The Complainant is Discover Financial Services of Riverwoods, Illinois, United States of America, represented by Winston & Strawn LLP, United States of America.
The Respondent is Contact Privacy Inc. Customer 0142035953 of Toronto, Canada / Milen Radumilo of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2017. On July 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 31, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same date.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 25, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 28, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a credit card and electronic payment services company operating in several countries and territories around the world. The Complainant is the owner, amongst others, of the following trademark registrations (Annex 4 to the Complaint):
- United States of America Trademark registration No. 1,479,946 for DISCOVER registered on March 8, 1988, successively renewed; and
- Romania Trademark registration No. 28,339 for DISCOVER registered on September 16, 1998, successively renewed.
The disputed domain name was registered on December 31, 2015. The disputed domain name was used in connection with pay-per-click advertisements and currently while it does not resolve to an active website, it appears to be in use in connection with fraudulent schemes. 5. Parties' Contentions A. Complainant
The Complainant asserts to be one of the leading credit card issuers, offering the "Discover" Credit Card in addition to personal and student loans, online savings products, certificates of deposit and money market accounts through its Discover Bank subsidiary.
According to the Complainant, its payment business consists inter alia of Discover Network, with millions of merchant and cash access locations and Diners Club International. It operates a global payments network with acceptance in more than 185 countries and territories. The Complainant further states that it has thousands of employees and the products and services sold under the DISCOVER mark which are advertised and promoted around the world, being its credit cards, issued in 64 currencies, accepted in 800,000 ATMs.
The fame achieved by the DISCOVER mark, states the Complainant, has already been recognized under the laws of the United States of America and Australia, making it a popular target for Internet-based scams and cybersquatters.
The disputed domain name, under the Complainant's view, is confusingly similar to its mark because it fully incorporates it, only adding the generic term "cards", and SAMSCLUB, the trademark of a large retailer which has consented to the filing of the Complaint.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has never been commonly known by the disputed domain name and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known, other than the infringing use noted herein;
(ii) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name has been used to redirect Internet users to a rotating set of domain names that resolve to various websites including online stores offering appliances for sale, a page advertising website privacy protection services, and an online search page showing results for "Sams Club," which contains links to the Complainant's competitors. Moreover, some of these rotating websites will cause the user's web browser to crash;
(iii) the WhoIs record for the disputed domain name shows that it is being offered for sale;
(iv) the Complainant has not granted any license, permission, or authorization by which the Respondent could own or use any domain name registrations which are confusingly similar to the Complainant's trademark.
The Complainant further contends that the Respondent registered the disputed domain name with either actual or constructive knowledge of the Complainant's rights in the DISCOVER trademark by virtue of the Complainant's prior registrations as well as the targeting of the Respondent's website to the United States of America. Also, the redirection of the disputed domain name to webpages containing links to third-party websites offering financial services from the Complainant's direct competitors characterizes bad faith in the use of the disputed domain name, as well as the present offer of the disputed domain name for sale as per the WhoIs information.
Lastly, the Complainant points out that the Respondent deliberately chose to conceal its true identity by means of a privacy protection service what in its point of view is a further strong indication of the Respondent's bad faith and intent to use the disputed domain name in a way which may be abusive or otherwise detrimental to the Complainant and its rights. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established its rights in the well-known DISCOVER trademark duly registered in several jurisdictions around the world (Annex 4 to the Complaint).
In this Panel's view the addition of the generic term "card" to the Complainant's trademark in the disputed domain name reinforces the link with the Complainant's trademarks and activities. The addition of the trademark of a large retailer which also has a credit card further corroborates with a likely association of Internet users between the disputed domain name and the Complainant's services.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the respondent's rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant's side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not granted any license, permission, or authorization by which the Respondent could own or use any domain name registrations which are confusingly similar to the Complainant's DISCOVER trademark.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel's finding of the absence of rights or legitimate interests.
According to the print-outs attached to the Complaint (Annex 8) the disputed domain name has been used to redirect Internet users to a rotating set of domain names that resolve to various websites including online stores offering appliances for sale, a page advertising website privacy protection services, and an online search page showing results for "Sams Club", which contains links to the Complainant's competitors. Moreover, presently Internet users are redirected to webpages potentially linked with fraudulent schemes in which Internet users accessing the disputed domain name are lead to potentially downloading files.
The Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intention to attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Respondent's knowledge of the Complainant appears to be evident from the choice of the disputed domain name adding the term "card" to the DISCOVER trademark given the Complainant's activities as well as the addition of the trademark of a large retailer which also offers credit cards, creating a likelihood of association of Internet users between the disputed domain name and the Complainant's services.
In this case, the use of the disputed domain name in connection with the redirection of Internet users to a rotating set of domain names that resolve to various websites including online stores offering appliances for sale, a page advertising website privacy protection services, and an online search page showing results for "Sams Club", which contains links to the Complainant's competitors as well as webpages potentially linked with fraudulent schemes in which Internet users accessing the disputed domain name are lead to potentially downloading files can indeed mislead Internet users.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstances which could demonstrate its good faith in the registration or use of the disputed domain name.
Lastly, the Respondent's choice to retain a privacy protection service in an attempt to hide its true identity as well as what may be false contact information in the WhoIs information after the shield was lifted, further support the Panel's finding of bad faith in the circumstances of this case.
For the reasons stated above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. D. Request for the transfer of a disputed domain name that incorporates a third-party trademark
The Panel notes that the Complainant requested the transfer of the disputed domain name which incorporates a third-party trademark and stated that such third-party had consented to the filing of the present Complaint.
Although an express consent was not filed with the Complaint, the Panel will refrain from issuing a procedural order in that sense in view of (i) the certification included in the Complaint; (ii) prior decisions under the UDRP (such as Kabbage, Inc. v. Oneandone Private Registration, 1&1 Internet Inc. - / Robert Hanssen, Ridiculous File Sharing,WIPO Case No. D2015-1507; and (iii) the fact that such remedy will be granted without prejudice to any rights which may be asserted by a third-party trademark holder (see section 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
This transfer is without prejudice to any rights, which may be asserted by a third-party trademark holder.
Wilson Pinheiro Jabur
Sole Panelist
Date: September 11, 2017
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