Discovery, Inc. v. Domain Admin / E-Promote
Claim Number: FA2004001892784
Complainant is Discovery, Inc. (“Complainant”), represented by Amy McFarland of Arent Fox LLP, District of Columbia, USA. Respondent is Domain Admin / E-Promote (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discoveryinc.com> (the “Disputed Domain Name”), registered with Name.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2020; the Forum received payment on April 20, 2020.
On April 20, 2020, Name.com, Inc. confirmed by e-mail to the Forum that the <discoveryinc.com> Disputed Domain Name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 April 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2020 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@discoveryinc.com. Also on April 24, 2020, 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 May 18, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M, Braun 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 Disputed Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a company that offers entertainment, educational, and broadcasting services reaching billions of subscribers in 220 jurisdictions worldwide. Complainant has used the “Discovery” trademark in connection with its media and entertainment goods and services since at least as early as 1985, which goods and services are available in 50 languages. Complainant asserts rights in the “Discovery” trademark through its registration of the mark with multiple trademark organizations, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,561,407, registered on October 17, 1989) (collectively, the “DISCOVERY Mark”).
Complainant contends that Respondent’s Disputed Domain Name is identical or confusingly similar to Complainant’s mark as it incorporates the DISCOVERY Mark in its entirety, followed by the dictionary term “inc.”, and then followed by the “.com” generic Top-Level Domain (“gTLD”). Complainant further contends that Respondent lacks rights and legitimate interests in the Disputed Domain Name, that Respondent is not commonly known by the Disputed Domain Name and is not authorized or permitted to use Complainant’s DISCOVERY Mark. Additionally, Respondent fails to use the Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the Disputed Domain Name to divert Internet users to a webpage containing pay-per-click links, and also attempts to solicit offers for sale of the Disputed Domain Name. The Disputed Domain Name was registered on July 9, 2010. When the Complainant prepared and submitted the Complaint, the Disputed Domain Name resolved to a parking page containing pay-per-click links, plus a solicitation of offers to purchase the Disputed Domain Name. As of the writing of this Decision, however, the parking page still exists, although it no longer contains pay-per-click links, but still solicits offers for the purchase of the Disputed Domain Name.
Finally, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith since Respondent has the Disputed Domain Name listed for sale, and also has demonstrated a pattern of bad faith use and registration of other domain names that incorporate registered trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds trademark rights in the DISCOVERY Mark, that the Disputed Domain Name is confusingly similar to Complainant’s DISCOVERY Mark, that Respondent lacks rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using 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 the Disputed 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 Disputed Domain Name; and
(3) the Disputed 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Registration of a mark with multiple trademark agencies worldwide is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (“Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 1561407, registered on October 17, 1989).
The Disputed Domain Name is confusingly similar to the DISCOVERY Mark because the Disputed Domain Name incorporates the DISCOVERY Mark in its entirety and merely adds the dictionary term “inc.” (an abbreviation for incorporated or incorporation), followed by the gTLD “.com”. Many panels have found that adding “inc” to a registered trademark renders the domain name confusingly similar to a complainant’s mark. See, e.g., Nordstrom, Inc. and NIHC, Inc. v. Steven Grotte, Case No. FA0207000115347 (Forum Aug. 26, 2002) (transferring the <nordstrominc.com> and <nordstromsinc.com> domain names to the complainant and holding that “[r]espondent’s addition of “inc” to its domain names represents an insubstantial deviation from [c]omplainant’s NORDSTROM mark because “inc” is commonly known to denote “incorporation” or “incorporated.”) Further, the mere addition of the gTLD “.com” is also insufficient to differentiate a disputed domain name from a trademark. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the addition of the generic Top-Level Domain “.com” to a domain name that incorporates a registered trademark in its entirety does not prevent the domain name from being deemed confusingly similar to a domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
In order for Complainant to succeed under this element, it 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 that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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.”). Here, the Panel holds that Complainant has made out a prima facie case.
Respondent has no rights or legitimate interests in the Disputed Domain Name as Respondent has not provided evidence nor proven that it is commonly known by the Disputed Domain Name, nor has Complainant authorized Respondent to use the DISCOVERY Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the Disputed Domain Name to resolve to a landing page that contains pay-per-click links. As other panels have previously concluded, using a confusingly similar domain name to redirect unsuspecting consumers to a third-party search engine does not constitute a bona fide offering of goods or services. See, e.g., Alcoa Inc. v. Michele Dinoia d/b/a SZK.com, Case No. FA227654 (Forum Mar. 3, 2004) (finding respondent’s use of <wwwalcoa.com> to redirect unsuspecting Internet users to a commercial search engine did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
First, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006). This is true here where Respondent registered the Disputed Domain Name to resolve to a pay-per-click landing page.
Respondent is currently soliciting offers on the landing page to which the Disputed Domain Name resolves for the purchase of the Disputed Domain Name. Intent to sell a disputed domain name can be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”).
Finally, Respondent’s bad faith registration and use of the Disputed Domain Name has been demonstrated by the Respondent’s history or pattern of cybersquatting. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, Case No. FA1299744 (Forum Feb. 3, 2010). Specifically, Respondent has engaged in a pattern of cybersquatting as evidenced by multiple adverse UDRP decisions issued against it. Examples of these UDRP cases include, but are not limited to: Capital One Financial Corp. v. Domain Admin / E-Promote, Case No. FA1501001602631 (Forum Mar. 10, 2015) (capitaloneinsurance.com); NP IP Holdings LLC v. E-Promote / Domain Admin, Case No. FA1809001805524 (Forum Oct. 7, 2018) (santafestation.com).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <discoveryinc.com> Disputed Domain Name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: May 19, 2020
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