Discover Financial Services v. adilizer.com
Claim Number: FA1609001692389
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is adilizer.com (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <financesdiscover.com>, registered with FABULOUS.COM PTY LTD.; Fabulous.com Pty Ltd.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2016; the Forum received payment on September 6, 2016.
On September 6, 2016, FABULOUS.COM PTY LTD.; Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <financesdiscover.com> domain name is registered with FABULOUS.COM PTY LTD.; Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD.; Fabulous.com Pty Ltd has verified that Respondent is bound by the FABULOUS.COM PTY LTD.; Fabulous.com Pty Ltd registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 2016 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@financesdiscover.com. Also on September 8, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Discover, is a leading credit card issuer and electronic payment services company operating in over 185 countries and territories. Complainant uses the DISCOVER mark in connection with its business and has gained rights in the mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,479,946, registered March 8, 1988). Respondent’s domain name, <financesdiscover.com>, is confusingly similar to the DISCOVER mark as the domain name incorporates the entire mark and only adds the generic term “finances,” which is not sufficient to differentiate the domain name from the DISCOVER mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name. Respondent’s use of the domain name, to operate a website containing links to financial services competing with Complainant’s services, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and used the disputed domain name in bad faith. Respondent using the domain name to operate a pay-per-click advertising website demonstrates a bad faith attempt to confuse and attract internet users for commercial profit. Further, Respondent had actual knowledge of Complainant’s DISCOVER mark based on the fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <financesdiscover.com>, domain name.
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(f), 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 (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.”).
Complainant claims that it has rights in the DISCOVER mark based on registration of the mark with the USPTO (Reg. No. 1,479,946, registered March 8, 1988). Panels have repeatedly held, and this Panel also finds, that a complainant’s registration of a mark with the USPTO is sufficient to establish rights in a mark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant next claims that Respondent’s domain <financesdiscover.com> is confusingly similar to the DISCOVER mark. Respondent’s domain name includes the entire DISCOVER mark and differs from the mark through the addition of the term “finances” and the generic top-level domain “.com.” Panels have held that adding a generic term to a mark and a gTLD does not differentiate a mark from a domain name for purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel finds that the Respondent’s domain name is confusingly similar to the DISCOVER mark for purposes of Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant contends that Respondent has not been commonly known by the disputed domain name. WHOIS information associated with the disputed domain name identifies Respondent as “adilizer.com,” which does not resemble the disputed domain name. Panels have held that a respondent is not commonly known by the disputed domain name based on WHOIS information and a lack of information to the contrary. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum August 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel finds that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next contends that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name, as resolved for Complainant on Sept. 2, 2016, resolves to a website displaying multiple links with titles such as, “Credit Repair Services,” “Credit Repair Companies,” “Credit Report and Score,” “Fix My Credit,” and “How to Fix Bad Credit.” Panels have held that a respondent does not make a bona fide offering of goods or services where the respondent uses a confusingly similar domain name to display links to services that compete with the services offered by a complainant. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent’s use of the disputed domain name does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant has proved this element.
Complainant claims that Respondent using the domain name to operate a pay-per-click advertising website demonstrates a bad faith attempt to confuse and attract internet users for commercial profit. As stated above, Respondent’s domain name resolves to a website that includes various links related to the credit card industry. Panels have found bad faith where a respondent used a confusingly similar domain name to resolve to a website hosting commercial links that compete with a complainant’s own offering of services. See Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum February 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”); Liberty Mutual Insurance Company v. Richard Jones, FA 1330673 (Forum July 23, 2010) (finding that Respondent’s use of the confusingly similar <libertymutuel.com> domain name, a misspelled version of Complainant’s LIBERTY MUTUAL mark and official <libertymutual.com> website, to intentionally attract Internet users to Respondent’s website for commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel finds that Respondent has shown bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's DISCOVER mark, it is unlikely that Respondent could have registered the <financesdiscover.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <financesdiscover.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: October 10, 2016
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