The Complainant is Discord Inc., United States of America (“United States”), represented by BRANDIT GmbH, Switzerland.
The Respondent is Legato LLC, Russian Federation / Ivan Talypin, Russian Federation.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2021. On November 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 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 the Complainant on November 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent to the Parties a document related to the language of the proceeding. On December 2, 2021, the Complainant requested an extension of the due date to provide a response in relation to the language of the proceeding. On the same date, the Center extended this due date to December 8, 2021. On December 7, 2021, the Complainant submitted a request that the language of the proceeding be English. The Complainant filed an amended Complaint on December 8, 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 the Respondent of the Complaint, and the proceedings commenced on December 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2022. The Respondent submitted several communications to the Center on December 1, 3, 17, 21, and 24, 2021, the last of which contained a confirmation that the Respondent had already provided the information that it was able to provide to the Center. Accordingly, the Center confirmed the Respondent’s response on January 4, 2022.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 21, 2022. 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 is the developer of Discord – a free voice, video, and text chat application for web and mobile platforms, created in 2015 and originally developed for videogame players as a chat app to communicate with friends while playing games online and to have a place to provide running commentary.
In 2020, the Complainant’s application had 300 million registered users, more than 14 million daily active users, and 140 million monthly active users worldwide.
The Complainant is the owner of the following trademark registrations for the sign “DISCORD” (the “DISCORD trademark”):
− the United States trademark DISCORD with registration No. 4930980, registered on April 5, 2016 for goods and services in International Classes 9 and 38;
− the Chinese trademark DISCORD with registration No. 17248710, registered on August 28, 2016 for goods in International Class 9;
− the European Union trademark DISCORD with registration No. 018003521, registered on June 22, 2019 for goods and services in International Classes 9 and 38; and
− the International trademark DISCORD with registration No. 1493333, registered on August 27, 2019 for goods and services in International Classes 9 and 38.
The Complainant is also the owner of the domain names
The disputed domain name was registered on May 8, 2017. It resolves to a website that contains a list of servers on the Complainant’s Discord platform.
5. Parties’ Contentions A. ComplainantThe Complainant submits that due to extensive use, advertising, and revenue associated with its DISCORD trademark, it enjoys a high degree of renown around the world, including in the Russian Federation, where the Respondent is based, and its social media account on Instagram is followed by more than 1 million users, while its Twitter account is followed by over 2.5 million users.
The Complainant states that the disputed domain name is confusingly similar to their DISCORD trademark, because it incorporates the Complainant’s DISCORD trademark in its entirety together with the dictionary word “server”, which is closely connected to the Complainant’s business and activities. The Complainant notes in this regard that within its Discord platform, communities are organized into discrete collections of channels called “servers”. Starting from October 2017, the Complainant allows game developers and publishers to verify their servers and the verified servers, like verified accounts on social media sites, have badges to mark them as official communities.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the disputed domain name was registered by the Respondent after the first registration of the Complainant’s DISCORD trademark, and the Complainant has not authorized the Respondent to use this trademark or to register or use the disputed domain name. The Complainant adds that the Parties are not affiliated to each other, the Respondent is not commonly known by the disputed domain name, and does not have any trademark rights in it.
The Complainant submits that the disputed domain name resolves to a website that displays the DISCORD trademark and contains a list of more than 25,000 servers on the Complainant’s Discord platform, and the “Add server”, “Support”, “Log-in”, and “Partners” sections at the top of the website redirect to the Complainant’s official webpages. The Complainant points out that at the time of filing of the Complaint, the Respondent’s website did not include any disclaimer of affiliation with the Complainant. According to the Complainant, the Respondent’s website thus creates an unauthorized association with the Complainant and a likelihood of confusion with its activity.
The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that by a simple online search of the term “discord”, the Respondent would have inevitably learnt about the Complainant, its trademark, and business. Nevertheless, the Respondent chose to incorporate the distinctive DISCORD trademark in the disputed domain name in its entirety, and associated it to a website that referred to the Complainant and redirected users to the Complainant’s website without displaying a disclaimer of affiliation with it, thus showing that the Respondent was well aware of the Complainant and its DISCORD trademark when registering the disputed domain name, and registered it intentionally in order to take advantage of the reputation of this trademark and of the Complainant’s goodwill by misleading the potential consumers that the paid services advertised on the Respondent’s website are official and authorized by the Complainant. The Complainant notes that after the filing of its Complaint, the Respondent added at the bottom of the website of the disputed domain name, after a long list of 50 servers, a disclaimer that it “is not affiliated with Discord Inc”. According to the Complainant, this disclaimer is not sufficient to avoid a likelihood of confusion in Internet users. The Complainant adds that the Respondent also offers its customers paid services called “Premium Offers”, namely, “Boost” and “Turbo Boost”, thus exploiting the Complainant’s reputation for financial gain.
B. RespondentThe Respondent submits that the Complaint has no factual arguments, and the disputed domain name and the Complainant’s domain name
The Respondent states that the disputed domain name was created by fans of the Discord application for all other such fans. The Respondent maintains that he has never presented his website as the official Discord site, has never posted about it anywhere, and has never deceived its users, who use the words “discord” and “server”, so that they can understand the theme of the Respondent’s website. According to the Respondent, the users of his website would not confuse the disputed domain name with the official website of the Complainant at the domain name
The Respondent states that he has never tried to cheat anyone or to harm the reputation of the Complainant. According to him, a reputational damage to the Complainant can be caused by the news that the Respondent’s website, being one of the oldest fan sites dedicated to finding Discord servers, has lost its domain name.
The Respondent points out that he has included a disclaimer on the website so that visitors can understand that it is not affiliated with the official site of the Complainant. The Respondent notes that he has sent a message to the Complainant with a request for official permission to use the disputed domain name.
The Respondent doubts that the Complaint was actually initiated by the Complainant, because according to him, the Complainant always supports any developers who create some kind of fan projects with the word “discord” in their domain names. In this regard, the Respondent submits that he is an officially verified Discord bot developer, and the operation of his website depends on the Discord application and the Discord developer panel, but has not been contacted directly by the Complainant’s staff, who can shut down his website working process by using their administrator powers if the Respondent does not change the domain name that he is using, instead of initiating a proceeding under the Policy. In this regard, the Respondent requests that the Complainant provide documents confirming the authorization of its counsel to file complaints about domain names on behalf of the Complainant, as well as a document confirming the knowledge and consent of the Complainant to make a Complaint about the disputed domain name.
The Respondent states that he prohibits the disclosure of his personal data or personal information about him in any publicly available documents and on the Internet, and allows that this decision includes only the Respondent’s initials, instead of his first and last name.
6. Discussion and Findings 6.1. Procedural issue – language of the proceedingAccording to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, 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 Complainant requests that the language of the present proceeding be English. In support of this request, the Complainant points out that the disputed domain name incorporates common English words, that the associated website has an English version, and that all communications by the Respondent to the Center were made in English. In view of these, the Complainant submits that the Respondent has a good knowledge of English.
The Complainant also notes that it is a company incorporated in the United States and is not sufficiently familiar with the Russian language as to handle the administrative proceeding in it, and if the Complainant has to provide a translated version of the Complaint and make its subsequent communications in Russian in the present proceedings, their translation would entail significant additional costs for the Complainant and delay in the proceedings.
The Center has sent all its communications to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not submitted any objections to the Complainant’s request that the proceedings be held in English, and has sent all its communications in this proceeding in English.
The above satisfies the Panel that the Respondent would not be disadvantaged if the language of the proceeding is English, and that using the English language in this proceeding would be fair and efficient.
Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.
6.2. Procedural issue – disputed authority of the Complainant’s counselThe Respondent disputes that the Complainant’s counsel has been properly authorized by the Complainant to submit the Complaint and to initiate this proceeding.
Paragraph 3(b)(xiii) of the Rules requires that the Complainant certifies that the information contained in Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.
The Complainant’s counsel has included the above certification in the Complaint. The Respondent has not submitted any evidence that may justify any doubts in the authority of the Complainant’s counsel, and the Panel is not aware of any reason not to rely on the certifications included in the Complaint.
Therefore, the Respondent’s objection is dismissed.
6.3. Procedural issue – publication of personal data of the RespondentThe Respondent requests that none of his personal data is disclosed in this decision.
By registering the disputed domain name, the Respondent has accepted the Policy, including this provision. The Registrar has confirmed that the Policy applies to the disputed domain name.
Paragraph 4(j) of the Policy, titled “Notification and Publication”, provides that “[…] All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” Paragraph 16(b) of the Rules provides that “Except if the Panel determines otherwise (see Paragraph 4(j) of the Policy), the Provider shall publish the full decision and the date of its implementation on a publicly accessible web site. In any event, the portion of any decision determining a complaint to have been brought in bad faith (see Paragraph 15(e) of these Rules) shall be published.”
The Respondent has put forward no justification why the present case is somehow exceptional and why any portion of the present decision, specifically his personal data, should be redacted. The Panel is not aware of any reason why this should be so.
Therefore, the Panel denies the request of the Respondent. As required by the Policy and the Rules, the present decision will include the registrant and contact information for the disputed domain name that was disclosed by the Registrar, and will be officially published.
6.4 Substantive issuesPursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name was registered and is being used in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”
A. Identical or Confusingly SimilarThe Complainant has provided evidence that he is the owner of the DISCORD trademark and has thus established his rights in this trademark for the purposes of the present proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant element of the disputed domain name is “discord-server”. This sequence incorporates the DISCORD trademark in its entirety together with the dictionary word “server” and a hyphen separating the two words. The DISCORD trademark is easily recognizable in the disputed domain name.
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 section 1.7 of the WIPO Overview 3.0.
Contrary to what the Respondent maintains, the inclusion of the dictionary word “server” in the disputed domain name does not justify a different conclusion. Rather, as noted by the Complainant, this word is closely connected to the organization of the Complainant’s Discord platform, where communities are organized into discrete collections of channels called “servers”, so the addition of the word “server” in the disputed domain name affirms the finding of confusing similarity.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the DISCORD trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out 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. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because it was registered after the DISCORD trademark, and the Complainant has not authorized the Respondent to use this trademark or to register or use the disputed domain name. The Complainant adds that the Parties are not affiliated to each other, the Respondent is not commonly known by the disputed domain name and does not have any trademark rights in it. According to the Complainant, the Respondent’s website creates an impression of an unauthorized association with the Complainant and a likelihood of confusion with its activity, because it resolves to a website that displays the DISCORD trademark and contains a list of thousands of servers on the Complainant’s Discord platform as well as links that redirect to the Complainant’s official webpages. The Complainant points out that at the time of filing of the Complaint, the Respondent’s website did not include any disclaimer of affiliation with the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent states that the disputed domain name was created by fans of the Discord application for all other such fans. The Respondent maintains that he has never presented his website as the official Discord site, has never posted about it anywhere, and has never deceived its users, who use the words “discord” and “server”, so that they can understand the theme of the Respondent’s website. The Respondent also points out that he has included a disclaimer on his website given the lack of affiliation with the Complainant.
As discussed in paragraph 2.5 of the WIPO Overview 3.0, fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner, and the correlation between a domain name and the complainant’s mark is often central to this inquiry. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.
In the present case, the disputed domain name consists of the Complainant’s trademark combined with the word “server”, which is the specific and well-known term used for an important element of the Complainant’s ecosystem. More than that, given the way the Complainant’s communities are organized, the chosen additional term is, from what the Panel can see, the most natural term which (when combined with its mark) would signal the Complainant. The associated website indeed contains a list of servers on the Complainant’s platform, and as shown by the Complainant, it did not include any disclaimer for the lack of relationship with the Complainant prior to the commencement of this proceeding. All this creates a misleading impression of a relationship with or endorsement by the Complainant of the disputed domain name and the associated website. The Respondent does not deny that he offers paid services on his website, which shows that at least partially his activities are carried out for financial gain.
The Panel does not consider that the disclaimer for the lack of relationship between the Parties that was recently included by the Respondent on his website should be taken into account. It appeared only after the Respondent became aware of the Complaint, so it is more likely that its inclusion was made to cover the Respondent’s tracks so to speak, and to create an appearance of legitimacy of the Respondent for the purposes of the present proceeding. However, even if this disclaimer is taken into account, its presence (never mind the timing) would not render the Respondent’s activities bona fide under the Policy. When Internet users have a chance to read the disclaimer they have already been attracted to the Respondent’s website, under the impression that it is associated with the Complainant, and would be exposed to its content, including the offers for paid services that appear on the Respondent’s website.
In view of the above, the Panel accepts that it is more likely than not that the Respondent, being well aware of the goodwill of the Complainant’s DISCORD trademark, has registered the disputed domain name in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s website, and this is at least partially done for commercial gain. Therefore, the Panel does not consider that the Respondent’s registration and use of the disputed domain name is “fair” and gives rise to rights and legitimate interests in it.
For these reasons, the Panel finds that the Respondent does not have rights and legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As discussed above, the disputed domain name incorporates the DISCORD trademark combined with a term used for an important element of the Complainant’s ecosystem. The associated website contains a list of servers on the Complainant’s platform, and it did not include any disclaimer for the lack of relationship with the Complainant prior to the commencement of this proceeding. All this creates a false impression of a relationship with or endorsement by the Complainant of the disputed domain name and the associated website. The Respondent does not deny that he offers paid services on his website, which shows that at least partially his activities are carried out for financial gain.
Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the DISCORD trademark in an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the DISCORD trademark as to the affiliation or endorsement of its website and of the services offered on it.
Therefore, the Panel finds that the disputed domain name has been registered and used 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 disputed domain name
Assen Alexiev
Sole Panelist
Date: February 4, 2022