Discover Financial Services v. ZACHARY NESS aka Redacted for Privacy
Claim Number: FA1810001811279
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is ZACHARY NESS aka Redacted for Privacy (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discoverfinancial.app> (the “Domain Name”), registered with Key-Systems, 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.
Clive Elliott QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 10, 2018; the Forum received payment on October 15, 2018.
On October 12, 2018, Key-Systems, LLC confirmed by e-mail to the Forum that the Domain Name is registered with Key-Systems, LLC and that Respondent is the current registrant of the name. Key-Systems, LLC has verified that Respondent is bound by the Key-Systems, 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 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 2018 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@discoverfinancial.app. Also on October 17, 2018, 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 November 1, 2018.
On November 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott QC 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a leading credit card issuer and electronic payment services company with a highly recognizable financial services brand.
Complainant states that it is the owner of two DISCOVER marks (“Complainant’s Marks”), both of which pre-date the registration of the Domain Name of May 8, 2018:
- United States registration number 3,025,822, registered December 13, 2005; and
- United States registration number 1,479,946, registered March 8, 1988.
Complainant asserts that it offers its DISCOVER Credit Card, personal and student loans, online savings products, certificates of deposit and money market accounts through its DISCOVER Bank subsidiary.
Complainant further states that its payment businesses consist of:
- DISCOVER NETWORK, with millions of merchant and cash access locations;
- PULSE, one of the USA’s leading ATM/debit networks; and
- DINERS CLUB INTERNATIONAL, a global payments network with acceptance in more than 185 countries and territories.
Complainant goes on to state that it has thousands of employees and the products and services sold under the DISCOVER mark are advertised and promoted around the world.
Complainant asserts that it operates its website at <discover.com>, which it also accessed through <discoverfinancial.com>, where customers can log into their confidential accounts and where Complainant provides consumer information about its goods and services.
Complainant claims that the Domain Name is confusingly similar to Complainant’s Marks because it fully incorporates Complainant’s DISCOVER marks and trade name. The Domain Name adds only the generic phrase financial, and the generic top-level domain <.app> to the DISCOVER marks. While “.app” is a generic top-level domain, it is also a defined dictionary term that corresponds to the industry relevant term, app, which Discover provides for its customers.
Complainant asserts that due to its extensive and longstanding use of Complainant’s Marks, past panels have found the marks to be famous and distinctive. Complaint further alleges that Respondent has registered the Domain Name with knowledge of Complainant’s Marks and with the intention of profiting from using those marks, as Respondent is passively holding the Domain Name.
Complainant maintains that it has not given Respondent any license, permission, or authorization by which Respondent could make use of any of its marks or its domains, and therefore Respondent lacks rights or legitimate interests in the Domain Name. Complainant also contends Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name.
Complainant goes on to suggest that there is no evidence to indicate that Respondent has ever been commonly known by the Domain Name, nor has Respondent ever used any trade mark or service mark similar to the Domain Name by which it may have come to be known.
Complainant submits that Respondent has therefore registered and uses the Domain Name in bad faith.
B. Respondent
Respondent states that he consents to the transfer of the Domain Name to Complainant and requests that the Panel forgo the usual UDRP analysis of the three issues set out in the Complaint and make an order for the transfer of the Domain Name to Complainant.
For the reasons set out below the Complainant is successful and it is ordered that the Domain Name be transferred from Respondent to Complainant.
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.
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the Domain Name to Complainant.
Notwithstanding this, the Panel takes the view that Complainant has not implicitly consented in its Complaint to the transfer of the Domain Name without a decision on the merits by the Panel.
The Panel also considers that the “consent-to-transfer” approach proposed by Respondent in this case is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel considers it should assess the present case under the elements of the UDRP.
Complainant claims rights in the DISCOVER mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,479,946, registered Mar. 8, 1988). It is well established that registration of a mark with the USPTO may sufficiently confer a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Accordingly, the Panel finds that Complainant has established rights in the DISCOVER mark for the purposes of Policy ¶ 4(a)(i).
Complainant contends that the Domain Name is confusingly similar to Complainant’s mark as it simply adds the generic/descriptive phrase “financial” and the “.app” gTLD. The Panel accepts the merit of this argument and concludes that the Domain Name is confusingly similar to the DISCOVER mark under Policy ¶4(a)(i).
Complainant is required to make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii). If and when it does so, the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the DISCOVER mark. In the absence of any attempt to refute or qualify these assertions the Panel is satisfied that the assertions have been adequately made out.
Further, Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the Domain Name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. On the basis of the record as it currently stands, the Panel infers that this is likely to be the case.
Next, Complainant argues that Respondent currently does not make an active use of the Domain Name’s resolving webpage. Again, in the absence of any submission or evidence to the contrary, the Panel is satisfied that this is the case. Accordingly, the Panel finds that Respondent has failed, at least on the basis of the record as it stands, to make any use of the Domain Name, failed to use the Domain Name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements. Nevertheless, the Panel may consider Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the Domain Name in bad faith as Respondent fails to make any use of the resolving webpage. Inactively holding a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii).
Further, Complainant alleges that Respondent registered the Domain Name using a privacy service to conceal its identity. A respondent’s attempt to hide its identity when registering a domain name can support a finding of bad faith. The Panel agrees with Complainant that by employing a privacy service when registering the Domain Name, that this points towards Respondent having registered the Domain Name in bad faith.
Finally, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s DISCOVER mark at the time of registering the Domain Name. While constructive knowledge may not be sufficient to support an allegation of bad faith, the Panel accepts Complainant’s argument regarding actual knowledge. That is, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the Domain Name. Further, the Panel considers that actual knowledge adequately demonstrates bad faith under Policy ¶ 4(a)(iii).
For these reasons the Panel is satisfied that bad faith has been established.
Accordingly, it is Ordered that the <discoverfinancial.app> domain name be TRANSFERRED from Respondent to Complainant.
________________________________
Clive Elliott QC, Panelist
Dated: November 20, 2018
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