The Complainant is Discover Financial Services of Riverwoods, Illinois, United States of America (“United States” or “USA”), represented by Winston & Strawn LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, DomainsbyP, of Scottsdale, Arizona, United States / Carolina Rodrigues, Fundacion Comercio Electronico, of Panama City, Panama. 2. The Domain Names and Registrars
The disputed domain names and (the “Disputed Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2019. On March 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2019, 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 March 11, 2019.
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 March 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2019.
The Center appointed Michael D. Cover as the sole panelist in this matter on April 15, 2019. 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 major credit card issuer and electronic payment services company, operating under its trademark DISCOVER. The Complainant offers a credit card under the DISCOVER trademark and also offers personal and student loans, online savings products, certificates of deposit, and money market accounts through its Discover Bank subsidiary. The Complainant’s business consists of DISCOVER NETWORKS, PULSE, and DINERS CLUB INTERNATIONAL.
The Complainant has a large number of employees and its products and services are advertised and marketed around the world under its DISCOVER trademark.
The Complainant is the proprietor of a number of registered trademarks for DISCOVER for financial services and the like in the USA and elsewhere, the earliest of which dates back to 1988 (reg. no. 1,479,946).
The Disputed Domain Names were registered on the following respective dates:
October 1, 2018;
October 15, 2018.
At the time of the fling of the Complaint, the Disputed Domain Names redirected to various third party websites, screen shots of which were provided in Annexes 6, 7, and 8 to the Complaint. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant submits not just that it has registered and unregistered rights in its DISCOVER trademark but also that this trademark is well known. The Complainant notes that previous UDRP panels have found that the trademark DISCOVER is famous and distinctive.
The Complainant goes on to submit that the Disputed Domain Names are confusingly similar to the Complainant’s trademark DISCOVER, because the Disputed Domain Names fully incorporate that trademark. The Complainant notes that the only additions are respectively the addition of the letter “e” and the word “bank” in one case and the word “card” and the term “it”, together with the generic Top-Level Domain (“gTLD”) “.com” in the other.
Effectively, the Complainant concludes that the Disputed Domain Names are confusingly similar to its DISCOVER trademark, in which it has rights. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
The Complainant submits that the Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use of the Disputed Domain Names. The Complainant also notes the Respondent has referred to itself in the WhoIs database as “Domains By Proxy LLC” and has never been commonly known by any of the DISCOVER trademarks nor any variations thereof.
The Complainant further notes 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 any of its DISCOVER trademarks.
The Complainant further notes that the Respondent has never operated any bona fide or legitimate business under the Disputed Domain Names and is not making what it describes as a protected noncommercial use of the Disputed Domain Names, Instead, the Complainant states, the Respondent uses the Disputed Domain Name to resolve to various websites. These are set out in Annex 6 to the Complaint and include a website, which, says the Complainant, appears to solicit unwanted software or malware.
The Complainant also notes that the same Disputed Domain Name is used to divert Internet users to websites wholly unaffiliated with the Complainant. Printouts of these redirected pages are set out by the Complainant in Annexes 7 and 8 to the Complaint.
The Complainant concludes that the Respondent lacks rights or legitimate interests in the Disputed Domain Names within the meaning of paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
The Complainant submits that the Respondent would have registered the Disputed Domain Names with either actual or constructive knowledge of the Complainant’s registered trademarks for DISCOVER, noting the trademark is registered in the United States, where both Parties reside. The Complainant continues that registration of a confusingly similar domain name despite such actual or constructive knowledge, without more, evidences bad faith registration within the meaning of the Policy paragraph 4(a)(iii) and refers to Exxon Mobil Corporation v. Joseph Fisher,WIPO Case No. D2000-1412.
The Complainant also states that there is no reason for the Respondent to have registered the Disputed Domain Names, other than to trade off the reputation and goodwill associated with the Complainant’s trademark. As such, says the Complainant, the nature of the Disputed Domain Names evidence bad faith registration and use. The Complainant refers to Charles Jourden Holding AG v. AAIM,WIPO Case No. D2000-0403, where, the Complainant submits, the Panel found that that the domain name in question was so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggested opportunistic bad faith.
Further, the Complainant states that the Respondent has been using the Disputed Domain Names to capitalize on Internet users’ efforts to the find the Complainant’s website and continues that, at times, the Disputed Domain Name has resolved to a “security check “ page, which appears to solicit unwanted software or malware. The Complainant refers to Annex 6 to the Complaint in this connection.
Moreover, the Complainant submits, the Disputed Domain Name has and continues to redirect Internet users to various third party websites unconnected with the Complainant. The Complainant refers to Annex 7 to the Complaint relating to this point. The Disputed Domain Name , says the Complainant, has redirected Internet users to the same subpage of , which the Complainant believes results in the Respondent receiving a referral for each misdirected Internet user.
It is implicit in the Complainant’s submissions that it concludes that the Respondent has registered and is using the Disputed Domain Names in bad faith. Remedies Requested by the Complainant
The Complainant requests the Panel decide that the Disputed Domain Names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and that the Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established registered rights in its DISCOVER trademark.
The Panel also accepts that the Disputed Domain Names are confusingly similar to the Complainant’s trademark DISCOVER, in which the Complainant has rights. It is well established that the addition of the gTLD “.com” does not avoid a finding that the Disputed Domain Name is confusingly similar or identical to the Complainant’s trademark. The same is true of the other terms added to the Disputed Domain Names.
In fact, the Disputed Domain Names reproduce the Complainant’s trademark DISCOVER in full.
The Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark DISCOVER, in which the Complainant has registered rights, and that paragraph 4(a)(i) of the Policy has been met. B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Names. There is no evidence that the Complainant has authorized or licensed the Respondent to use its trademark DISCOVER and the Complainant specifically states that it has not done so.
The Respondent has not demonstrated use or demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services, that it has been commonly-known by the Disputed Domain Names, or that it has been making legitimate noncommercial use of the Disputed Domain Names, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark of the Complainant.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
The Panel accepts that the Disputed Domain Names have been registered and used in bad faith. The use of a privacy service supports an inference of bad faith. See section 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The use of the Disputed Domain Names, i.e. resolving to website that, inter alia, purportedly offers malware, further supports a finding of bad faith use.
The Policy, paragraph 4(b) sets out a non-limiting list of circumstances which shall be evidence of the registration and use of a domain name in bad faith.
In this instance, it is highly unlikely that the Respondent was not aware of the Complainant’s rights in the DISCOVER trademark. Against the background of that, the use of the privacy service and the direction to the malware sites and to sites unrelated to the Complainant, the Panel notes the nature of the Disputed Domain Names and finds that the Respondent has registered and used the Disputed Domain Names with the intention of attempting to attract, for commercial gain, Internet users to an online location, by creating a likelihood of confusion with the Complainant’s trademark DISCOVER as to the source or affiliation of a service on the Respondent’s location or the location of third parties presumably for a commercial gain.
The Panel therefore finds that the Disputed Domain Names have been registered and are being used in bad faith. 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 Names and be transferred to the Complainant.
Michael D. Cover
Sole Panelist
Date: April 24, 2019
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