uses the disputed domain name in conjunction with a pay-per-click advertising scheme which features advertisements for Complainant’s direct competitors (Exhibit D).
· Complainant states in the complaint that it has not given Respondent any license, permission or authorization to use of any of its marks.
Contentions of the Complainant regarding Identical and/or Confusingly Similar:
· Respondent’s <visamastercarddiscover.com> domain name is nearly identical and confusingly similar to the DISCOVER mark as it fully incorporates the DISCOVER mark while adding the trademarks of Complainant’s direct competitors, “Visa” and “MasterCard.”
Contentions of the Complainant regarding Rights or Legitimate Interests :
· Respondent has never been commonly known as “VisaMasterCardDiscover.com” and has never used any trademark or service mark similar to the disputed domain name by which Respondent has come to be known. Complainant has not granted any license, permission, or authorization by which Respondent could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks.
· Respondent’s <visamastercarddiscover.com> domain name resolves to a parked web page containing various links to financial services, many of which are direct competitors of Complainant. Respondent has never operated any bona fide or legitimate business under the disputed domain name and has not made a protected non-commercial or fair use of the disputed domain name.
Contentions of the Complainant regarding Registration and Use in Bad Faith :
· Respondent’s use of the <visamastercarddiscover.com> domain name to advertise links to related products and services constitutes bad faith registration and use under Policy 4(b)(iii).
· Further, the disputed domain name has been put to use to intentionally attract, for commercial gain, Internet users to Respondent’s website or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website that it uses for a pay-per-click advertising scheme.
B. Respondent
Respondent in his response dated December 25, 2012 stated the following : -
· With regard to Complaint’s contentions on Identical and/or Confusingly Similar, Respondent has stated that Complainant has the exact same rights as Visa and Master Card.
· With regard to Complainant’s contentions on rights or legitimate interests in the disputed domain name, the Respondent has stated that it does not have rights in disputed domain name [sic]. It has never claimed or asserted any rights in the disputed domain name. Respondent claims that the disputed domain name has been registered and held on behalf of the rightful owner.
· The disputed domain name has never been assigned or used by Respondent in any commercial enterprise, nor would it, while in Respondent’s care.
· Respondent has never been known by the disputed domain name.
· Respondent has not, nor will it use domain in any form.
· With regard to Complainant’s contentions on bad faith registration and use, the Respondent has stated that it not acquired the disputed domain name primarily for the purpose of selling it to Complainant, “with the exception of Complainants indemnification of Respondent.
· Respondent states that it did not register the domain name in bad faith under Policy 4(b)(ii)–(iv).
C. Additional Submissions
Complainant :
Complainant in its additional submissions has inter-alia, contended the following :
· Complainant is not a part of an “association” formed on behalf of Visa, MasterCard, and Discover.
· Respondent has claimed that it has registered the disputed domain name “on behalf of the rightful owner,” and “on behalf of the association, Visa, Master Card [sic] and Discover.” The MasterCard and Visa have consented to the filing of the present Complaint but there is no association. The claim of the Respondent with regard to have registered the disputed domain name, also on behalf of “association”, is false.
· Respondent has no rights in the mark DISCOVER. Respondent has also admitted that it has no rights in the disputed domain name.
· Respondent’s argument that it never used the disputed domain name for commercial use is a false. Respondent’s prior use of the disputed domain name demonstrates that Respondent did in fact use the disputed domain name commercially. Complainant asserts that the Respondent has used the disputed domain name in connection with pay-per-click advertisements for credit cards.
· Respondent’s request for indemnification indicates that it had no authorization to register the disputed domain name and further establishes Respondent’s bad faith use and registration.
Respondent :
The Respondent in its Additional Submissions has inter-alia, stated the following : -
· The Respondent’s only action was to register the domain.
· The Respondent denies the contention of the Complainant that the Respondent uses the disputed domain name in conjunction with a pay-per-click advertising scheme which features advertisements for Complainant’s direct competitors. Respondent claims that it has never engaged in pay per click, on any website.
· The Respondent contends that the disputed domain name was never in use and it has never demanded indemnification.
· The Respondent contends that the disputed domain name would be happily transferred to the court for safe keeping until the rightful owner is determined. Respondent alleges that until the rightful owner is determined, the disputed domain name be transferred to significant third, prior to expiration of its registration in March 2013.
· The Panel observes that the Complainant is a leading credit card issuer and electronic payment services company with a highly recognizable brand in financial services. It is the owner of the DISCOVER marks with the USPTO vide Reg. No.1,479,946 dated Mar. 8, 1988 and Reg. No.2743341 dated July 29, 2003.
· The Panel further observes that the Respondent has admitted that it neither has any rights in the disputed domain name nor has it ever claimed or asserted to have any rights in the said domain name.
· The Panel also observes that the Respondent has registered the disputed domain name <visamastercarddiscover.com> on March 8, 2012. The Panel observes that the Respondent has not furnished any evidence of any kind for showing any permission or authorization by the Complainant in its favour for using the mark(s) of the Complainant for any of its activities. The Respondent in its response has admitted that it has not obtained any license, permission or authorization to use its mark(s) in the disputed domain name.
· The Panel finds that the Respondent has no rights or legitimate interests in relation to the domain name. Neither the so-called rightful owner is known nor the Respondent has disclosed any reason or justification for registration of the disputed domain name for an unknown rightful owner. The registration of the disputed domain name, as pointed out hereinbelow, would deserve to be cancelled.
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.
· The Panel observes that the Complainant, Discover Financial Services, claims that it is the owner of the DISCOVER mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,479,946 registered Mar. 8, 1988) (Exhibit-C). Complainant claims that it is a leading credit card issuer and electronic payment services company with a highly recognizable brand in financial services. The Panel notes that both of the trademark registration certificates submitted by Complainant identify an owner of record different from Discover Financial Services, and Complainant has not submitted any assignment of record or other documentation to show that it is, in fact, the owner of the marks presented to the Panel. The Panel finds that Complainant has established rights in the DISCOVER mark under Policy 4(a)(i). The Panel in this regard relies upon the decision of this Forum in Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) – holding that “Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
· The Panel notes that the Complainant claims that the Respondent’s disputed domain name <visamastercarddiscover.com> is nearly identical and confusingly similar to the DISCOVER mark, as it fully incorporates its DISCOVER mark while adding the trademarks of Complainant’s direct competitors, “Visa” and “MasterCard.” The Panel also notes that the disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that prior UDRP panels have held that where a domain name combines several trademarks, a party bringing the UDRP claim can proceed so long as it has rights in one of the marks within the domain name at issue. In this regard, the Panel finds the following decisions of this Forum to be relevant : -
(i) G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) – holding that “Complainant has the right to protect its trademark whether standing alone, or included in a string of industry-related marks. Respondent’s inclusion of other drug-related marks [in the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name] only increases the likelihood that confusion will result from use of the domain name.”).
(ii) G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”);
(iii) Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy 4(a)(i) analysis).
· Therefore, the Panel finds that the <visamastercarddiscover.com> domain name is confusingly similar to Complainant’s DISCOVER mark under Policy 4(a)(i).
· The Panel is reminded 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. In this regard following decisions of this Forum are cited :
(i) 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;
(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) holding that “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 observes that the Respondent has not raised any contention under the Policy, but instead disclaims that it itself has any rights or interests in the disputed domain name. Instead Respondent has claimed that it has registered the disputed domain name on behalf of another party who may or may not have rights in the disputed domain name. Hence, the Panel finds that Respondent has not come forth with any evidence supporting such a claim and has not presented any arguments under Policy 4(a)(ii).
· The Panel observes that the Complainant asserts in the Complaint that the Respondent has never been commonly known as “VisaMasterCardDiscover.com” and has never used any trademark or service mark similar to the disputed domain name. Further, the Complainant has contended, and it has also been admitted by the Respondent in its response, that it has not granted any license, permission, or authorization by which Respondent could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks. Further, the Complainant in its Additional Submissions has averred that the Respondent has denied of having any rights in the disputed domain name. The Panel observes that the WHOIS information identifies “fdis commercial / chris sigfrid” as the registrant and that Respondent has also not claimed that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii). In this regard, the Panel relies upon the decision of this Forum in Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) - holding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
· The Panel further observes that the Complainant has contended in the complaint that Respondent’s disputed domain name <visamastercarddiscover.com> resolves to a parked web page containing various links to financial services, many of which are direct competitors of Complainant (Exhibit D). The Complainant has further contended that the Respondent has never operated any bona fide or legitimate business under the disputed domain name and has not made a protected non-commercial or fair use of the disputed domain name. Within its Additional Submission, Complainant asserts that Respondent’s argument that it never used the disputed domain name for commercial use is a false claim. The Complainant has also claimed that Respondent’s prior use of the disputed domain name demonstrates that Respondent did, in fact, use the disputed domain name commercially as Respondent has used the disputed domain name in connection with pay-per-click advertisements for credit cards. The Panel observes that Complainant’s evidence of the resolving website shows various third-party links to domain names such as <americanexpress.com>, <citicards.com>, and <capitalone.com>, among others, which are the competitors of Complainant and therefore, the Panel finds that Respondent’s use of the disputed domain name <visamastercarddiscover.com> was / is not a bona fide for offering of goods or services under Policy 4(c)(i) or a legitimate non-commercial or fair use under Policy 4(c)(iii). The Panel, in this regard, relies upon the decision of this Forum in United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) – holding that “The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be 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 Panel notes that the Complainant contends that Respondent’s use of the disputed domain name <visamastercarddiscover.com> to advertise links to related products and services constitutes bad faith registration and use under Policy 4(b)(iii). As noted above, Complainant claims that Respondent, despite its arguments otherwise, has used the domain name commercially by parking it and that directing Internet users to Complainant’s competitors is disruptive to Complainant’s business. The Panel agrees with this submission of the Complainant and finds that the Respondent has registered and is using the disputed domain name in bad faith under Policy 4(b)(iii). In this regard, the Panel relies upon the decision of this Forum in Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) – holding that “Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy 4(b)(iii).”
· The Panel further observes that the Complainant has contended that the disputed domain name has been put to use to intentionally attract, for commercial gain, Internet users to Respondent’s website or other online locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website that Respondent uses for a pay-per-click advertising scheme. The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under Policy 4(b)(iv). The Panel in this regard relies upon the decision of this Forum in - TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) holding that - “Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”
· The Panel, therefore, finds that the Respondent has registered and is using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. However, the question which would require consideration is whether the relief of transfer of disputed domain name to the complainant, as claimed would deserve to be granted or not in the facts and circumstances of the present case.
The Complainant, except for the statement made in the additional submissions that Master Card and Visa has consented for the complaint, there is no averment in the complaint of showing any relationship between the Complainant, Master Card and Visa. Besides the word “DISCOVER”, in the disputed domain name the other prominent words are “Master Card” as well as “Visa”. Even when the Complainant would deserve to be suitably protected with regard to the word “DISCOVER”, it would not be justified in claiming the transfer of the disputed domain name in its favour and when the disputed domain name also contains the above-mentioned well-known words “Master Card” and “Visa” with which the Complainant has no right or relation whatsoever.
Under these circumstances, it is Ordered that the registration of the disputed domain name <visamastercarddiscover.com> be CANCELLED.
(MANINDER SINGH)
Panelist
Dated: 18.01.2013
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