Discover Financial Services v. Zion Marketing, LLC / Michael Long
Claim Number: FA1304001493283
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Zion Marketing, LLC / Michael Long (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discoverthecard.net> and <discoverthecard.org>, registered with eNom, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2013; the National Arbitration Forum received payment on April 8, 2013.
On April 8, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <discoverthecard.net> and <discoverthecard.org> 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 April 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 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@discoverthecard.net and postmaster@discoverthecard.org. Also on April 10, 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 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
a. The disputed domain name is confusingly similar to a mark in which Complainant has rights.
i. Complainant owns federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DISCOVER service mark (e.g., Reg. No. 2,743,341 registered July 29, 2003).
ii. Respondent registered the <discoverthecard.net> and <discoverthecard.org> domain names on March 26, 2012.
iii. The only difference between Complainant’s mark and the disputed domain names are the addition of the word “the” as well as the generic term “card.”
b. Respondent has no rights or legitimate interests in the disputed domain names.
i. Respondent has not been commonly known by the disputed domain names, and Complainant has not granted Respondent any authorization to use its DISCOVER mark.
ii. The disputed domain names resolved to parked web pages containing links to financial services, many of which were direct competitors of Complainant, and did not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names.
c. Respondent registered and is using the disputed domain names in bad faith.
i. Respondent’s use of the disputed domain names to advertise links to related products disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii).
ii. Respondent is using the disputed domain names to intentionally attract Internet users to Respondent’s website for commercial gain.
iii. Respondent had actual or constructive notice of Complainant’s rights in the DISCOVER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Discover Financial Services who list its address as Riverwoods, IL, USA. Complainant owns a USA registration for the mark DISCOVER which covers various services related to the financial industry such as banking and loan services and credit card services. Complainant has thousands of employees worldwide and its goods and services are advertised, promoted and sold on a global basis.
Respondent is Zion Marketing, LLC/Michael Long who address is listed as Roseville, CA, USA. Respondent’s registrar’s address is not listed. Respondent registered the disputed domain names on March 26, 2012.
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 claims rights in the DISCOVER service mark based on its registration of the mark (e.g., Reg. No. 2,743,341 registered July 29, 2003) with the USPTO. See Complainant’s Exhibit C. The Panel notes that previous panels have found that a complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). The Panel finds that Complainant has established rights under ¶ 4(a)(i) in the DISCOVER mark.
Complainant claims that the <discoverthecard.net> and <discoverthecard.org> domain names are confusingly similar to its DISCOVER mark. The Panel notes that each of the disputed domain names include the addition of the gTLD “.net” and “.org,” respectively. Complainant argues that the only difference between the disputed domain names and Complainant’s mark is the addition of the word “the” and the generic term “card,” which is descriptive of Complainant’s products. The Panel notes that past panels have found similar additions to be insufficient to distinguish a domain name from a mark under the Policy. 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 Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also See 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). The Panel finds that the <discoverthecard.net> and <discoverthecard.org> domain names are confusingly similar to the DISCOVER mark for the purposes of Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant argues that Respondent has not been commonly known by the disputed domain names and has therefore not demonstrated rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). The Panel notes that the WHOIS information identifies “Zion Marketing, LLC / Michael Long” as the registrant of both disputed domain names. Complainant also asserts that it is not affiliated with Respondent and has not authorized Respondent to use the DISCOVER mark. The Panel notes that past panels have found nominally unsupportive WHOIS information and a lack of authorization to be strong evidence that a respondent is not commonly known by a disputed domain name. 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). The Panel finds that Respondent is not commonly known by the disputed domain names and has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
Complainant also contends that, prior to Complainant’s demand letter, Respondent was using the disputed domain names to redirect users to web pages featuring generic links to third-party websites, some of which compete with Complainant’s business. See Complainant’s Exhibit D. Complainant claims that Respondent’s prior use of the disputed domain names does not demonstrate a connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). Past panels have found that the display of competing hyperlinks on a resolving website does not demonstrate a bona fide offering or a legitimate noncommercial or fair use of a disputed domain name. The Panel finds that Respondent has not demonstrated rights or legitimate interests under Policy ¶¶ 4(c)(i) or 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that the disputed domain names resolved to websites which contain links promoting products that compete with Complainant’s business. See Complainant Exhibit D. Complainant claims this disrupts its business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). The Panel notes that previous panels have found the display of competing links to constitute disruption 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).”). The Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent likely receives revenue when misdirected Internet users click these links and that Respondent is intentionally using domain names confusingly similar to Complainant’s DISCOVER mark in order to attract users to its website. Complainant argues that this demonstrates bad faith under Policy ¶ 4(b)(iv). The Panel finds that such behavior by Respondent demonstrates bad faith registration and use pursuant to 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <discoverthecard.net> and <discoverthecard.org> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 21, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page