Discover Financial Services v. M Haseeb Taqi
Claim Number: FA1409001580428
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is M Haseeb Taqi (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discover-credit-card.com>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2014; the National Arbitration Forum received payment on September 19, 2014.
On September 18, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <discover-credit-card.com> 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 September 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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@discover-credit-card.com. Also on September 22, 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 October 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant owns the DISCOVER mark via trademark registrations through the USPTO and Pakistan’s Trade Mark Registry. Complainant uses the DISCOVER mark in connection with financial services, including credit card and banking services.
2. The <discover-credit-card.com> domain name is confusingly similar to the DISCOVER mark as the phrase “credit card” relates to Complainant’s services, and gTLDs and hyphens serve no distinguishing value.
3. Respondent lacks rights in the disputed domain name. Respondent has never been known by the <discover-credit-card.com> name.
4. Respondent is not using the disputed domain name for a bona fide offering, or for a legitimate noncommercial of fair use. The <discover-credit-card.com> domain name resolves to a page offering general information about credit cards and features advertisements for financial services.
5. Further, the fact that Respondent has listed the <discover-credit-card.com> for sale in the amount of $50,000 indicates a lack of legitimate interest.
6. Respondent’s willingness to sell the disputed domain name for $50,000, an amount well in excess of out-of-pocket costs, establishes Policy ¶ 4(b)(i) bad faith.
7. Further, Respondent is in violation of Policy ¶ 4(b)(iv) as the <discover-credit-card.com> name resolves to a page featuring information and advertisements relating to financial services, from which Respondent likely profits.
8. Lastly, Respondent registered the disputed domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in the mark as evidenced by the use of the name in connection with the term “credit card” in the domain name, and the promotion of services related to Complainant on the resolving page.
9. The disputed domain name was registered July 11, 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the DISCOVER mark. Respondent’s domain name is confusingly similar to Complainant’s DISCOVER mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <discover-credit-card.com> domain name, and that Respondent registered and uses the domain name 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 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 uses the DISCOVER mark in connection with financial services, including credit card and banking services. Complainant holds trademark registrations for the DISCOVER mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,479,946 registered Mar. 8, 1988), and with Pakistan’s Trade Mark Registry (Reg. No. 193,892 registered Apr. 19, 2004). Complainant’s valid trademark registrations with the USPTO and Pakistan’s Trade Mark Registry sufficiently establish Complainant’s rights in the DISCOVER mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant argues the <discover-credit-card.com> domain name is confusingly similar to the DISCOVER mark as the phrase “credit card” relates to Complainant’s services, and generic top-level domains (“gTLD”) and hyphens serve no distinguishing value. The Panel agrees. See Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013) (stating that, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy” and a hyphen).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights in the disputed domain name. First, Complainant claims Respondent has never been known by the <discover-credit-card.com> name. The WHOIS record identifies “M Haseeb Taqi” as registrant of the disputed domain name. As Respondent has failed to add any evidence indicating otherwise, the Panel agrees that the record lacks any indication that Respondent is commonly known by the <discover-credit-card.com> name. Policy ¶ 4(c)(ii) is satisfied.
Complainant next argues that Respondent is not using the disputed domain name for a bona fide offering, or for a legitimate noncommercial of fair use. Complainant explains that the <discover-credit-card.com> domain name resolves to a page offering general information about credit cards and features advertisements for financial services. The domain name resolves to promote content and links relating to credit cards and card providers such as “Capital One Credit Cards,” and “CompareCards.com.” The advertisement of competing services under a confusingly similar domain name does not amount to a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did not represent 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)).
Further, Complainant argues that Respondent’s listing of the <discover-credit-card.com> for sale in the amount of $50,000 indicates a lack of legitimate interest. In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel held that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name. The offer to sell this <discover-credit-card.com> for sale in the amount of $50,000 is disproportionate, and therefore demonstrative that Respondent enjoys no rights or legitimate interests in the disputed domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s willingness to sell the disputed domain name for $50,000, an amount well in excess of out-of-pocket costs, shows Policy ¶ 4(b)(i) bad faith. In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel concluded that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name. Respondent’s $50,000 offer is illustrative of Policy ¶ 4(b)(i) bad faith.
Further, Complainant argues Respondent is in violation of Policy ¶ 4(b)(iv) as the <discover-credit-card.com> name resolves to a page featuring information and advertisements relating to financial services, from which Respondent likely profits. In Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel found that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant. As Complainant has provided evidence that Respondent promotes competing credit card providers at its resolving page, the Panel infers that Respondent likely generates revenue from the advertisements, and therefore finds evidence of bad faith use and registration pursuant to Policy ¶ 4(a)(i).
Lastly, Complainant argues Respondent registered the disputed domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in the mark as evidenced by the use of the name in connection with the term “credit card” in the domain name, and the promotion of services related to Complainant on the resolving page. In Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), the panel wrote, “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” Accordingly, the Panel concludes that Respondent had actual knowledge of Complainant’s rights.
The Panel finds Complainant has satisfied 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 <discover-credit-card.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 24, 2014
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