Discover Financial Services v. domain admin / Global Access
Claim Number: FA1407001568148
Complainant is Discover Financial Services (“Complainant”), represented by Richard S. Mandel of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is domain admin / Global Access (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discovercards.com> and <discovercredit.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 2, 2014; the National Arbitration Forum received payment July 2, 2014.
On July 2, 2014, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <discovercards.com> and <discovercredit.com> domain names are registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the names. FABULOUS.COM PTY LTD. verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2014, 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@discovercards.com, postmaster@discovercredit.com. Also on July 9, 2014, 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 August 1, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
i. Complainant, Discover Financial Services, has been using the DISCOVER trademark in commerce since 1985 in connection with credit card products.
ii. Complainant has a valid trademark registration with the United States Patent and Trademark Office (“USPTO”) for the DISCOVER
iii. The disputed domain names are confusingly similar to the mark in which Complainant has rights.
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent is using the disputed domain name to link potential Complainant customers to direct competitors of Complainant.
i. Respondent has engaged in an ongoing pattern of registering domain names in bad faith.
ii. Respondent is using the disputed domain names for commercial gain by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and for offering services for sale that consumers could assume were being offered by Complainant.
iii. Respondent had actual knowledge of Complainant’s rights in the mark before registering the disputed domain names.
Complainant established that it has legal rights to the DISCOVER trademark.
Respondent has no such rights or legitimate interests in Complainant’s protected mark.
The disputed domain names are confusingly similar to Complainant’s protected mark.
Respondent registered and used Complainant’s mark in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant, Discover Financial Services, has been using the DISCOVER trademark in commerce since 1985 in connection with credit card products. Additionally, Complainant asserts that it has a valid trademark registration with the USPTO for the DISCOVER mark (Reg. No. 1,746,063, registered June 12, 1993). See Compl. at Attached Ex. C. The Panel notes that Respondent does not reside in the United States, however, this is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register it’s mark in the country in which Respondent operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that Complainant’s valid registration for the DISCOVER mark with the USPTO shows that it has rights in the mark pursuant to 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.”).
Complainant contends that the disputed domain names are confusingly similar to Complainant’s mark. The Panel observes that the disputed domain names <discovercards.com> and <discovercredit.com> encompass the entirety of Complainant’s mark, with the additions of descriptive words, “cards” and “credit,” respectively, and addition of the generic top-level domain (“gTLD”) to the mark. The Panel notes that addition of descriptive words to a trademark does not distinguish the mark to the degree that it prevents a finding of confusing similarity. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Moreover, the Panel further notes that addition of a gTLD does not adequately distinguish the disputed domain names from Complainant’s mark. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Accordingly, the Panel finds that the disputed domain names <discovercards.com> and <discovercredit.com> are confusingly similar to that mark in which Complainant has rights.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 such 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.”).
Complainant argues that Respondent is not commonly known by the disputed domain name. The Panel notes that the registrant of the disputed domain names is listed as “domain admin”. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) the panel found 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 no other evidence in the record suggested that the respondent was commonly known by the domain names in dispute. Here, the circumstances are comparable; the only information available to the Panel is that listed in the WHOIS registry given Respondent’s default. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant urges that Respondent is using the disputed domain names to link Complainant’s potential customers with direct competitors of Complainant. The Panel observes that both disputed domain names resolve to webpages that feature links to either services that compete directly with Complainant or products that complete directly with Complainant’s products. See Compl. Attached Exs. D, G. The Panel notes that redirecting Internet users to products or services that compete directly with a Complainant 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 Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Accordingly, the Panel finds that Respondent is not using the disputed domain names for 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant claims that Respondent has engaged in an ongoing pattern of registering domain names in bad faith. Complainant alleges that Respondent has been involved in numerous prior decisions that held that Respondent had registered and was using domain names in bad faith. See, e.g., Orbitz Worldwide v. Global Access, FA 1536870 (Nat. Arb. Forum Feb. 5, 2014 This Panel agrees that Respondent has engaged in an ongoing pattern of registering and using domain names in bad faith, and finds this evidence to support findings of bad faith under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant submits that Respondent is using the disputed domain names for commercial gain by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and by offering services that consumers could assume were being offered by Complainant. The Panel recalls that the disputed domain names resolve to web pages that redirect Internet users to services that compete with Complainant or to products that compete with Complainant’s products. See Compl. Attached Exs. D, G. Complainant presumes that Respondent is compensated for featuring these links. The Panel finds that Respondent is relying on confusion or mistake to suggest an affiliation between Complainant and the disputed domain names, and that Respondent likely profits from the resulting confusion. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel therefore finds that this evidence also supports findings of bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that given the fame and notoriety of Complainant's DISCOVER mark, it is inconceivable that Respondent could have registered the <discovercards.com> and <discovercredit.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, because bad faith as a general rule does is not found where only constructive notice was given. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agree with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name given the well-known nature of Complainant’s marks and Respondent’s use. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights before registering and using the disputed domain names. This conduct also supports findings of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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 <discovercards.com> and <discovercredit.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 15, 2014.
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