Discover Financial Services v. shi lin / west263 company
Claim Number: FA1610001700081
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is shi lin / west263 company (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discoverstudentloanss.com> and <discoverstusentloans.com>(‘the Domain Names’) registered with West263 International Limited.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 27, 2016; the Forum received payment on October 27, 2016.
On October 28, 2016, West263 International Limited confirmed by e-mail to the Forum that the<discoverstudentloanss.com> and <discoverstusentloans.com> domain names are registered with West263 International Limited and that Respondent is the current registrant of the names. West263 International Limited has verified that Respondent is bound by the West263 International Limited 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 October 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@discoverstudentloanss.com, postmaster@discoverstusentloans.com. Also on October 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 November 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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
Complainant is the owner of, inter alia, registered trade marks for DISCOVER for financial services in China where Respondent is based. It has a web site at discover.com.
The Domain Names are confusingly similar to Complainant’s DISCOVER mark, merely adding the misspelled generic terms ‘student loanss’ (sic) or ‘stusentloans’ (sic) respectively and the gTLD .com. However, these alterations do not sufficiently differentiate the Domain Names from Complainant’s trade mark for the purposes of the Policy, merely being misspellings of generic terms which are linked to Complainant’s field of activity.
Respondent lacks rights or legitimate interests in the Domain Names. Respondent is not making any bona fide offering of goods or services or a legitimate non-commercial or fair use of the Domain Names since they are being used for pay per click links. Respondent has never been commonly known by the Domain Names and has no trade mark rights in them. Complainant has not given Respondent any permission to make use of its marks.
The Domain Names were registered in 2016. The fact that the Domain Names contain generic terms relating to the financial services industry and have been used for pay per links relating to competing financial services shows that Respondent is aware of Complainant and its business. The Domain Names have been used to attract for commercial gain Internet users to Respondent’s web site or services thereon. By means of typosquatting Complainant’s customers are being diverted to Respondent’s site.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of, inter alia, a registered trade mark registered in 2009 for DISCOVER for financial services in China where Respondent is based. DISCOVER is a well-known mark for financial services.
The Domain Names were registered in 2016. They contain misspellings of references to financial services and have been directed to pay per click links pointing to financial services competing with Complainant.
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.”).
Language of the Proceedings
The Registration Agreement is written in Chinese, thereby making the usual language of the proceedings Chinese. Pursuant to Rule 11(a), the Panel determines that the remainder of the proceedings may be conducted in English as Respondent appears to be conversant and proficient in English since the Domain Names and the content attached to them is in English.
Identical and/or Confusingly Similar
The Domain Names both contain Complainant's mark DISCOVER, generic terms relating to financial services, the field in which Complainant is engaged (albeit that these terms are misspelled they are readily understandable for what they mean) and the gTLD .com. Accordingly both Domain Names appear to be attempts at typosquatting.
Panels have held that the addition of generic terms to a disputed domain name does not prevent a finding of confusing similarity under the Policy. See Warner Bros Ent’Inc. v Sadler, FA 250236 (Forum May 19, 2004) and Am. Express Co. v MustNeed.com, FA 257901 (Forum June 7, 2004).
The gTLD .com does not serve to distinguish the Domain Names from the DISCOVER mark, which is the distinctive component of the Domain Names. See Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy with a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not given Respondent permission to use the Domain Names. Respondent does not appear to be commonly known by the Domain Names, is not using them to offer bona fide goods and services and is not making a legitimate noncommercial or fair use of the names. The sites attached to the Domain Names appear to be set up for commercial benefit to compete with Complainant using the latter's intellectual property rights to make a profit by pointing to third party links competing with the complainant's goods. See ALPITOUR SpA v Albloushi FA 888651 (Nat. Arb Forum. Feb 26, 2007) (rejecting the Respondent's contentions of rights and legitimate interests because the respondent was merely using the domain name to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and service under the Policy.)
Additionally the Domain Names appears to be an attempt at typosquatting chosen in the hope that a customer might mistakenly reach Respondent's web site by mistakenly typing additional or incorrect letters when intending to access Complainant’s site. See Amazon.com, Inc. v JJ Domains, FA 514939 (Nat Arb. Forum Sept 2, 2005)(respondent lacks rights and legitimate interests in the www-amazon.com domain name because the addition of 'www-' constitutes typosquatting)
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Names and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant has provided evidence that Respondent has attempted to disrupt Complainant’s business by its use of the Domain Names providing links that resolve to third party commercial sites that compete directly with Complainant. See Univ of Texas Sys. v Smith , FA 1195696 (Nat. Arb. Forum July 7, 2008)(finding that using the resolving web site to divert Internet users to Complainant's competitors constitutes bad faith registration and use under the Policy. )
Complainant also alleges that Respondent's use of the sites attached to the Domain Names is commercial as he is using them to make a profit from linking to third party web sites that compete with Complainant in a confusing manner. The use is confusing in that visitors to the site attached to the Domain Names might reasonably believe they are connected to or approved by Complainant, offering financial services under a name which contains Complainant’s DISCOVER mark and is an attempt at typosquatting. The use to link to competing financial services sites and the references to financial services in the Domain Names themselves suggests Respondent is aware of Complainant and its services and business. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site. (See Asbury Auto Group Inc. v Tex. Int'l Prop Assocs FA 958542 (Nat. Arb Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with Complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
Finally, typosquatting itself is evidence of relevant bad faith registration and use. See Vanguard Group Inc. v IQ Mgmt. Corp FA 328127 (Nat Arb Forum Oct 28, 2004)(By engaging in typosquatting respondent has registered and used the vangard.com domain name in bad faith pursuant to Policy 4(a) (iii)
As such, the Panel holds that Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <discoverstudentloanss.com> and <discoverstusentloans.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 29, 2016
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