Discover Financial Services v massimo barone
Claim Number: FA1710001755867
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is massimo barone (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discovermpos.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 26, 2017; the Forum received payment on October 27, 2017.
On October 27, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <discovermpos.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 October 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@discovermpos.com. Also on October 30, 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 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Discover Financial Services, is a leading credit card issuer and electronic payment services company with a highly recognizable financial services brand. Complainant uses its DISCOVER mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,479,946, registered Mar. 8, 1988). See Compl. Annex 3. Respondent’s <discovermpos.com> is confusingly similar to Complainant’s mark because and appends the descriptive abbreviated term “mpos” and generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
ii) Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the disputed domain name. Respondent is not using <discovermpos.com> in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website that promotes Complainant’s competitor’s services and trades off Complainant’s reputation in the financial services industry.
Respondent registered and is using the disputed domain in bad faith. Respondent has demonstrated a pattern of bad faith because it was the subject of a prior adverse UDRP ruling. Respondent attempts to disrupt Complainant’s business by using the domain name’s resolving website to promote competing goods and services that trade off of Complainant’s reputation. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the DISCOVER mark.
B. Respondent
Respondent did not submit a Response. However, the Panel notes that <discovermpos.com> was registered on May 17, 2017. See Compl. Annex 2.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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(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.”).
Complainant contends it registered its DISCOVER mark with the USPTO (e.g., Reg. No. 1,479,946, registered Mar. 8, 1988). See Compl. Annex 3. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Therefore, the Panel holds that Complainant has rights in the DISCOVER mark.
Next, Complainant asserts that Respondent’s <discovermpos.com> is confusingly similar to Complainant’s mark because it appends the descriptive abbreviated term “mpos” and gTLD “.com” to the fully incorporated mark. The addition of a descriptive term and a gTLD do not negate confusing similarity between a mark and a disputed domain name. Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Here, Complainant asserts that “mpos” is an industry abbreviation for “mobile point of sale.” As such, the Panel concludes that Respondent’s <discovermpos.com> is confusingly similar to Complainant’s mark.
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 (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 (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 alleges that Respondent is not commonly known by the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its DISCOVER mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for <discovermpos.com> lists “massimo barone” as the registrant. See Compl. Annex 2. Therefore, the Panel concludes that Respondent is not commonly known by the <discovermpos.com> domain name.
Complainant alleges that Respondent is not using <discovermpos.com> in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website that promotes Complainant’s competitor’s services and trades off Complainant’s reputation in the financial services industry. Use of a domain name to resolve to a competing website is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provided screenshots of Respondent’s alleged resolving website connected to the disputed domain name. See Compl. Annex 6. The website advertises the products and services Complainant’s competitor, SmartCard Marketing Systems, Inc. Id. Therefore, the Panel agrees that Respondent is not using <discovermpos.com> in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and uses <discovermpos.com> in bad faith. Complainant alleges that Respondent established a pattern of bad faith by being involved in prior adverse UDRP decisions. Prior UDRP decisions may be used to establish a pattern of bad faith registration and use and may support a conclusion that a respondent registered the disputed domain name in bad faith. See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant alleges that Respondent’s use of the offending domain is identical to his prior use of <chinaprepaiddiscover.com>, which was the subject of a recent UDRP proceeding that was decided in the complainant’s favor (the same complainant as here). See Discover Financial Services v massimo barone, FA1708001744205 (Forum Sept. 8, 2017) (ordering transfer of <chinaprepaiddiscover.com>). Therefore, the Panel concludes that Respondent has established a pattern of bad faith registration.
Complainant contends that Respondent is attempting to disrupt Complainant’s business by using the domain name’s resolving website to promote competing goods and services that trade off of Complainant’s reputation. Use of a domain name to disrupt a complainant’s business is evidence of bad faith registration and use. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). Screenshots of the <discovermpos.com> website indicate that the site is used to promote goods and services in competition with Complainant’s credit card business. See Compl. Annex 6. As such, the Panel may agree that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant’s DISCOVER mark, it is inconceivable that Respondent could have registered the <discovermpos.com> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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.").
However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s DISCOVER mark has created significant good will and consumer recognition around the world and was first used in commerce by Complainant in 1988. See Compl. Annex 3. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when <discovermpos.com> was registered and subsequently used.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <discovermpos.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm,Esq., Panelist
Dated: November 28, 2017
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