Discover Financial Services v. Parkedcc
Claim Number: FA1206001450021
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Parkedcc (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2012; the National Arbitration Forum received payment on June 22, 2012.
On June 21, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 June 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@mdiscovercard.com, postmaster@myddiscovercard.com, postmaster@mydiscoverccard.com, and postmaster@mydiscoverrcard.com. Also on June 25, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant has rights in its mark by virtue of its United States Patent and Trademark (“USPTO”) registration for the DISCOVER mark (Reg. No. 1,479,946 registered March 8, 1988);
2. The <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names are confusingly similar to the DISCOVER mark;
3. Respondent has no rights or legitimate interests in the disputed domain names;
4. The disputed domain names were registered and used in bad faith;
5. Respondent is not commonly known by the <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names;
6. The disputed domain names resolve to websites that display pay-per-click links to Complainant’s direct competitors;
7. The <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names are disruptive to Complainant’s business;
8. The disputed domain names create confusion so that Respondent may attract Internet users and commercially gain;
9. At the time of registration of the disputed domain names, Respondent had constructive and/or actual knowledge of Complainant’s rights in the DISCOVER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a leading provider of credit cards and electronic payments and other financial services.
2. Complainant has rights in its mark by virtue of its United States Patent and Trademark (“USPTO”) registration for the DISCOVER mark (Reg. No. 1,479,946 registered March 8, 1988).
3. Respondent registered the <mdiscovercard.com> domain name on September 22, 2006 and the <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names on August 24, 2006. They resolve to parked web pages containing links to financial services, many of which are direct competitors of Complainant.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it has rights in the DISCOVER mark. Complainant asserts these rights based on its registration owned with the USPTO for the DISCOVER mark (Reg. No. 1,479,946 registered March 8, 1988) which is used in connection with credit card and electronic payment goods and services. Panels have found that when a mark is registered with a federal trademark authority it is evidence of having rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Therefore, the Panel finds that Complainant has rights in the DISCOVER mark pursuant to Policy ¶ 4(a) (i).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s DISCOVER mark. In that regard, Complainant argues that the <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names are confusingly similar to the DISCOVER mark. Complainant argues that Respondent simply makes some of the following additions to the trademark: letters, a generic term, a descriptive term, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of letters to a mark in a domain name fails to differentiate the disputed domain names from the DISCOVER mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). The Panel also finds that the addition of generic and/or descriptive terms similarly does not create a distinction between the <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names and the DISCOVER mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a) (i)). Finally, the Panel finds that Respondent’s addition of a gTLD is irrelevant to a Policy ¶ 4(a) (i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a) (i) analysis). Therefore, the Panel finds that Respondent’s <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names are confusingly similar to the DISCOVER mark under Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbara Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s DISCOVER trademark and to use it in its domain names, making various minor changes including the addition of letters, a generic term and a descriptive term to the trademark before embodying it in the domain names;
(b) Respondent has then decided to use the domain names to resolve to parked web pages containing links to financial services, many of which are direct competitors of Complainant;
(c)Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant also contends that Respondent is not commonly known by the <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names. Complainant asserts that Respondent has never owned or used a trademark reflected by any of the disputed domain names and that Respondent has not been permitted or otherwise authorized by Complainant to use the DISCOVER mark. Finally, Complainant provides the Panel with the WHOIS records for the disputed domain names, which list “Parkedcc” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c) (ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e)Complainant contends that Respondent’s use of the <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names does not give Respondent rights or legitimate interests in the disputed domain names. Complainant argues that the disputed domain names resolve to websites which feature links to Complainant’s competitors in the credit card and electronic payment industries. Complainant provides the Panel with screenshots of these websites, which the Panel finds show the links under headings such as “Apply For Credit Card” and “Card Payments.” Panels have found that the display of competing links on a disputed domain name is not protected, for UDRP dispute purposes, under Policy ¶¶ 4(c) (i) and 4(c)(iii). See Disney Enters., Inc. v. Kimble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s use of the <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names are disruptive to Complainant’s business conducted under the DISCOVER mark. Complainant argues that the <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names resolve to websites that display links to Complainant’s competitors in the credit card and electronic payment industries and adduces evidence to that effect which the Panel accepts. Panels have found that the registration and such use of a disputed domain name are disruptive. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Therefore, as the Panel finds that the <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names are disruptive to Complainant’s business, the Panel also finds that the disputed domain names were registered and are being used in bad faith under Policy ¶ 4(b) (iii).
Secondly, Complainant argues that the <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names were registered and are being used to attract Internet users by creating confusion as to the source of the domain names. Complainant alleges that this scheme allows Respondent to profit from the disputed domain names. Complainant states that the disputed domain names resolve to websites that display links to Complainant’s competitors, screenshots of which the Panel finds show the links under headings such as “Credit Card No Credit” and “Banks of Credit Card.” Therefore, the Panel finds that Respondent registered and is using the <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names in bad faith by attempting to take commercial advantage of Internet user confusion pursuant to Policy ¶ 4(b) (iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Thirdly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant’s rights in the DISCOVER mark. Complainant argues that Respondent had constructive knowledge of Complainant’s rights in the DISCOVER mark when registering the <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com> and <mydiscoverrcard.com> domain names. Complainant argues that its USPTO registration for the DISCOVER mark is the basis of this constructive knowledge. Complainant additionally asserts that Respondent had actual knowledge of Complainant’s rights, as indicated by Respondent’s use of the DISCOVER mark in each of the disputed domain names and the use of the domain names to display industry-relevant content. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds on the evidence that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a) (iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a) (iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the DISCOVER mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mdiscovercard.com>, <myddiscovercard.com>, <mydiscoverccard.com>, and <mydiscoverrcard.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 25, 2012
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