The Complainant is Discover Financial Services, United States of America (the “US”), represented by Taft, Stettinius & Hollister, LLP, US.
The Respondent is 杨智超 (Zhichao Yang), China. 2. The Domain Names and Registrar
The disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2020. On October 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 28, 2020, 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 October 28, 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 on October 30, 2020. On October 28, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on October 29, 2020. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint 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 November 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2020. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on December 22, 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 US company active in the financial service industry, with its headquarter in Illinois. The Complainant issues credit cards and provides electronic payment services. The Complainant claims it offers the DISCOVER branded Credit Card in addition to offering personal and student loans, online savings products, certificates of deposit and money market accounts through its DISCOVER Bank subsidiary. Moreover, The Complainant’s payment businesses consist of DISCOVER NETWORK, with millions of merchant and cash access locations. The Complainant also claims it has thousands of employees and the products and services sold under the DISCOVER mark, which are advertised and promoted around the world. The Complainant owns several trademarks for DISCOVER, including, for example, the US trademark registrations number 1479946, registered on March 8, 1988 and number 4211365, registered on September 18, 2012; the Chinese trademark registration number 4891650, registered on May 14, 2009. Moreover, the Complainant also operates an official website at “www.discover.com” through its administration service company. The disputed domain names were created in three batches and on August 4, 2020, August 12, 2020 and September 5, 2020 (or September 6, 2020 due to time difference etc) respectively. The Complainant submits some evidence that some of the disputed domain names directed to pay-per-click websites containing links to third-party websites offering services that directly compete with the Complainant and even referring to the Complainant’s DISCOVER mark. On the date of this decision, after checking 137 disputed domain names, the disputed domain names still lead to these active websites. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the disputed domain names are confusingly similar to its trademarks for DISCOVER, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith. The Complainant claims that its trademarks are highly distinctive and submits American National Arbitration Forum decisions which have recognized that the Complainant’s trademarks for DISCOVER are highly distinctive and well-established. The Complainant particularly submits that there are no justifications for the use of its trademarks in the disputed domain names, and contends that such use does not confer any rights or legitimate interests in respect of the disputed domain names and constitutes registration and use in bad faith. Moreover, the Complainant claims the disputed domain names refer to its business in relation to student loans, which more likely leads to the consumers’ likelihood of confusion. The Complainant requests the transfer of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Administrative Proceeding Pursuant to paragraph 11(a) of the Rules, 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 language of the Registration Agreement is Chinese, and the Complaint is filed in English. On October 28, 2020, the Center notified the Complainant that the language of the Registration Agreement is Chinese. The Complainant confirmed its request that the language of the proceeding be English on October 29, 2020. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits. The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the fact that all communications from the Center have been sent in English and Chinese to the Parties, and the Respondent did not comment on the language of the proceeding and did not submit arguments on the merits (while it had the right to do so in Chinese or English); the fact that all of the disputed domain names and the websites to which they resolve are in English, not Chinese; and the fact that Chinese as the language of the proceeding could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English. 6.2. Discussion and Findings on the Merits The Policy requires the Complainant to prove three elements: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has shown that it has valid rights in the mark DISCOVER based on its intensive use and registration of the same as a trademark. Moreover, as to confusing similarity, the disputed domain names consist, each time, of the Complainant’s trademark DISCOVER, combined with seemingly arbitrary letters such as “I”, “com”, “a”, “d” and the industry-specific terms “student” and “loans”; or in some cases, misspellings of the terms “student” (misspelled as “dtudent” etc.) and “loans” (misspelled as “loanjs” etc.); or, in one case, combined with the industry-specific term “card” and the letter “f”. The applicable Top-Level Domains (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel. See in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. Moreover, the WIPO Overview 3.0, section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For Sale,WIPO Case No. D2000-0662). Section 1.8 states: “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 concludes that each of the disputed domain names contain the entirety of the Complainant’s trademarks DISCOVER, which remains clearly recognizable as such. It is the Panel’s view that the addition of other components does not avert the confusing similarity between the disputed domain names and the Complainant’s trademarks. Moreover, the Panel notes that the added terms “student”, “loans” and “card” are related to the Complainant’s business interest. Accordingly, the Panel rules that the disputed domain names are confusingly similar to the Complainant’s registered trademarks, and that the Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Moreover, the Panel notes that a number of the disputed domain names direct to pay-per-click websites containing links to third-party websites offering services that directly compete with the Complainant and even referring to the Complainant’s DISCOVER mark. This shows the Respondent’s intention to divert consumers for commercial gain to its websites linked to the disputed domain names, by taking unfair advantage of the goodwill and reputation of the Complainant’s trademarks for DISCOVER. Furthermore, the Panel notes that the nature of the disputed domain names, being confusingly similar to the Complainant’s trademarks, some are based on typographical variations, carries a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain names. On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith The Panel holds that the registration of the disputed domain names was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain names. Given the distinctiveness and fame of the Complainant’s trademarks, the Panel holds that the registration of the disputed domain names, clearly targeting the Complainant’s well-known trademarks, was obtained in bad faith. Moreover, the Complainant submits several previous American National Arbitration Forum decisions as evidence that the Respondent is a repeat abuser of the Complainant’s DISCOVER marks. Therefore, the Respondent has registered the disputed domain names with undeniable actual knowledge of the Complainant’s marks. Furthermore, even a cursory Internet search at the time of registration of the disputed domain names would have made it clear to the Respondent that the Complainant owned registered trademarks in DISCOVER and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain names. As to use of the disputed domain names in bad faith, the disputed domain names direct to pay-per-click websites containing links to third-party websites offering services that directly compete with the Complainant and even referring to the Complainant’s DISCOVER mark, which indicates the intention to use the Complainant’s trademarks and reputation to attract Internet users for the Respondent’s commercial gain. Moreover, the Complainant also provides evidence that the Respondent has registered a large amount of domain names, many of which incorporate, or are similar to, famous trademarks, from which the Panel deducts that the Respondent has engaged in a pattern of trademark-abusive domain name registrations. The Panel has reviewed all elements of this case, and in particular: the confusing similarity of the disputed domain names to the Complainant’s trademarks, the distinctiveness and fame of the Complainant’s trademarks, the fact that the Respondent used the disputed domain names for commercial gain, the Respondent’s previous hijacking of domain names similar to the Complainant’s DISCOVER marks, and the fact that the Respondent has engaged in a pattern of trademark-abusive domain name registrations. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain names in bad faith. Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 names,