Discover Financial Services v. Private Whois Service
Claim Number: FA1609001692874
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, United States. Respondent is Private Whois Service (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discovercardloans.com>, registered with 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 8, 2016; the Forum received payment on September 9, 2016.
On September 12, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <discovercardloans.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 September 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@discovercardloans.com. Also on September 13, 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 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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 is a leading credit card issuer and electronic payment services company with a highly recognizable financial services brand. Complainant has registered the DISCOVER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,479,946, registered Mar. 9, 1988), which demonstrates Complainant’s rights in its mark. The <discovercardloans.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic terms “card” and “loans” and affixes the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the domain name. Respondent has never been commonly known by the domain name, 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 any of Complainant’s marks. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to cycle, at random, through various webpages including, but not limited to, a page displaying hyperlinks to competitors of Complainant, a search page, a website offering personal loans, and a website that appears to attempt to download a virus onto Internet users’ computers.
Respondent registered and is using the domain name in bad faith. First, Respondent’s use of the domain name to host competing hyperlinks constitutes bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv). Second, Respondent’s domain name resolves to a website that causes Internet users to download a computer virus. Third, Respondent registered the offending domain name using a privacy service. Finally, Respondent had constructive knowledge of Complainant’s mark and rights therein when it registered the domain name by virtue of Complainant’s trademark registrations; Respondent also had actual knowledge of the mark at the time the domain name was registered as evidenced by Respondent’s use of the mark in conjunction with the industry relevant and product-specific generic terms “card” and “loans.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Discover Financial Services of Riverwoods, IL, USA. Complainant is the owner of numerous domestic and international registrations, including a China registration, for the mark DISCOVER. Complainant has continuously used the mark since at least as early as 1985 in connection with its provision of various products in the financial services industry such as banking and loan services, and credit card services.
Respondent is Private Whois Service, of Chongqing, China. Respondent’s registrar’s address is indicated as New South Wales, Australia. The Panel notes that Respondent registered the domain name on or about October 8, 2011.
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 financial services brand. Complainant has registered the DISCOVER mark with the USPTO (e.g., Reg. No. 1,479,946, registered Mar. 9, 1988), which Complainant contends demonstrates its rights in the mark. The Panel notes 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.”). The Panel here finds that Complainant has demonstrated its rights in its mark under Policy ¶ 4(a)(i).
Complainant argues that the <discovercardloans.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the generic terms “card” and “loans” and affixes the gTLD “.com.” Past panels have agreed that these changes do not serve to adequately distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (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)); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s DISCOVER mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant claims that Respondent lacks rights and legitimate interests in the domain name. Complainant asserts that Respondent has never been commonly known by the domain name, and that 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 any of Complainant’s marks. The Panel notes that the WHOIS information lists “Private Whois Service” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. Based on the WHOIS information and lack of evidence to the contrary, the Panel here finds no basis to find Respondent is commonly known by the disputed domain name 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 alleges that Respondent is not using the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, according to Complainant, Respondent uses the domain name to cycle, at random, through various webpages including, but not limited to, a page displaying hyperlinks to competitors of Complainant, a search page, a website offering personal loans, and a website that appears to attempt to download a virus onto Internet users’ computers. Prior panels have decided that such uses of a domain name by a respondent do not constitute bona fide offerings of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses 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”); see also Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). The Panel here finds that Respondent is not using the disputed domain name 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant maintains that Respondent’s use of the domain to host competing hyperlinks constitutes bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv). Previous panels have found that type of use equates to bad faith. 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). The Panel here finds that Respondent registered and is using the domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant contends that Respondent’s domain name resolves to a website that causes Internet users to download a virus. Past panels have determined that a respondent’s use of a domain to direct Internet users to a website which attempts to download a virus to the users’ computers is evidence of bad faith registration and use. See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)). The Panel here finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <discovercardloans.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 18, 2016
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