Discover Financial Services Corp. v. Bob Rutz
Claim Number: FA1112001418421
Complainant is Discover Financial Services Corp. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Bob Rutz (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discoverrebate.com>, <discoverrebatecard.com>, <discoverdiscounts.com>, <discoverrebates.mobi>, and <discoverphone.mobi>, (together referred to as "the Domain Names") registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2011; the National Arbitration Forum received payment on December 5, 2011.
On December 6, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <discoverrebate.com>, <discoverrebatecard.com>, <discoverdiscounts.com>, <discoverrebates.mobi>, and <discoverphone.mobi> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@discoverrebate.com, postmaster@discoverrebatecard.com, postmaster@discoverdiscounts.com, postmaster@discoverrebates.mobi, and postmaster@discoverphone.mobi. Also on December 13, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 4, 2012.
Further correspondence was received from both parties re a domain name not the subject of these proceedings. These were informal e-mails and not formal additional submissions under the Rules. The Panel has not found it necessary to have regard to these additional documents.
On January 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant's submissions can be summarised as follows:
The Complainant is a leading credit card issuer and electronic payment services company. It operates the DISCOVER card in addition to offering personal loans, savings products, certificates of deposit and money market accounts through its DISCOVER Bank subsidiary. Its payment businesses consist of DISCOVER NETWORK with millions of merchant and cash access locations; PULSE one of the US's leading ATM/debit networks; and DINERS CLUB INTERNATIONAL, a global networks company with acceptance in more than 185 countries and territories. It has thousands of employees and products and services sold under the DISCOVER mark are advertised and promoted across the US and around the world.
The Complainant has a US trade mark registration for the DISCOVER mark covering financial services first used in 1985. The Complainant has made extensive use of the DISCOVER mark by providing financial services throughout the US and the world. The Complainant's marks have become famous.
The Respondent registered the Domain Names well after use of the DISCOVER mark throughout the US and multiple foreign jurisdictions and the filing of US and international applications for registration of the mark.
The Respondent registered the Domain Names with full knowledge of the Complainant's famous marks and with intent to profit from using the Complainant's trade marks.
Before receipt of the Complainant's first demand letter the Respondent used <discoverrebate.com> and <discoverrebatecard.com> in relation with a pay per click advertising campaign and before and after receipt of the letter attempted to contact the Complainant in order to pitch a marketing system he has devised involving the Domain Names. Respondent proposed to lease use of the Domain Names to the Complainant for profit. Respondent reiterated his demands for money in exchange for use of the Domain Names in a phone call on October 31 as well as letters on November 1, 2 and 3. The Complainant was made aware of <discoverdiscounts.com>, <discoverrebates.mobi> and <discoverphone.mobi> through this correspondence and thus sent a follow up letter demanding transfer of all the Domain Names. Respondent failed to transfer the Domain Names to the Complainant and renewed his demands that the Complainant buy into his marketing system including payment for the privilege of using the Domain Names. Meanwhile Respondent has "unparked all domains which include the word discover" while awaiting the Complainant's response to his offer to lease the Domain Names.
Complainant has not given the Respondent any permission to use the Domain Names.
The Domain Names are identical and confusingly similar to the Complainant's marks and fully incorporate the DISCOVER mark. The only difference is the addition of the generic terms "rebate", "rebates", "discount", "card" and "phone" which do not negate the confusingly similar character of the Domain Names.
Respondent lacks rights or legitimate interests in the Domain Names. He has never been known by the Domain Names or used any mark similar to them other than the infringing use noted herein. Respondent has never operated any bona fide or legitimate business under the Domain Names and has not made protected non commercial or fair use of the Domain Names.
Respondent registered and uses the Domain Names in bad faith.
At time of registration the Respondent had constructive knowledge of the Complainant's marks on the US register.
Respondent had actual knowledge of the Complainant's mark as evidenced by use of generic terms relevant to the Complainant's industry and products. Further the repeated pursuit of communication with the Complainant after September 2010 evidences bad faith. Four of the names were registered after September 2010
At least half of the Domain Names have been put to use to intentionally attract for commercial gain Internet users to the Respondent's web site by creating a likelihood of confusion as to the source or endorsement of the Respondent's site or a product or service offered by it.
In his communications with the Complainant the Respondent clearly indicates that his primary purpose in acquiring the Domain Names was selling renting or otherwise transferring the Domain Names to the Complainant the owner of the DISCOVER trade mark for valuable consideration in excess of out of pocket costs.
B. Respondent
The Respondent will happily transfer <discoverrebate.com>, <discoverrebatecard.com>, <discoverrebates.mobi> and <discoverphone.mobi> to the Complainant if it withdraws its complaint. Further if the Panel decides that <discoverrebatecard.com> is confusingly similar to a product or service of the Complainant, Respondent will transfer it without further litigation.
Rebates, discounts and phones are not confusingly similar to any of the Complainant's financial services.
<discoverdiscounts.com> and the Respondent's marketing system has enormous value independently from Visa, Mastercard, American Express or Discover.
The Respondent has never profited and never intended to profit from the value of the Discover trade mark and the Complaint is brought in bad faith in an attempt at Reverse Domain Name hijacking.
USPTO's Trademark Electronic Search System lists 766 live trade marks using the word "discover". 16 of these are word marks only for "Discover" and all 16 are not owned by the Complainant or its affiliates. There are at least 16 more uses of the word "discover" with artwork. The Complainant has been unable to stop 30 plus others from using the single word discover, never mind the 700 plus uses where "discover" is combined with other words.
There are many hundred of registered domain names with the word "discover" in them. "Discover" is a word which can be and is being used in thousands of different contexts without creating any confusion with the Complainant. The word "discover" is already diluted and the Complainant does not have exclusive use of it.
Domain Names are now coming to be seen as content indicators as well as an indication of source. As long as there is no confusion as to source, such content indicating uses of domain names are likely to be fair uses of the trade marks for others.
An independent marketing system such as the Respondent's cannot possibly be confusingly similar to any of the Complainant's services.
<discoverdiscounts.com> is not a credit card.
Respondent has acquired over 200 domain names over the years and currently holds 185. All of them have business purposes, none of them have cybersquatting purposes. Buying, selling, operating and maintaining these domain names are a major part of the Respondent's business life. None of this attempts to exploit the goodwill of Discover card or anyone else who uses the term Discover.
The independent marketing system developed for <discoverdiscounts.com> is intended to become the biggest breakthrough in marketing history. However starting the system needs a lot of capital and time unless it is launched simultaneously in every city and country of the world. The Complainant has wrongly presented the fact of the Respondent recognising the advantages of an instant start up with one of the four credit card, as compared with raising capital and a three year lead time, as cybersquatting.
Discoverdiscounts.com was registered in 2004 long before any approaches to the Complainant. The Respondent registered and is using the Domain Names in relation to his own business which does not rely on exploiting any goodwill of the Discover card. Complainant cannot prove his allegation that the Respondent's 2004 registration was done for the purposes of marketing it to the Complainant.
The Respondent was not aware of the pay-per-click ad scheme pages and quickly unparked them as soon as they were brought to his attention. He did not receive any money in relation to these because nobody clicked on any of them.
Respondent has legitimate rights to the subject domains with the possible exception of <discoverrbatecard.com>, the Domain Names are neither confusingly similar nor nearly identical to the Complainant's mark and the Respondent has a proven interest in the Domain Names which were registered and used in good faith.
The Complainant arranged for the anonymous purchase of discoverrebates.com from the Respondent for $2000. This sequence from undercover acquisition of <discoverrebates.com> to these UDRP proceedings is Reverse Domain Name hijacking.
The Complainant is a leading credit card issuer and electronic payment services company. The Complainant has a US trade mark registration for the DISCOVER mark covering financial services first used in commerce in 1985.
The Respondent proposed to the Complainant that they collaborate in relation to a marketing system involving the Domain Names whereby the Domain Names would be leased to the Complainant for financial reward. The Respondent has registered similar domain names relating to American Express as disclosed in e-mail correspondence attached to the Complaint.
The Respondent offered to transfer <discoverrebate.com>, <discoverrebatecard.com>, <discoverrebates.mobi> and <discoverphone.mobi> to the Complainant if it withdrew its complaint.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel's view is that the Complainant has shown it has rights in the name DISCOVER and the Domain names are confusingly similar to the Complainant's trade mark consisting of that mark plus generic terms used in commerce. Further the Panel is of the opinion that the evidence shows that the Respondent has registered the Domain Names for the purpose of renting them to the Complainant for valuable consideration in excess of documented out of pocket costs related to the Domain Names. As such the Panel is of the view that the Domain Names were adopted in bad faith. The Panel sees no reason not to state its basic finding on these issues in relation to all the Domain Names even though the Respondent has agreed to transfer the Domain Names to the Complainant (except for <discoverdiscounts.com>). Indeed these basic findings give the Panel the jurisdiction to order transfer of the Domain Names under the Policy.
In circumstances such as this where the Respondent has not contested the transfer of domain names the subject of these proceedings and agrees to transfer them to the Complainant, however, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the relevant domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent agreed to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). As such the Panel will order the transfer of <discoverrebate.com>, <discoverrebatecard.com>, <discoverrebates.mobi> and <discoverphone.mobi> to the Complainant on this basis.
The Respondent has not agreed to transfer <discoverdiscounts.com> and the Panel's findings are as follows:
Apart from the .com suffix which is not taken into account for the purposes of the Policy, <discoverdiscounts.com> consists of "discover" a term identical to the Complainant’s DISCOVER registered trade mark and the generic word “discounts”. The addition of the generic word “discounts” does not serve to distinguish this domain name from the Complainant’s mark. In Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), and Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000), the Panels also held, as is commonly accepted under the Policy that the addition of generic terms does not sufficiently distinguish a domain name from a Complainant's mark. The Respondent does not appear to dispute the Complainant's Rights in its trade mark for financial services, but denies that <discoverdiscounts.com> is confusingly similar to the DISCOVER trade mark under the terms of the Policy because "discover" is a generic word. However as held in Precious Puppies of Florida Inc. v kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) such arguments are not examined under the first limb of the Policy, but are relevant to the second and third limbs of the Policy and are, therefore, considered below. As such the Panelist finds that the Domain Name is confusingly similar to the Complainant’s registered trade mark DISCOVER for the reasons given above and as such the Complainant satisfies para 4(a)(i) of the Policy.
The Respondent argues that he has a legitimate business interest in using the <discoverdiscounts.com> name and the use is generic and bona fide. He does not claim he is commonly known by the term "discover" or that he is making non commercial use of this domain name. However it is clear from the similar domain names registered in relation to American Express including <americanexpressdiscounts.com> and the approaches to the Complainant explaining how the marketing scheme would relate to the Complainant's business as well as how similar schemes would relate to the business of other credit card companies that the use of "discover" in <discoverdiscounts.com> is in relation to the Complainant and its name and trade mark and not the generic word "discover" meaning "to find". The documents show the Respondent repeatedly contacted the Complainant to attempt to persuade it to lease the Domain Names including <discoverdiscounts.com> for profit. In Deutsche Lufthansa AG v. Future Media Architects, Inc., FA 1153492 (Nat. Arb. Forum Apr. 17, 2008), and Trice v. Dill, FA 1369280 (Nat. Arb. Forum Mar. 10, 2011), the Panels found that an offer to lease a domain name to a Complainant for profit can be evidence that the Respondent lacks rights and legitimate interests and here where the use of "discover" so obviously relates to the Complainant the Panel is convinced the use is not generic and bona fide and the Complainant has proven that the Respondent lacks rights and legitimate interests in relation to <discoverdiscounts.com> under the second limb of the Policy.
As discussed above, the Complainant has proven that the Respondent made multiple offers to lease discoverdiscounts.com to the Complainant for profit. In Wake Forest Univ. v. Needham, FA 125751 (Nat. Arb. Forum Nov. 27, 2002), and STMicroelectronics Inc. v. Trabalza, FA 100637 (Nat. Arb. Forum Dec. 18, 2001), the Panels held that an offer to lease a disputed domain name to a complainant could demonstrate bad faith registration and use. The Panel is satisfied that in this case, in view of the repeated targeting of the Complainant, the request for considerable financial remuneration for the leasing of the Domain Names including <discoverdiscounts.com> and the Panel’s findings that the use of “discover” relates to the Complainant and its trade mark that it does so in this case and the Complainant has shown bad faith under paragraph 4(b) (i) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <discoverrebate.com>, <discoverrebatecard.com>, <discoverdiscounts.com>, <discoverrebates.mobi>, and <discoverphone.mobi> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 24, 2012
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