The Complainant is Discover Financial Services, United States of America (“United States”), represented by Taft, Stettinius & Hollister, LLP, United States.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States / Mike Morgan, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2019. On July 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 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 August 9, 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 August 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2019.
The Center appointed Gareth Dickson as the sole panelist in this matter on September 12, 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 credit card issuer and electronic payment services company. It offers credit card and other financial products and services under the DISCOVER mark (the “Mark”) around the world.
The Complainant is also the owner of a number of registered trade marks for the Mark, including the following marks in the United States:
- Trade mark number 1479946, registered on March 8, 1988; and
- Trade mark number 3025822, registered on December 13, 2005.
The Complainant’s DISCOVER mark has been found in past UDRP decisions to be famous and distinctive.
The Respondent registered the Domain Name on June 17, 2016 and has used a privacy service to mask his contact details. The Domain Name resolves to a website which uses the DISCOVER mark to offer pay-per-click links for products and services that directly compete with the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that it has rights in the Mark and that the Domain Name is confusingly similar to the Mark, with the only difference being the addition of the word “scorecard” and the generic Top-Level Domain (“gTLD”) suffix “.com”. The Complainant submits that the addition of “scorecard” to the Domain Name in fact emphasises the similarity to the Mark, since the Complainant offers a product under that name in conjunction with the Mark, and that the use of “.com” does not distinguish the Domain Name from the Mark in any way.
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name since it has no relationships or links with the Complainant and the Complainant has not authorised the Respondent to make any use of the Mark. It notes that the Domain Name does not correspond to the Respondent’s name and that it is being used to provide access to services which directly compete with the Complainant and therefore do not amount to a bona fide or legitimate business or to a noncommercial or fair use of the Domain Name.
Finally, the Complainant argues that the Domain Name was registered and is being used in bad faith, given its confusing similarity to the Mark and the likelihood that the Respondent was aware of the Mark at the time of registration (based upon the similarity of the Domain Name to the Mark and the fact that the Respondent’s website is targeted to the United States, where the Complainant operates).
The Complainant argues that the Respondent’s use of the Domain Name to generate income from advertising and to promote services in competition with the Complainant is further evidence of bad faith, as is the Respondent’s use of a privacy service. The Complainant has provided evidence of the Respondent having registered at least three other domain names which incorporate famous trade marks and are being used to provide access to pay-per-click links, which it says is evidence of a pattern of bad faith registration and use of domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the 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.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel therefore finds that the Domain Name is confusingly similar to the Mark, since DISCOVER is recognisable within the Domain Name. The addition of “scorecard”, which itself corresponds to the name of a product offered by the Complainant, and the gTLD suffix “.com”, does not in any way prevent a finding of confusing similarity.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, this does not mean that it has to prove a negative to succeed in its complaint.
As explained in section 2.1 of the WIPO Overview 3.0, the consensus view is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case, having alleged that it has not authorised the Respondent to use the Mark, whether in the Domain Name or otherwise.
Furthermore, there is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the Domain Name in any descriptive manner. Finally, the Respondent is not making any use of the Domain Name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it, since the receipt of income from sponsored links to competitors of the Complainant is evidently neither a noncommercial nor a fair use of the Domain Name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Panel accepts that the Domain Name was chosen by reference to the Mark and the Complainant’s “scorecard” product, which are offered to residents in the United States, where the Complainant operates and where the Complainant has registered trade mark protection. As a result, and in the absence of evidence from the Respondent that the similarity of the Domain Name to the Mark is coincidental or unintended, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the Domain Name. The Panel therefore finds that the Respondent’s registration of the Domain Name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.
The Panel also notes that the Respondent has used the Domain Name while trying to conceal his identity and that he has not participated in these proceedings or sought to explain his registration and use of the Domain Name. Accordingly there is no basis for the Panel to conclude that the Respondent’s particular use of the Domain Name is justified and the Panel must, and does, find that the Respondent’s use of the Domain Name to provide access to sponsored advertising for services that compete with the Complainant is without justification, is inconsistent with the Complainant’s exclusive rights in the Mark, and accordingly is in bad faith.
As a result of the above, the Panel finds that the Domain Name was registered and is 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 Domain Name, , be transferred to the Complainant.
Gareth Dickson
Sole Panelist
Date: September 27, 2019
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