Discover Financial Services v. CS Squeri
Claim Number: FA1510001641121
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is CS Squeri (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discovercardreviews-consumer.com> and <discovercardreviewsconsumer.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. O’Connor as Panelist.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the Forum electronically on October 6, 2015; the Forum received payment on October 7, 2015.
On October 6, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <discovercardreviews-consumer.com> and <discovercardreviewsconsumer.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 the Policy.
On October 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2015 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@discovercardreviews-consumer.com, postmaster@discovercardreviewsconsumer.com. Also on October 7, 2015, 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 October 26, 2015.
A timely Additional Submission by Complainant was received and determined to be complete on November 3, 2015.
On November 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. O’Connor as Panelist.
A timely Additional Submission by Respondent was received and determined to be complete on November 6, 2015.
Another Additional Submission by Respondent was received on November 12, 2015.
Another Additional Submission by Complainant was received on November 12, 2015.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of 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 names at issue (the “Domain Names”) be transferred from Respondent to Complainant.
A. Complainant
Complainant Discover Financial Services ("Discover") is the owner of the longstanding DISCOVER trademark, U.S. Reg. No. 2,743,341, registered March 8, 1988, covering goods and services relating to the "sale and usage of credit card accounts, debit card accounts, smart card accounts, and other payment access devices," whose registration predates the registration of the Domain Names.
Due to the extensive, longstanding use of the DISCOVER trademark, past panels have found the trademark to be famous and distinctive, e.g., Discover Financial Services Corp. v. Bruce Kaye, Systems Consultant / Bruce Kaye, FA1112001418455 (Nat. Arb. Forum Jan. 26, 2012) ("This Panel concludes that Complainant's trademark DISCOVER is famous and distinctive through longstanding use.").
Respondent registered the Domain Names on June 16, 2015, with full knowledge of the DISCOVER trademark and with the intent to profit from using that trademark, The Domain Name <discovercardreviewsconsumer.com> resolves to a passive holding page. The Domain Name <discovercardreviewsconsumer.com> resolves to a website purportedly to be for a law firm in Cincinnati, Ohio discussing representation of clients in class action lawsuits.
The website features three alleged lawyers: Sean Jones, Mark Stanley and Cicily Andrews. On further investigation, those same lawyers' names but with different photos are featured on at least four other websites at <de-odio-et-atia.com>, <jcelectricdance.com>, <Iivethewrightway.com> and <gerlawfirm.com/attorneys-1.html>.
Based on its investigations, Complainant believes that these are not actual licensed lawyers and there is no actual law firm using the Domain Names.
Complainant has not given Respondent any license, permission, or authorization by which Respondent could make any use of any of its marks.
The Domain Names are confusingly similar to the DISCOVER trademark because they fully incorporate that trademark, adding only the addition of the top-level domain ".com" and the descriptive terms "card" (a product-specific term), "consumer" and "reviews." Such additions to registered trademarks of complainants do not make the disputed domains any less confusingly similar.
Respondent lacks rights or legitimate interest in the Domain Names and is not making legitimate noncommercial or fair use.
Respondent has never been commonly known by either Domain Name and has never used any trademark or service mark similar to the Domain Names by which it may have come to be known, other than the infringing use noted herein. Rather, Respondent identifies itself as "CS Squeri" with an email address of ccrnhomes@gmail.com in the WHOIS information; and the website to which the Domain Name <discovercardreviews-consumer.com> resolves does not provide a name for the law firm, only a description of its legal services and the names of three lawyers.
Moreover, Respondent is using the latter Domain Name to attract Internet users to its commercial website, purporting to be a law firm, for Respondent's commercial gain.
Likewise, the passive use of a "coming soon" placard on the former Domain Name <discovercardreviewsconsumer.com> does not evidence Respondent is making a bona fide offering of goods or services or a legitimate noncommercial or fair use.
At the time of registration of the Domain Names, Respondent had actual knowledge of the DISCOVER trademark as evidenced by Respondent's use of the trademark in conjunction with the industry relevant (and product-specific) "card," Respondent's reference on its website to DISCOVER products and services, and the use of Complainant's logo. Further, Respondent had at least constructive knowledge of the DISCOVER trademark based on Complainant's registration of that trademark in the United States. Had Respondent done a trademark search or domain name search prior to registration of the Domain Names, Respondent would have seen the DISCOVER trademark. Further, due to Complainant's degree of global and national fame and notoriety, Respondent could not possibly have registered the Domain Names in good faith.
Respondent is using the Domain Name <discovercardreviews-consumer.com> to attract consumers to a commercial website to attract clients for a purported class action lawsuit brought by nonexistent lawyers; and thus is using that Domain Name in bad faith.
Respondent is not making any use of the Domain Name <discovercardreviewsconsumer.com> which resolves to a passive holding page. The passive holding of a website evidences bad faith registration and use.
Nor is Respondent using the Domain Names for any legitimate free speech purposes or offering consumer reviews of DISCOVER products or services, contrary to what the Domain Names suggest.
Based on the worldwide reputation of the DISCOVER trademark, Respondent could not possibly use the Domain Names in a manner that could avoid Internet confusion.
B. Respondent
Our website is meant for commentary purposes from customers of Discover Credit Cards and their consumer comments in regards to services.
Consumer Review Websites act as public forums, and are legally
protected from liability for the content by Section 230 of the
Communications Decency Act
<https://en.wikipedia.org/wiki/Section_230_of_the_Communications_Decency
_Act> (CDA).
C. Additional Submissions - First
Complainant
Respondent disingenuously claims only that its “website is meant for commentary purposes from customers of Discover Credit Cards and their consumer comments in regards to services.” This is demonstrably not true.
Respondent uses the Domain Name <discovercardreviewsconsumer.com> to resolve to a passive holding page and the Domain Name <discovercardreviews-consumer.com> to resolve to a website for a nonexistent law firm in Cincinnati, Ohio. Respondent does not substantiate the existence or credentials of the lawyers at its purported law firm. Respondent’s use, therefore, is not in connection with commentary, criticism or complaints. Rather, Respondent is using another’s trademark to solicit and attract business.
Moreover, Respondent’s reliance on Section 230(c) of the Communications Decency Act, 47 U.S.C. § 230(c) (2012), is misplaced because it does not excuse the registration and use of domain names in violation of the Policy. In short, Section 230(c) provides a safe harbor for Internet intermediaries against civil liability based on the actions of third parties while using the services of those Internet intermediaries. Respondent’s websites, however, do not allow third parties to post any content, a necessary predicate for invoking the safe harbor protection—the only actions or speech at issue are those of Respondent.
Respondent
Our website is meant for commentary purposes from customers of Discover Credit Cards and their consumer comments in regards to services.
Please review our site today, your browser might be showing old information that was hard coded into the GoDaddy website we purchased. We do not have a lawyer or legal team that we are referring the consumers to. Our site is a public forum that also informs consumers of the latest legal information regarding Credit Card injustices.
Consumer Review Websites - “act as public forums, and are legally protected from liability for the content by Section 230 of the Communications Decency Act (CDA).”
D. Additional Submissions – Second[1]
Respondent
The Complaint should have been filed against the actual owner, Arches Fine Arts, LLC.
Complainant
Past UDRP panels have found that changing content after the commencement of a UDRP proceeding cannot undo past bad faith use.
Past UDRP panels have found that a respondent is ultimately responsible for the content of its website associated with a domain name in dispute. Respondent is responsible for the content of any website using the Domain Names, and cannot pass that responsibility off to its registrar or domain name service provider.
Under Supplemental Rule 1(d), the proper Respondent is the registrant as it appears in the WHOIS record at the time of filing.
FINDINGS
Complainant has registered the DISCOVER trademark with the USPTO (e.g., Reg. No. 2,743,341, registered July 29, 2003). The trademark is used in connection with the sale of credit card accounts, debit card accounts, and other related financial services. Registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy paragraph 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.”).
For the reasons to be discussed, the Panel will not make any determination of whether or not the DISCOVER trademark is a famous trademark.
The Domain Names were registered or acquired by Respondent on June 16, 2015, and were owned by Respondent when the Complaint was filed.
The Domain Name <discovercardreviewsconsumer.com> has not been used by Respondent, and resolves to a “website coming soon!” parking page.
The Domain Name <discovercardreviews-consumer.com>, prior to filing of the Complaint, resolved to a “Class Action Lawsuit” web site. At the present, that Domain Name resolves to a commentary web site regarding credit cards identified by the DISCOVER 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.
The Domain Names contain the entire DISCOVER trademark and make only minor alterations, including a hyphen and the gTLD “.com.” As a general rule, making punctuation-related alterations (such as adding a hyphen) or adding the gTLD “.com” will not distinguish a domain name from the trademark at issue. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered trademark is an insubstantial change. Both the trademark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Other alterations in the Domain Names consist of the addition of the words “card,” “reviews,” and “consumer”. These words are generic and commonly used in the business of credit card accounts for which Complainant has acquired rights in the DISCOVER trademark. Prior panels have found confusing similarity where the domain name at issue contain the entire trademark and added descriptive terms. 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 trademark and merely adding the term “credit” were confusingly similar to the complainant’s trademark).
The Panel finds that the Domain Names are confusingly similar to the DISCOVER trademark.
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy/
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s 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 and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 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 paragraph 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.”).
Regarding paragraph 4(c)(ii), Respondent is not commonly known by the Domain Names, and Respondent is not in possession of licensing rights that would allow it to use the DISCOVER trademark in domain names. The registrant of record is “CS Squeri.” Any unrecorded transfer of the Domain Names to another party is immaterial. The Panel notes, however, the the putative owner, Arches Fine Arts, LLC, also is not commonly known by the Domain Names. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy paragraph 4(c)(ii) based on the WHOIS information and other evidence in the record).
Regarding paragraph 4(c)(i) and 4(c)(iii), notice of this dispute occurred on filing of the Complaint.
At and subsequent to that time, there is no evidence of any use of the Domain Name <discovercardreviewsconsumer.com>. Failure to use a domain name cannot vest rights under Policy paragraphs 4(c)(i) or (iii) in the respondent. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). And such holds even though the Domain Name in this case is not identical to the DISCOVER trademark, because the associated generic terms in the Domain Name are commonly used in the business of credit card accounts.
The Domain Name <discovercardreviews-consumer.com> has been used by Respondent. Prior to filing of the Complaint, that Domain Name resolved to a website for an anonymous law firm, that features three fictitious lawyers having a physical address on the same street and with the same Zip code as that of Respondent. A page on that website states:
We’re dedicated to ensuring that we take care of all of our clients in a Class Action Lawsuit, and that your legal needs are met and exceeded. We offer high-quality legal work and personal client service…We fight for you!
This statement appears to be false. As pointed out in detail by Complainant, the fictitious lawyers do not exist and their names (with different pictures and bios) appear on other websites (e.g., <jcelectricdance.com>, a website under construction purporting to be for “JC’s Electric Dance Company, and <de-odio-et-atia.com/attorneys.html>, a website for an attorney “Howard Seidler D.D. , Esq.”).
The only reference to the DISCOVER trademark on the website is a copyright notice, “Copyright © Discover Card,” which is also false.
These lies make it clear to the Panel that Respondent is not engaged in either a bona fide or a fair use of the Domain Name <discovercardreviews-consumer.com>.
Complainant has thus established a prima facie case for the lack of Respondent’s rights and legitimate interests in the Domain Names.
Respondent defends by stating that it intends to use the Domain Names for commentary purposes by Complainant’s customers using credit cards bearing the DISCOVER trademark. There is no evidence to corroborate Respondent’s intent. All of the evidence is to the contrary – either nonuse, or, use with false statements as to an activity (class action lawsuits) that is unrelated to commentary. Even if Respondent had introduced corroborating evidence of its intent, Respondent still would not be able to establish rights or legitimate interests. This is so because both of the Domain Names are confusingly similar to the DISCOVER trademark. The user cannot infer from their wording that the Domain Names are being used for commentary – they could be for any use related to the credit cards identified by the DISCOVER trademark. While the right of a respondent to own and operate a criticism website may be protected by the First Amendment, such use cannot be found as legitimate under the Policy if the domain name is deemed confusingly similar under Policy paragraph 4(a)(i). See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that even though the establishment of a website containing criticism is protected by the First Amendment, such use of the <davidweekleyhome.com> domain name is not legitimate because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES trademark).
Respondent also defends by citing 47 U.S.C. § 230(c) (2012) as its protection for providing a public forum. First, Respondent provided no such forum prior to the filing of the Complaint. Second, this statute on its face does not apply to the actions of the primary providers of Internet content, but only to Internet service providers making that content available to Internet users.
Respondent further defends by stating that the content on its website was hard coded by the Registrar when Respondent purchased the Domain Name. That argument is not convincing, because respondents are responsible for the content on websites accessed by a domain name. See Netbooks, Inc. v. Lionheat Publ’g, FA1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”).
Finally, Respondent defends by citing its current use of the Domain Name <discovercardreviews-consumer.com> as a commentary website. This post-Complaint use is irrelevant, as pointed out by Complainant.
The Panel finds that Respondent has not overcome the prima facie case of Complainant.
The Panel finds that Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy.
The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.
Paragraph 4(b) of the Policy reads:
[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
In each of the circumstances listed in Policy paragraph 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the Domain Names in bad faith as provided under the Policy. And, the Respondent must have known or should have known of the DISCOVER trademark.
Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). A sufficient showing under Policy paragraph 4(a)(iii) requires more and must convince the Panel that the Respondent is in fact a cybersquatter.
Respondent states that its intent in registering the Domain Names was to provide commentary regarding credit cards identified with the DISCOVER trademark. Respondent thus admits that it knew of the DISCOVER trademark prior to registration of the Domain Names. The Panel thus does not need to determine whether or not the DISCOVER trademark is a famous trademark.
Regarding the Domain Name <discovercardreviews-consumer.com>, Respondent’s use is of a website that includes false statements as to fictional lawyers and lawsuits, none of which related to the DISCOVER trademark. Where a likelihood of confusion exists, and the respondent is attempting to profit or is profiting, bad faith under Policy paragraph 4(b)(iv) is present. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration under Policy paragraph 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
And such bad faith use, coupled with Respondent’s admitted knowledge of the DISCOVER trademark, also supports a finding of bad faith registration. See O2 Holdings Ltd. v. Sarang Hodjati, D2010-1887 (WIPO January 29, 2011)( “If the respondent’s use of the domain name is caught by paragraph 4(b)(iv) of the Policy, as the Panel has found to be the case, that bad faith use may provide sufficient evidence, in the absence of any evidence to the contrary, that the Domain Name was also registered in bad faith…”).
Regarding the Domain Name <discovercardreviewsconsumer.com>, there has been no use whatsoever. This failure to use for five months, coupled with Respondent’s knowledge of the DISCOVER trademark and Respondent’s bad faith use of the Domain Name <discovercardreviews-consumer.com>, are probative of both bad faith use and registration. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Respondent has made no specific defense to Complainant’s contentions of bad faith, other than that it intends to offer a commentary site. This defense must fail for the same reasons discussed by the Panel with regard to paragraph 4(a)(ii) of the Policy.
The Panel finds that Complainant has carried its burden of proof under paragraph 4(a)(iii) of the Policy.
DECISION
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <discovercardreviews-consumer.com> and <discovercardreviewsconsumer.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. O’Connor, Panelist
Dated: November 16, 2015
[1] The Panel has considered these Additional Submissions even though they are not provided for under the Rules or Supplemental Rules.
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