Discover Financial Services v. Repossessed by Go Daddy
Claim Number: FA1609001695345
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, United States. Respondent is Repossessed by Go Daddy (“Respondent”), Arizona, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discoverscards.com> and <discoverrcards.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2016; the Forum received payment on September 26, 2016.
On September 26, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <discoverscards.com> and <discoverrcards.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@discoverscards.com, postmaster@discoverrcards.com. Also on September 28, 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 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant is a credit card and electronic payment services company with a highly recognizable financial services brand in the name and mark DISCOVER.
Complainant holds a registration for the DISCOVER service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,743,341, registered July 29, 2003.
Respondent registered the <discoverscards.com> domain name on September 28, 2015, and the <discoverrcards.com> domain name on December 9, 2015.
The domain names are confusingly similar to Complainant’s DISCOVER mark.
Respondent has never been commonly known by the domain names.
Complainant has not granted Respondent any license or other authorization by which it could own or use any domain name registration that is confusingly similar to Complainant’s DISCOVER mark.
Respondent is not using the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has failed to make any active use of the domain names.
Respondent lacks rights to and legitimate interests in the domain names.
Each of the domain names is an instance of typo-squatting.
Respondent registered the domain names with knowledge of Complainant’s DISCOVER mark and its rights in that mark.
Respondent registered and is using the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the DISCOVER mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007):
As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <discoverscards.com> and <discoverrcards.com> domain names are each confusingly similar to Complainant’s DISCOVER mark. The domain names wholly incorporate the mark, and are either pluralized or contrived of a common typographical error, with the addition of the generic term “cards,” which relates to Complainant’s business, as well as the addition of the generic top-level domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004):
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Forum May 22, 2007) (finding that the addition of the letter “s” to the trademark of another in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
Further see Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name there in dispute contained the identical mark of a UDRP complainant combined with a generic word or term).
And see Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” to the mark of a UDRP complainant in creating a domain name was insufficient to differentiate that domain name from the mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding, under UDRP ¶ 4(a)(ii), that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by either of the domain names <discoverscards.com> and <discoverrcards.com>, and that Complainant has not granted Respondent any license or other authorization by which it could own or use any domain name registrations that are confusingly similar to its DISCOVER mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Repossessed by Go Daddy,” which does not resemble either of the domain names. On this record, we conclude that Respondent has not been commonly known by either of the disputed domain names so as to have acquired rights to or legitimate interests in either of them within the purview of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (finding that a respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not using the domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Complainant contends that Respondent has failed to make any active use of the domain names from the time of their registrations. In these circumstances, we conclude that Respondent is not making a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004):
The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent’s failure to make active use of either of the disputed domain names in the entire time from their separate registrations is persuasive proof, given the circumstances laid out in the Complaint and Respondent’s silence in the face of its allegations, that Respondent has registered and now uses the domain names in bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s failure to make any active use of a contested domain name in the time following its registration satisfies the bad faith proof requirements of ¶ Policy 4(a)(iii)).
We are likewise convinced by the evidence that each of the domain names is an instance of typo-squatting, i.e.: the deliberate misspelling of the mark of another in forming a domain name in order to take advantage of common typing errors made by Internet users in entering into their web browsers the mark of an enterprise with which they wish to do business online. Typo-squatting demonstrates bad faith in the registration and use of a domain name. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name because it misspelled a UDRP complainant’s MICROSOFT mark).
Finally, under this head of the Policy, it is evident that Respondent knew of Complainant and its rights in the DISCOVER mark when it registered the offending domain names. This is independent proof of Respondent’s bad faith in registering the domain names. See, for example, Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith registration where a respondent was “well-aware” of a UDRP complainant’s YAHOO! mark at the time of its confusingly similar domain name’s registration).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <discoverscards.com> and <discoverrcards.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 27, 2016
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