Discover Financial Services v. Online Unlimited
Claim Number: FA0705000986853
Complainant is Discover Financial Services (“Complainant”), represented by Baila
H. Celedonia, of Cowan, Liebowitz
& Latman, P.C., 1133 Avenue of the
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <discovecard.com> and <discoverard.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 17, 2007.
On May 15, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <discovecard.com> and <discoverard.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@discovecard.com and postmaster@discoverard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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." 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.
A. Complainant makes the following assertions:
1. Respondent’s <discovecard.com> and <discoverard.com> domain names are confusingly similar to Complainant’s DISCOVER mark.
2. Respondent does not have any rights or legitimate interests in the <discovecard.com> and <discoverard.com> domain names.
3. Respondent registered and used the <discovecard.com> and <discoverard.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Discover
Financial Services, is a wholly owned subsidiary of Morgan Stanley and offers
various credit card and other financial services. These services are provided under
Complainant’s DISCOVER mark in countries throughout the world. Complainant
holds a service mark registration with the United States Patent and Trademark
Office (“USPTO”) for the DISCOVER mark (Reg. No. 1,479,946 issued March 8,
1988). Complainant also operates
websites at the <discovercard.com> and <discover.com> domain names.
Respondent registered the <discovecard.com> domain name on November 4, 2001 and the <discoverard.com> domain name on May 11, 2001. The disputed domain names resolve to websites that display hyperlinks to various third-party websites in competition with Complainant as well as to Complainant’s own website.
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."
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.”).
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.
Complainant’s DISCOVER mark is registered with the USPTO and, accordingly, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The disputed domain names are confusingly similar to Complainant’s DISCOVER mark under Policy ¶ 4(a)(i) as the <discovecard.com> and <discoverard.com> domain names add the word “card” to the mark and remove a letter from either the mark or the word “card.” Additionally, the disputed domain names add the generic top-level domain (“gTLD”) “.com.” The addition of the word “card” has an obvious relation to Complainant’s business and therefore does not negate the confusing similarity between the mark and the disputed domain names. Moreover, the deletion of the letter “r” in one domain name and the letter “c” in the other also does not negate the confusing similarity, as these are common typing errors. The addition of a gTLD is not relevant for Policy ¶ 4(a)(i) analysis as a top-level domain is required of all domain names. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant must initially establish that Respondent lacks rights or legitimate interests with respect to the disputed domain names. However, once Complainant makes a prima facie case, the burden of proof shifts, and Respondent must prove it has rights or legitimate interests in the <discovecard.com> and <discoverard.com> domain names.
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). In the instant proceeding, Complainant has presented a prima facie case. However, the Panel will now examine the evidence to see if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <discovecard.com> and <discoverard.com> domain names, and there is no other evidence to suggest that Respondent is commonly known by the disputed domain names. Complainant also asserts that Respondent is not associated with Complainant and not permitted to use the DISCOVER mark. The Panel thus finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent is using the disputed domain names to display hyperlinks to a variety of websites, including Complainant’s website as well as websites of its direct competitors. The Panel infers that this is being done to commercially benefit Respondent through earning of click-through fees. The Panel finds that this 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 Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Additionally, the Panel finds that Respondent lacks rights
or legitimate interests in the disputed domain names as evidenced by the nature
of the disputed domain names. The <discovecard.com>
and <discoverard.com> domain names are typosquatted
versions of Complainant’s mark as they contain common typing errors. See
Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000)
(finding that fair use does not apply where the domain names are misspellings
of the complainant's mark); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that
the respondent lacked rights and legitimate interests in the disputed
domain names because it “engaged in the practice of typosquatting
by taking advantage of Internet users who attempt to access Complainant's
<indymac.com> website but mistakenly misspell Complainant's mark by
typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent is using the <discovecard.com>
and <discoverard.com> domain names to redirect Internet
users to websites that contain various hyperlinks, some of which are in direct
competition with Complainant. This
constitutes a disruption of Complainant’s business and qualifies as bad faith
registration and use under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure,
Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding that the respondent registered the domain name in
question to disrupt the business of the complainant, a competitor of the
respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel finds that Respondent
receives click-through fees for the hyperlinks displayed on the websites that resolve
from the <discovecard.com> and <discoverard.com> domain
names. The Panel also finds that
Respondent’s disputed domain names are capable of creating a likelihood of
confusion with Complainant’s source, sponsorship, and affiliation with the
disputed domain names and corresponding websites. Such commercial benefit constitutes bad faith
registration and use under Policy ¶ 4(b)(iv).
See G.D. Searle
& Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website); see also 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.’”).
Respondent’s bad faith registration and use is further evidenced under Policy ¶ 4(a)(iii) due to the typosquatted nature of the disputed domain names. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <discovecard.com> and <discoverard.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 26, 2007
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