Discover Financial Services v. Hulmiho Ukolen / Poste restante
Claim Number: FA1608001687219
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, United States. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discovercardpayment.com>, <discoveraid.com>, and <discoveritmiles.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2016; the Forum received payment on August 8, 2016.
On August 12, 2016, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the Forum that the <discovercardpayment.com>, <discoveraid.com>, and <discoveritmiles.com> domain names are registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com 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 August 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@discovercard payment.com, postmaster@discoveraid.com, postmaster@discoveritmiles.com. Also on August 15, 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 September 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant is a leading credit card issuer and electronic payment services company with a highly recognizable brand in financial services. Complainant has registered its DISCOVER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,479,946, registered Mar. 8, 1988), which demonstrates its rights in the mark. See Compl., at Attached Annex 3. Respondent’s domains are confusingly similar to the DISCOVER mark because they fully incorporate the mark and add the generic terms “card,” “payment,” “aid,” “miles,” and/or “it,” and affix the generic top-level domain (“gTLD”) “.com.”
2. Respondent lacks rights and legitimate interests in the domains. Respondent has never been commonly known by the domains, and Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations that are confusingly similar to Complainant’s mark. Further, Respondent is not using the domains in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent uses its domains to divert Internet users for Respondent’s own commercial gain with a pay-per-click advertisement page. See Compl., at Attached Annex 5.
3. Respondent registered and is using the domains in bad faith. First, the <discovercardpayment.com> and <discoveritmiles.com> domains are listed for sale for $4,750.00. Second, Respondent has engaged in a pattern of bad faith registration and use through its registration of domains that incorporate well-known third-party marks. Third, Respondent’s use of the domains to offer advertisements for competing financial services disrupts Complainant’s business, and creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Fourth, Respondent used false WHOIS information when it registered the domains. Finally, Respondent registered the domains with at least constructive knowledge of Complainant’s mark and rights therein, which is made evident by Complainant’s registration of its DISCOVER mark with the USPTO.
B. Respondent’s Contentions
1. Respondent did not submit a response in this proceeding.
LANGUAGE OF THE PROCEEDINGS
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
1. Respondent’s <discovercardpayment.com>, <discoveraid.com>, and <discoveritmiles.com> domain names are confusingly similar to Complainant’s DISCOVER mark.
2. Respondent does not have any rights or legitimate interests in the <discovercardpayment.com>, <discoveraid.com>, and <discoveritmiles.com> domain names.
3. Respondent registered or used the <discovercardpayment.com>, <discoveraid.com>, and <discoveritmiles.com> domain name in bad faith.
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 is a leading credit card issuer and electronic payment services company with a highly recognizable brand in financial services. Complainant has registered its DISCOVER mark with the USPTO (Reg. No. 1,479,946, registered Mar. 8, 1988), which it contends demonstrates its rights in the mark. See Compl., at Attached Annex 3. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the domains are confusingly similar to the DISCOVER mark because they fully incorporate the mark and add the generic terms “card,” “payment,” “aid,” “miles,” and/or “it,” and affix the gTLD “.com.” Panels have decided that neither the addition of generic terms nor the affixation of the “.com” gTLD serves to adequately distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel finds that Respondent’s domains are confusingly similar to Complainant’s mark.
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-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 alleges that Respondent lacks rights and legitimate interests in the domains. According to Complainant, Respondent has never been commonly known by the domains, and Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations that are confusingly similar to Complainant’s mark. The Panel notes that the WHOIS information merely lists “Hulmiho Ukolen / Poste restante” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Complainant argues that Respondent is not using the domains in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Complainant claims that Respondent uses its domains to divert Internet users for Respondent’s own commercial gain with a pay-per-click advertisement page. See Compl., at Attached Annex 5. Panels have held that a respondent’s use of a domain to host competing hyperlinks does not constitute 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). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Therefore, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant argues that the <discovercardpayment.com> and <discoveritmiles.com> domains are listed for sale for $4,750.00. See Compl., at Attached Annex 2. Panels have decided that a respondent’s willingness to sell a domain for an amount in excess of its out-of-pocket costs to acquire the domain is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). For this reason, the Panel finds that Respondent registered and is using the domains in bad faith per Policy ¶ 4(b)(i).
Complainant claims that Respondent has engaged in a pattern of bad faith registration and use through its registration of domains that incorporate well-known third-party marks. Panels have concluded that one instance of registration of several infringing domains satisfies the burden imposed by Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Forum Sept. 8, 2000) (“Registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names . . . [and t]he registration of multiple domain names that infringe on Complainant’s trademarks is evidence of a pattern of conduct.”). Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s use of the domains to offer advertisements for competing financial services disrupts Complainant’s business, and creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Panels have held that a respondent’s use of a domain to display competing hyperlinks constitutes bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). As such, the Panel finds that Respondent registered and is using the domains in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant alleges that Respondent used false WHOIS information when it registered the domains. Specifically, Complainant argues that the “organization name” used by Respondent translates to “general delivery,” the address is “Helsinki main post office,” both the city and country are listed as Finland, and the zip code is 12345. Panels have determined that a respondent’s use of false WHOIS information constitutes evidence of bad faith. See Quixtar Invs., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (determining that use of false registration information constitutes bad faith). Therefore, the Panel finds that Respondent registered the domains in bad faith.
Finally, Complainant argues that Respondent registered the domains with at least constructive knowledge of Complainant’s mark and rights therein, which is made evident by Complainant’s registration of its DISCOVER mark with the USPTO. Further, Complainant contends that, based on Respondent’s use of the DISCOVER mark in its domains in conjunction with its use of the industry-relevant terms “card,” “payment,” “aid,” and “miles,” Respondent registered the domain with actual knowledge. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine 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 (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 (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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <discovercardpayment.com>, <discoveraid.com>, and <discoveritmiles.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 26, 2016
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