The Complainant is Discover Financial Services, United States of America (“United States”), represented by Taft, Stettinius & Hollister, LLP, United States.
The Respondent is Xuhaimin (徐海民), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2020. The following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2020, 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 September 25, 2020 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 in English on September 30, 2020. On September 25, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceeding commenced on October 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2020. The Center appointed Matthew Kennedy as the sole panelist in this matter on November 20, 2020. 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 provider. It offers the Discover credit card and student loans, among other services. The Complainant is the current registrant of United States trademark registration number 1,479,946 for DISCOVER, registered on March 8, 1988, in respect of financial services, namely, proprietary credit card services in class 36; and Chinese trademark registration number 4891650 also for DISCOVER, registered on May 14, 2009, and specifying financial services, including debit and credit card services, in class 36. Those trademark registrations remain current. The Complainant has registered the domain name The Respondent is an individual resident in China. The disputed domain name was registered on November 28, 2017. It formerly resolved to a website in English that prominently displayed the Complainant’s semi-figurative Discover logo, provided information on student loans, and even invited Internet users to apply for a loan online. According to the evidence on record, the pages on this website displayed URLs of pages on the Complainant’s website. The disputed domain name currently resolves to a webpage displaying pay-per-click (“PPC”) links to website regarding loans, including student loans, and “Discover Student Loans”. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s DISCOVER marks. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the DISCOVER marks. The disputed domain name was registered and is being used in bad faith. There is no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the Complainant’s marks. The disputed domain name previously redirected to a website that appeared to be an exact, unauthorized replica of the Complainant’s website. The fake website offered services while misusing the Complainant’s mark and even referred to the Complainant’s DISCOVER mark and used Discover’s own trade dress in order to ensure confusion. The Respondent currently uses the disputed domain name to redirect users to a PPC landing page. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that the Respondent is fully capable of proceeding in English because both the disputed domain name and the website to which it resolves are in English, not Chinese; and translation of the Complaint into Chinese would only unduly burden the Complainant and unnecessarily delay this proceeding. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English. The website associated with the disputed domain name was in English, from which it is reasonable to infer that the Respondent is familiar with that language. The Center sent the email regarding the language of the proceeding and notice of the Complaint to the Respondent’s contact addresses in both Chinese and English. The Respondent has not expressed any interest in participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the DISCOVER mark. The disputed domain name wholly incorporates the DISCOVER mark. This is the core recognizable element of the disputed domain name and is preceded by the letters “www”. The omission of a full stop between the “www” prefix and a domain name is a common typographical error. Accordingly, the addition of those letters without a full stop does not dispel confusing similarity between the disputed domain name and the trademark that follows. See BHP Billiton Innovation Pty Ltd v. Yorkshire Enterprises Limited and Whois Privacy Services Pty Ltd,WIPO Case No. D2009-1558. The disputed domain name also incorporates the dictionary words “student” and “loans” after the mark, but these do not avoid a finding of confusing similarity for the purposes of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. The trademark remains clearly recognizable within the disputed domain name. The only additional element is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a technical requirement of domain name registration, the gTLD suffix is generally disregarded in the comparison between a domain name and a trademark for the purposes of the Policy. Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The disputed domain name formerly resolved to a website that gave the impression it was the Complainant’s website, offering information on student loans and inviting loan applications. The Complainant submits that it has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the DISCOVER marks. At the time of this Decision, the disputed domain name resolves to a landing page displaying PPC links, including to sites offering services that compete with those of the Complainant. There appears to be no reason to register the disputed domain name other than to take advantage of Internet users who are seeking the services provided by the Complainant. The Panel does not consider the former or current use of the disputed domain name to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Respondent’s name is listed in the Registrar’s WhoIs database as “Xuhaimin (徐海民)”, not the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The disputed domain name formerly resolved to a website that invited loan applications. It now resolves to a landing page displaying PPC links that presumably operate for the benefit of the Respondent, or the operator of the linked websites, or both. The Panel does not consider any of these uses to constitute a legitimate noncommercial or fair use of the disputed domain name for the purposes of paragraph 4(c)(iii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.” The disputed domain name was registered in 2017, years after the registration of the Complainant’s DISCOVER mark, including in China, where the Respondent is resident. There appears to be no plausible reason to register the disputed domain name other than to take advantage of Internet users who seek the services provided by the Complainant. Further, the website to which the disputed domain name formerly resolved displayed the Complainant’s logo and URLs of page numbers from the Complainant’s website. These facts indicate to the Panel that the Respondent was well aware of the Complainant’s trademark at the time of registration of the disputed domain name and that he registered that domain name in bad faith. The disputed domain name is used to attract Internet users who seek the services provided by the Complainant, by creating a likelihood of confusion with the Complainant’s DISCOVER trademark as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolved. The disputed domain name formerly resolved to a website that gave the false impression that it was the Complainant’s website and invited loan applications. That use was intentional and for the commercial gain of the Respondent. The disputed domain name currently resolves to a landing page displaying PPC links, including to sites offering services that compete with those of the Complainant. This current use is intentional and for the commercial gain of the Respondent, or the operators of the linked websites, or both. In each of these scenarios, the facts fall within the circumstance described in paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007‑0267. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 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 Matthew Kennedy
Sole Panelist
Date: December 4, 2020
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