Discover Financial Services v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1710001752963
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discover-loans.com> and <discoverloansreviews.com>, registered with Internet Domain Service BS Corp.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 9, 2017; the Forum received payment on October 10, 2017.
On October 11, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <discover-loans.com> and <discoverloansreviews.com> domain names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 October 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2017 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-loans.com, postmaster@discoverloansreviews.com. Also on October 12, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
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 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 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 contends as follows:
Complainant has thousands of employees and the products and services sold under the DISCOVER marks are advertised and promoted around the world. Complainant registered the DISCOVER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,479,946, registered Mar. 8, 1988), which demonstrates its rights in the mark.
Respondent’s <discover-loans.com> and <discoverloansreviews.com> domain names are confusingly similar to Complainant’s mark as they incorporate the DISCOVER mark in its entirety, add generic terms, and add the generic top-level domain (“gTLD”) “.com,” which do not meaningfully distinguish the domain name from Complainant’s registered mark.
Respondent has no rights or legitimate interests in <discover-loans.com> and <discoverloansreviews.com> domain names. There is no evidence in the WHOIS information to suggest that Respondent is known by the disputed domain names. Nor has Complainant authorized, permitted, or licensed Respondent to use the DISCOVER mark for any purpose. Further, the disputed domain names resolve to websites which are used to promote services that compete with Complainant. Moreover, Respondent appears to use the domain names to further a phishing scheme and obtain personal contact information from users.
Respondent registered and continues to use <discover-loans.com> and <discoverloansreviews.com> in bad faith. Respondent registered domain names confusingly similar to Complainant’s DISCOVER mark which resolve to websites promoting goods and services that compete with Complainant and trade off of Complainant’s reputation. Such use disrupts Complainant’s business and is demonstrative of bad faith. Further, Respondent appears to use the disputed domain names in furtherance of a phishing scheme to obtain personal identifying information from unsuspecting Internet users who are deceived by the confusing similarity of the domain names to Complainant’s famous and trusted DISCOVER mark. Finally, at the time of registering the domain names, Respondent had actual and/or constructive knowledge of Complainant’s DISCOVER mark as evidenced by Respondent’s use of the mark in conjunction with the industry relevant and product-specific generic term “loans.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DISCOVER mark through its registration of such mark with the USPTO, and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain names to address websites which are used to promote services that compete with Complainant and also uses the domain names to further a phishing scheme so that it might obtain personal information from visitors.
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(f), 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 (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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for DISCOVER demonstrates its rights in a mark for the purposes of Policy ¶4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Each at-issue domain name contains Complainant’s DISCOVER trademark followed by either the generic term “-loans” or “loansreviews.” Each domain name concludes with the top-level domain name “.com” appended to the second level string. However, the alterations to Complainant’s trademark are insufficient to distinguish either at-issue domain name from Complainant’s mark for the purposes of the Policy. In fact, the domain names’ inclusion of suggestive generic terms only adds to the confusion resulting from the presence of the DISCOVER trademark in the at-issue domain names. Therefore, the Panel finds that the <discover-loans.com> and <discoverloansreviews.com>domain names are each confusingly similar to Complainant’s trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either of the at-issue domain names.
WHOIS information for the at-issue domain names lists ““Domain Admin / Whois Privacy Corp” as the domain names’ registrant. There is nothing in the record that otherwise suggests Respondent is commonly known by either of Respondent’s domain names. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) … does not apply); see also, Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding 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 there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent uses the at-issue domain names to address websites which are used to promote services that compete with Complainant. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use).
Given the foregoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names.
The domain names were each registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding the <discover-loans.com> and <discoverloansreviews.com> domain names.
Respondent’s confusingly similar domain names create confusion among internet users primarily because the domain names each include Complainant’s trademark. On the website(s) addressed by the domain names Respondent offers links to Complainant’s competitors. These circumstances demonstrate bad faith registration and use of the <discover-loans.com> and <discoverloansreviews.com> domain names under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Furthermore, Respondent engages in a phishing scheme to obtain personal or financial information from unsuspecting visitors to the website(s) addressed by the at-issue domain names. Using a confusingly similar domain name to phish for personal or financial information shows bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Finally, Respondent had actual knowledge of Complainant’s rights in the DISCOVER mark when it registered the <discover-loans.com> and <discoverloansreviews.com> domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s DISCOVER trademark and from Respondent’s inclusion of the term “loans” --which is suggestive of Complainant’s credit related business-- in the at-issue domain names. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
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-loans.com> and <discoverloansreviews.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 6, 2017
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