Complainant is Discover Financial Services, United States of America (“United States”), represented by Taft, Stettinius & Hollister, LLP, United States.
Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Modo Succy, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2021. On May 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2021, 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 Complainant on May 26, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 27, 2021. 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 Respondent of the Complaint, and the proceedings commenced on May 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2021. The Center appointed Lorelei Ritchie as the sole panelist in this matter on July 8, 2021. 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 Complainant is a financial services company based in the United States. Since at least 1985, Complainant has offered credit-card and related financial services under it DISCOVER mark. Complainant also offers various banking services under its DISCOVER BANK mark. Complainant has several registered trademarks for these marks. These include United States Trademark Registration No. 1479946 for DISCOVER (registered March 8, 1988) and United States Trademark Registration No. 4555090 for DISCOVER BANK (registered June 24, 2014). The disputed domain name Complainant contends that the (i) disputed domain name In particular, Complainant contends that it has established rights in its DISCOVER mark, as well as in its DISCOVER BANK mark, in the field of financial, banking, and credit-card services. Complainant contends that Respondent has merely added the dictionary term “national”, which Complainant contends is intended to confuse consumers into believing that Respondent’s website is officially endorsed by Complainant. Complainant contends that Respondent has used the disputed domain name to set up a website meant to lure in customers looking for Complainant and its various financial services, likely in a phishing scheme. Complainant further contends that Respondent has no rights or legitimate interest in the domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in setting up a website, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not file a reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar This Panel must first determine whether the disputed domain name Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not prevent a domain name from being “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski,WIPO Case No. D2000-1614 (transferring The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”. Respondent did not submit a reply to Complainant’s contentions. Although the Panel is aware that Complainant’s asserted mark DISCOVER is a dictionary term, Respondent did not allege or otherwise provide any information that would support a finding that Respondent has rights or legitimate interest in the disputed domain name. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted. C. Registered and Used in Bad Faith There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up a URL associated with the disputed domain name to resolve to a website that appears to mimic an official website of Complainant, and which attempts to confuse consumers by referring to “Banking” and other services offered from “DISCOVERNATIONBANK” and “Discover National Bank”. Likely, under the guise of attracting consumers seeking services from Complainant, the website associated with the disputed domain name further invites prospective consumers to provide personal and financial information. Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. The Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. 7. Decision For all 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 Lorelei Ritchie
Sole Panelist
Dated: July 16, 2021
Full & Egal Universal Law Academy