Discover Financial Services v. john doe
Claim Number: FA1303001490922
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is john doe (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discoverbusinesscreditcards.com>, <discoverbusinesscredit.com>, <discovercardcreditcard.com>, <discovercardstudent.com>, <discoverplatinumcards.com>, <discoverstudentcards.com>, <discoverstudentcredit.com>, <discoverstudentcreditcard.com>, and <samsclubdiscovercards.com>, registered with MONIKER.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2013; the National Arbitration Forum received payment on March 22, 2013.
On March 27, 2013, MONIKER confirmed by e-mail to the National Arbitration Forum that the <discoverbusinesscreditcards.com>, <discoverbusinesscredit.com>, <discovercardcreditcard.com>, <discovercardstudent.com>, <discoverplatinumcards.com>, <discoverstudentcards.com>, <discoverstudentcredit.com>, <discoverstudentcreditcard.com>, and <samsclubdiscovercards.com> domain names are registered with MONIKER and that Respondent is the current registrant of the name. MONIKER has verified that Respondent is bound by the MONIKER 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 April 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2013 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@discoverbusinesscreditcards.com, postmaster@discoverbusinesscredit.com, postmaster@discovercardcreditcard.com, postmaster@discovercardstudent.com, postmaster@discoverplatinumcards.com, postmaster@discoverstudentcards.com, postmaster@discoverstudentcredit.com, postmaster@discoverstudentcreditcard.com, and postmaster@samsclubdiscovercards.com. Also on April 16, 2013, 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 May 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in DISCOVER and alleges that the disputed domain names are confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides credit card and electronic payment services by reference to the trademark DISCOVER.
2. Complainant owns United States Trademark Reg. No. 2,743,341, registered July 29, 2003, for the trademark DISCOVER.
3. The disputed domain names were all registered in March 2012.
4. The domain names either resolve to web pages that feature links to third party providers of services competitive with those of Complainant, or redirect internet users to another site that has links to competitive financial services.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights in DISCOVER (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) holding that “Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
Panel is also satisfied that all of the disputed domain names are confusingly similar to Complainant’s trademark. Subtracting the non-distinctive gTLD, “.com”, (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), leaves the following terms for comparison with the trademark:
discoverbusinesscreditcards
discoverbusinesscredit
discovercardcreditcard
discovercardstudent
discoverplatinumcards
discoverstudentcards
discoverstudentcredit
discoverstudentcreditcard
samsclubdiscovercards
In all but one case, the term is a composition of the trademark plus two or more purely descriptive words of no source distinguishing value. In the single case of samsclubdiscovercards, the trademark still remains the dominant, distinctive element in the composite term. Each is confusingly similar to the trademark (see, for example, Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX trademark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of each disputed domain name.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also 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).
The publicly available WHOIS information identifies Respondent as “John Doe” and so there is no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that the domain names either divert, or resolve, to websites that carry links to the websites of third party competitors of Complainant. Panel finds that such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use (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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Panel finds that Complainant has in instance established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, those cases are not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy in respect of all domain names.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found all disputed domain names to be confusingly similar to Complainant’s trademark. Complainant submits evidence of screenshots of the web pages corresponding with the disputed domain names or, in one case, the diversionary webpage . Panel notes hyperlinks to various commercial websites offering services competitive with Complainant’s services. Panel accepts as more likely than not to be true Complainant’s allegation that Respondent receives revenue from the websites associated with the disputed domain names. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain names to attract, for commercial gain, internet users to Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark.
Panel finds bad faith use and registration in all cases.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of all disputed domain names.
Accordingly, it is Ordered that the <discoverbusinesscreditcards.com>, <discoverbusinesscredit.com>, <discovercardcreditcard.com>, <discovercardstudent.com>, <discoverplatinumcards.com>, <discoverstudentcards.com>, <discoverstudentcredit.com>, <discoverstudentcreditcard.com>, and <samsclubdiscovercards.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 23, 2013
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