The Complainant is Discover Financial Services, United States of America (“United States”), represented by Taft, Stettinius & Hollister, LLP, United States.
The Respondent is Alan Jacobs, Alvinton Creatives Ltd., United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2021. On September 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 24, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 September 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2021.
The Center appointed Michelle Brownlee as the sole panelist in this matter on October 27, 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 BackgroundThe Complainant owns numerous registrations for the DISCOVER and DISCOVER BANK trademarks in connection with financial services, including United States Registration Numbers 1,479,946, 2,501,064 and 4,555,090, registered on March 8, 1988, October 23, 2001, and June 24, 2014, respectively; European Union Trade Mark Registration Number 000152389, registered on June 22, 1998; and Canada Registration Number TMA331,565, issued on September 4, 1987 (collectively the “DISCOVER trademark”).
The Domain Name was registered on September 3, 2021. The Complainant provided evidence that the Domain Name resolved to a web site that uses the Complainant’s logo and mailing address in order to create the false impression that the site is operated by the Complainant.
5. Parties’ Contentions A. ComplainantThe Complainant states that it is a leading credit card issuer and electronic payment services company with a highly recognizable financial services brand. The Complainant states that it offers a credit card with the DISCOVER trademark, and also uses the mark through its Discover Bank subsidiary in connection with services that offer personal and student loans, auto loans, online savings products, debt management, certificates of deposit, and money market accounts. The Complainant states that its payment processing businesses consist of the Discover Network, with millions of merchant and cash access locations. The Complainant states that it has thousands of employees and the products and services sold under the DISCOVER trademark is advertised and promoted around the world. The Complainant argues that through extensive use of its DISCOVER mark, the mark is a famous mark.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s DISCOVER trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith. The Complainant has presented evidence that the Respondent is using the Domain Name to host a web site that features the Complainant’s logo and mailing address. The Complainant argues that the web site is designed to confuse visitors to the site into believing that they are visiting the Complainant’s web site. The Complainant suggests that the site is likely used for phishing or fraudulent purposes.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has demonstrated that it owns rights in the DISCOVER trademark. The DISCOVER trademark is clearly recognizable in the Domain Name. The addition of the word “finance” in the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s DISCOVER trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Under these circumstances, the Panel finds that the Domain Name is confusingly similar to the Complainant’s DISCOVER trademark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
In this case, the Complainant has put forward a prima facie case and no evidence has been presented that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. The Complainant has alleged that the Respondent is using the Domain Name in connection with a web site that uses the Complainant’s logo and mailing address to create the misleading impression that the web site is associated with the Complainant. The Respondent has not refuted these allegations. In the Panel’s view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
“(i) circumstances indicating that the respondent has registered or acquired the domain name at issue primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.”
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Domain Name is being used in connection with a web site that uses the Complainant’s logo and mailing address in order to create the false impression that the site is operated by the Complainant. It appears likely that the site is being used for a fraudulent scheme, such as phishing, and the Respondent knew of the Complainant’s DISCOVER trademark when registering the Domain Name. The Panel finds that the use of the Complainant’s trademark in the Domain Name and in the heading at the top of the page of the web site hosted on the Domain Name demonstrates an intent by the Respondent to attract Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s DISCOVER trademark, which presumably results in commercial gain to the Respondent. In this regard, the Panel notes the additional term “-finance” in the Domain Name is descriptive of the Complainant’s business, the pairing of the term with the Complainant’s trademark in the Domain Name creates a misleading impression that the Domain Name is associated with the Complainant. Under the circumstances, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Michelle Brownlee
Sole Panelist
Date: November 10, 2021