Discover Financial Services v. Zx Domains c/o Sezar Sak
Claim Number: FA0705000989382
Complainant is Discover Financial Services (“Complainant”), represented by Baila
H. Celedonia, of Cowan, Liebowitz & Latman, P.C.,
1133 Avenue of the
REGISTRAR
The domain names at issue are <diccovercard.com>, <dicoverard.com>, <dikscovercard.com>, <disc0overcard.com>, <disc0vercard.com>, <disc9vercard.com>, <discaovercard.com>, <discobvercard.com>, <discocercard.com>, <discove4card.com>, <discovedrcard.com>, <discovercardc.com>, <discovercardcard.com>, <discovercardx.com>, <discovercared.com>, <discovercdard.com>, <discovertcard.com>, <discovfercard.com>, <discovwercard.com>, <discovercsard.com> and <discovercxard.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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." 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 makes the following assertions:
1. Respondent’s <diccovercard.com>, <dicoverard.com>, <dikscovercard.com>, <disc0overcard.com>, <disc0vercard.com>, <disc9vercard.com>, <discaovercard.com>, <discobvercard.com>, <discocercard.com>, <discove4card.com>, <discovedrcard.com>, <discovercardc.com>, <discovercardcard.com>, <discovercardx.com>, <discovercared.com>, <discovercdard.com>, <discovertcard.com>, <discovfercard.com>, <discovwercard.com>, <discovercsard.com> and <discovercxard.com> domain names are confusingly similar to Complainant’s DISCOVER mark.
2. Respondent does not have any rights or legitimate interests in the <diccovercard.com>, <dicoverard.com>, <dikscovercard.com>, <disc0overcard.com>, <disc0vercard.com>, <disc9vercard.com>, <discaovercard.com>, <discobvercard.com>, <discocercard.com>, <discove4card.com>, <discovedrcard.com>, <discovercardc.com>, <discovercardcard.com>, <discovercardx.com>, <discovercared.com>, <discovercdard.com>, <discovertcard.com>, <discovfercard.com>, <discovwercard.com>, <discovercsard.com> and <discovercxard.com> domain names.
3. Respondent registered and used the <diccovercard.com>, <dicoverard.com>, <dikscovercard.com>, <disc0overcard.com>, <disc0vercard.com>, <disc9vercard.com>, <discaovercard.com>, <discobvercard.com>, <discocercard.com>, <discove4card.com>, <discovedrcard.com>, <discovercardc.com>, <discovercardcard.com>, <discovercardx.com>, <discovercared.com>, <discovercdard.com>, <discovertcard.com>, <discovfercard.com>, <discovwercard.com>, <discovercsard.com> and <discovercxard.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Discover Financial Services, owns several
trademark registrations with the United States Patent and Trademark Office
(“USPTO”) for the DISCOVER mark (e.g., Reg. No. 1,479,946 issued
Respondent registered the <discovercxard.com>
domain name on
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."
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
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.
Complainant has sufficiently established rights in the
DISCOVER mark under Policy ¶ 4(a)(i) through registration of the mark with the
USPTO. See UnitedHealth Group Inc. v.
Hassan, FA 947081 (Nat. Arb. Forum
Respondent’s <diccovercard.com>, <dicoverard.com>, <dikscovercard.com>,
<disc0overcard.com>, <disc0vercard.com>, <disc9vercard.com>,
<discaovercard.com>, <discobvercard.com>, <discocercard.com>,
<discove4card.com>, <discovedrcard.com>, <discovercardc.com>,
<discovercardcard.com>, <discovercardx.com>, <discovercared.com>,
<discovercdard.com>, <discovertcard.com>, <discovfercard.com>,
<discovwercard.com>, <discovercsard.com> and <discovercxard.com>
domain names are confusingly similar to
Complainant’s DISCOVER mark despite some minor alterations. First, Respondent has added the generic
top-level domain (“gTLD”) “.com” to Complainant’s mark. Previous panels have held, as the Panel holds
here, that the addition of a gTLD is irrelevant to the consideration of whether
a domain name is confusingly similar to a mark.
See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO
Second, all of Respondent’s disputed
domain names also have the descriptive word “card” added to Complainant’s
DISCOVER mark. One of Respondent’s
domain names, <discovercardcard.com>, adds the descriptive word “card” twice. Complainant has been in the credit
card industry for over thirty years under the DISCOVER mark. Additionally, Respondent’s disputed domain
names cause greater confusion because Complainant has registered the
<discovercard.com> domain name, which it uses in connection with its
credit card business. Therefore, the
Panel finds that the addition of the descriptive word “card” to Complainant’s
mark does not alter the mark sufficiently to negate a finding of confusing
similarity under Policy ¶ 4(a)(i). See
Space Imaging LLC v. Brownell, AF-0298 (eResolution
Additionally, Respondent’s <diccovercard.com> and <discocercard.com>
domain names are confusingly similar to Complainant’s DISCOVER mark since
they use the mark in its entirety and merely misspells the mark by
interchanging one letter with another letter in the domain name (<diccovercard.com>
replaces the “s” with “c” and <discocercard.com> substitutes
the “v” with “c”). The Panel finds that
these minor misspellings do not distinguish the domain names from the mark
under Policy ¶ 4(a)(i). See Belkin
Components v. Gallant, FA 97075 (Nat. Arb. Forum
Further,
Respondent’s <dicoverard.com> is also confusingly similar as it
merely misspells the mark by omitting the “s” from the DISCOVER mark and the
“c” from “card.” The Panel finds that
the minor omissions do not alter the mark sufficiently to avoid a finding that
the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Compaq Info. Techs.
Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum
Respondent’s <disc0vercard.com>, <disc9vercard.com> and <discove4card.com>
domain names use the Complainant’s DISCOVER mark in its entirety and merely
replaces one letter with a number (<disc0vercard.com> replacing the “o” with “0,” <disc9vercard.com>
switching the “o” with “9,” and <discove4card.com> exchanging the
“r” with “4”). The Panel finds that the
replacement of the letters by a number that capitalizes on the common mistyping
of an Internet user is confusingly similar to the Complainant’s mark under
Policy ¶ 4(a)(i). See Oxygen
Media, LLC v. Primary Source, D2000-0362 (WIPO
Finally, Respondent’s <dikscovercard.com>, <disc0overcard.com>, <discaovercard.com>,
<discobvercard.com>, <discovfercard.com>, <discovwercard.com>,
<discovedrcard.com>, <discovertcard.com>, <discovercdard.com>,
<discovercsard.com>, <discovercxard.com>, <discovercared.com>,
<discovercardc.com> and <discovercardx.com> all add
a letter or number to Complainant’s DISCOVER mark (<dikscovercard.com> adds a “k,” <disc0overcard.com> adds a
“0,” <discaovercard.com> adds an “a,” <discobvercard.com>
adds a “b,” <discovfercard.com> adds a “f,” <discovwercard.com>
adds a “w,” <discovedrcard.com> adds a “d,” <discovertcard.com>
adds a “t,” <discovercdard.com> adds a “d,” <discovercsard.com>
adds an “s,” <discovercxard.com> adds an “x,” <discovercared.com>
adds an “e,” <discovercardc.com> adds a “c,” and <discovercardx.com>
adds an “x”). Panels have previously
found, as the Panel finds here, that the addition of a letter or number to a
mark does not distinguish a domain name from a mark and is therefore
confusingly similar to the mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v.
Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights or
legitimate interests in the <diccovercard.com>, <dicoverard.com>, <dikscovercard.com>,
<disc0overcard.com>, <disc0vercard.com>, <disc9vercard.com>,
<discaovercard.com>, <discobvercard.com>, <discocercard.com>,
<discove4card.com>, <discovedrcard.com>, <discovercardc.com>,
<discovercardcard.com>, <discovercardx.com>, <discovercared.com>,
<discovercdard.com>, <discovertcard.com>, <discovfercard.com>,
<discovwercard.com>, <discovercsard.com> and <discovercxard.com>
domain names. Complainant’s submission
establishes a prima facie case, which shifts the burden to Respondent to
show that it has rights or legitimate interests in the domain names. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum
The Panel may assume here that Respondent has no rights or
legitimate interests because Respondent failed to respond to the
Complaint. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Complainant asserts that
Respondent is using the disputed domain names to redirect Internet users to
Respondent’s websites, all of which display links to third-party websites
offering services in competition with Complainant and some of which also
display a link to Complainant’s website.
Respondent’s use of the disputed domain names to display links to
competing third-party websites is not a use in connection with 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). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum
Additionally, Respondent has offered no evidence and
there is no evidence present in the record to indicate that Respondent is
commonly known by the <diccovercard.com>, <dicoverard.com>, <dikscovercard.com>,
<disc0overcard.com>, <disc0vercard.com>, <disc9vercard.com>,
<discaovercard.com>, <discobvercard.com>, <discocercard.com>,
<discove4card.com>, <discovedrcard.com>, <discovercardc.com>,
<discovercardcard.com>, <discovercardx.com>, <discovercared.com>,
<discovercdard.com>, <discovertcard.com>, <discovfercard.com>,
<discovwercard.com>, <discovercsard.com> and <discovercxard.com>
domain names. Respondent’s WHOIS
information identifies Respondent as “Zx Domains
c/o Sezar Sak.” Therefore, the Panel
finds that there is insufficient evidence to indicate that Respondent is
commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See MRA Holding, LLC v. Costnet,
FA 140454 (Nat. Arb. Forum
Finally, Complainant contends that Respondent’s <diccovercard.com>, <dicoverard.com>, <dikscovercard.com>,
<disc0overcard.com>, <disc0vercard.com>, <disc9vercard.com>,
<discaovercard.com>, <discobvercard.com>, <discocercard.com>,
<discove4card.com>, <discovedrcard.com>, <discovercardc.com>,
<discovercardcard.com>, <discovercardx.com>, <discovercared.com>,
<discovercdard.com>, <discovertcard.com>, <discovfercard.com>,
<discovwercard.com>, <discovercsard.com> and <discovercxard.com>
domain names are merely typosquatted versions of Complainant’s DISCOVER mark
used by Respondent to capitalize on the common mistakes made by Internet users
in search of Complainant’s services by attempting to type in Complainant’s
<discovercard.com> domain name.
The Panel finds that Respondent’s use of the multiple domain names, each
of which constitutes a common misspelling of Complainant’s mark and domain
name, is evidence in and of itself that Respondent lacks rights or legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii). See Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent has registered and is using the <diccovercard.com>, <dicoverard.com>, <dikscovercard.com>,
<disc0overcard.com>, <disc0vercard.com>, <disc9vercard.com>,
<discaovercard.com>, <discobvercard.com>, <discocercard.com>,
<discove4card.com>, <discovedrcard.com>, <discovercardc.com>,
<discovercardcard.com>, <discovercardx.com>, <discovercared.com>,
<discovercdard.com>, <discovertcard.com>, <discovfercard.com>,
<discovwercard.com>, <discovercsard.com> and <discovercxard.com>
domain names, which are confusingly similar to Complainant’s mark, to redirect
Internet users to Respondent’s website displaying links to third-party websites
in competition with Complainant’s services under the DISCOVER mark and some of
the disputed domain names also display a link to Complainant’s
<discovercard.com> domain name.
The Panel finds that such use by Respondent constitutes disruption,
which is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See American Airlines,
Inc. v.
Respondent is using the disputed domain names to redirect
Internet users to Respondent’s website displaying links to competing
third-party websites for the assumed profit of Respondent. The Panel finds that because Respondent’s
disputed domain names are each confusingly similar to Complainant’s DISCOVER
mark, Internet users may become confused as to Complainant’s affiliation with
Respondent’s website, particularly since some of the disputed domain names
contain links to Complainant’s <discovercard.com> domain name. Presumably, Respondent is profiting from this
confusion in the form of pay-per-click fees.
Therefore, the Panel finds that Respondent’s use of the disputed domain
names to redirect Internet users to Respondent’s websites displaying links to competing
websites and some links to Complainant’s own website constitutes bad faith
registration and use under Policy ¶ 4(b)(iv).
See Associated Newspapers Ltd. v. Domain
Manager, FA 201976 (Nat. Arb. Forum
Finally, the Complainant contends that Respondent’s disputed
domain names are simply typosquatted versions of Complainant’s DISCOVER mark and
are confusingly similar to both its mark and Complainant’s
<discovercard.com> domain name.
The Panel finds that Respondent’s <diccovercard.com>, <dicoverard.com>, <dikscovercard.com>,
<disc0overcard.com>, <disc0vercard.com>, <disc9vercard.com>,
<discaovercard.com>, <discobvercard.com>, <discocercard.com>,
<discove4card.com>, <discovedrcard.com>, <discovercardc.com>,
<discovercardcard.com>, <discovercardx.com>, <discovercared.com>,
<discovercdard.com>, <discovertcard.com>, <discovfercard.com>,
<discovwercard.com>, <discovercsard.com> and <discovercxard.com>
domain names represent common typing errors Internet users may make when
attempting to reach Complainant’s website.
The Panel finds that Respondent’s registration of the multiple domain
names each representing a common misspelling of Complainant’s mark constitutes
typosquatting, which is evidence of bad faith registration and use under Policy
¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <diccovercard.com>, <dicoverard.com>, <dikscovercard.com>, <disc0overcard.com>, <disc0vercard.com>, <disc9vercard.com>, <discaovercard.com>, <discobvercard.com>, <discocercard.com>, <discove4card.com>, <discovedrcard.com>, <discovercardc.com>, <discovercardcard.com>, <discovercardx.com>, <discovercared.com>, <discovercdard.com>, <discovertcard.com>, <discovfercard.com>, <discovwercard.com>, <discovercsard.com> and <discovercxard.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 27, 2007
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