Discover Financial Services v. Domain Administrator c/o Internet REIT
Claim Number: FA0705000986957
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
NAME
The domain name at issue is <discoer.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.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.
Terry F. Peppard 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 18, 2007.
On May 16, 2007, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the National Arbitration Forum that the <discoer.com> domain name is registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current registrant of the name. Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.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
23, 2007, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 12, 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@discoer.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 Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant 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 service mark throughout the world.
Complainant holds a service mark 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 <discover.com> and <discovercard.com> domain names.
Respondent is not authorized or licensed to use Complainant’s DISCOVER mark and Respondent is not associated with Complainant in any way.
Respondent registered the <discoer.com> domain name on October 23, 2003.
The disputed domain name resolves to a website that displays links to various third-party websites unrelated to Complainant or Complainant’s business.
Respondent’s <discoer.com> domain name is confusingly similar to Complainant’s DISCOVER mark.
Respondent does not have any rights or legitimate interests in the disputed <discoer.com> domain name.
Respondent registered and uses the <discoer.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent 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."
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s DISCOVER mark is registered with the USPTO. Therefore 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.”
Respondent’s <discoer.com>
domain name is confusingly similar to Complainant’s DISCOVER mark inasmuch as
the <discoer.com> domain name
merely omits the letter “v” from the mark. The omission of this letter from the mark does
not negate confusing similarity, as this is a common typing error. Additionally, because a generic top-level
domain (“gTLD”) is required of all domain names, for the purposes of a Policy ¶
4(a)(i) analysis, it is irrelevant that the disputed
domain name contains the gTLD “.com”. Therefore, the <discoer.com> domain name is confusingly similar to Complainant’s
DISCOVER mark pursuant to Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try Harder &
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has the initial burden of establishing that Respondent lacks rights or legitimate interests with respect to the <discoer.com> domain name. Once Complainant makes a prima facie case, however, the burden shifts to Respondent to prove that it nonetheless has rights or legitimate interests in the disputed domain name. In this case, Complainant has made out a prima facie case under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent has no right or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a presumption that Respondent lacks rights or legitimate interests in the <discoer.com> domain name. 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, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant asserts that Respondent is not authorized or licensed to use Complainant’s DISCOVER mark and that Respondent is not associated with Complainant in any way. Respondent does not deny these allegations. Further, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <discoer.com> domain name, and there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), a panel found no rights or legitimate interests where a respondent was not commonly known by the mark there in issue and never applied for a license or permission from a complainant to use a trademarked name. See also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply). We therefore conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also alleges, and Respondent does not deny, that
Respondent is using the <discoer.com>
domain name to redirect Internet users to a website displaying links to
third-party websites unrelated to Complainant or Complainant’s business. We presume that Respondent benefits commercially
from this website through the accrual of click-through fees. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003):
Respondent's use of a domain name confusingly similar to
Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does 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).
See also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that a respondent’s use of a disputed domain name to redirect Internet users to commercial websites unrelated to a complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in that domain name).
Furthermore, Respondent also lacks rights or legitimate interests in the <discoer.com> domain name due to the typosquatted nature of the disputed domain name. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights and legitimate interests in 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 thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
It has already been established to our satisfaction that Respondent
uses the <discoer.com> domain
name to redirect Internet users to a website containing links to various
unrelated third-party websites. We
presume that Respondent is attempting to capitalize on the likelihood of users
confusing the source or affiliation of the disputed domain name with Complainant’s
DISCOVER mark and its websites, located at the <discover.com> and
<discovercard.com> domain names, and that Respondent receives click-through
fees in the process. Therefore, we conclude
that Respondent registered and is using the <discoer.com> domain name in bad faith within the meaning of Policy
¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat.
Arb. Forum Dec. 22, 2003):
Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.
See also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that a respondent registered and used a domain name in bad faith under Policy ¶ 4(b)(iv) because that respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Moreover, Respondent’s bad faith registration and use is further evidenced by the typosquatted nature of the <discoer.com> domain name under Policy ¶ 4(a)(iii). 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 a complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <discoer.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 19, 2007
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