Discover Financial Services v. Hildegard Gruener
Claim Number: FA1701001713317
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is Hildegard Gruener (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discover-card-login.com>, <discover-card-sign-in.com>, <discover-com.com>, <discover-it-credit-card-login.com>, <discover-it-credit-card.com>, <discover-it-student.com>, <discover-login-center.com>, <discover-login-online.com>, <discover-login.com>, <discovercard-com-login.com>, <discovercard-com.com>, <discovercard-login.com>, and <discovercard-pay-bill.com>, registered with GoDaddy.com, LLC.
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 January 19, 2017; the Forum received payment on January 20, 2017.
On January 20, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <discover-card-login.com>, <discover-card-sign-in.com>, <discover-com.com>, <discover-it-credit-card-login.com>, <discover-it-credit-card.com>, <discover-it-student.com>, <discover-login-center.com>, <discover-login-online.com>, <discover-login.com>, <discovercard-com-login.com>, <discovercard-com.com>, <discovercard-login.com>, and <discovercard-pay-bill.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 January 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2017 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@discover-card-login.com, postmaster@discover-card-sign-in.com, postmaster@discover-com.com, postmaster@discover-it-credit-card-login.com, postmaster@discover-it-credit-card.com, postmaster@discover-it-student.com, postmaster@discover-login-center.com, postmaster@discover-login-online.com, postmaster@discover-login.com, postmaster@discovercard-com-login.com, postmaster@discovercard-com.com, postmaster@discovercard-login.com, postmaster@discovercard-pay-bill.com. Also on January 20, 2017, 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 February 20, 2017, 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.
1. Complainant is a global financial services company. Complainant uses the DISCOVER, DISCOVER IT, and DISCOVER CARD marks (“DISCOVER marks”) in conjunction with its business practices. Complainant registered the DISCOVER and DISCOVER IT marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. Nos. 1,479,946, registered Mar. 9, 1988; 4,280,808, registered Jan. 22, 2013). Additionally, Complainant registered the DISCOVER and DISCOVER CARD marks with the Austrian government’s trademark agency (e.g., Reg. Nos. 111715, registered Feb. 13, 1986; 111917, registered Mar. 4, 1986). See Compl., at Attached Annex 3. Respondent’s <discover-card-login.com>, <discover-card-sign-in.com>, <discover-com.com>, <discover-it-credit-card-login.com>, <discover-it-credit-card.com>, <discover-it-student.com>, <discover-login-center.com>, <discover-login-online.com>, <discover-login.com>, <discovercard-com-login.com>, <discovercard-com.com>, <discovercard-login.com>, and <discovercard-pay-bill.com> are confusingly similar to the DISCOVER marks. All of the disputed domain names incorporate the DISCOVER mark in its entirety, adding hyphens and the “.com” generic top level domain (“gTLD”). Respondent’s <discover-com.com>, <discover-login-center.com>, <discover-login-online.com>, and <discover-login.com> add the generic terms “login”, “online”, “com”, and “center.” The <discover-card-login.com>, <discover-card-sign-in.com>, <discovercard-com-login.com>, <discovercard-com.com>, <discovercard-login.com>, and <discovercard-pay-bill.com> domains use the DISCOVER CARD mark in its entirety, eliminating the space between the words and adding the generic terms “com”, “login”, “sign in”, and “pay bill.” Finally, the DISCOVER IT mark is incorporated in its entirety in the <discover-it-credit-card-login.com>, <discover-it-credit-card.com>, and <discover-it-student.com> disputed domain names, adding the descriptive term “credit card” and generic terms “login” and “student.” The generic and descriptive terms added to the disputed domain names are representative of the products and services offered by Complainant.
2. Respondent has no rights or legitimate interests in <discover-card-login.com>, <discover-card-sign-in.com>, <discover-com.com>, <discover-it-credit-card-login.com>, <discover-it-credit-card.com>, <discover-it-student.com>, <discover-login-center.com>, <discover-login-online.com>, <discover-login.com>, <discovercard-com-login.com>, <discovercard-com.com>, <discovercard-login.com>, and <discovercard-pay-bill.com>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized or licensed Respondent to use the DISCOVER marks in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the disputed domain names. The disputed domain names resolve to websites displaying the DISCOVER marks, offering goods and services in direct competition with Complainant presumably for Respondent’s profit. See Compl., at Attached Annex 5.
3. Respondent registered and is using <discover-card-login.com>, <discover-card-sign-in.com>, <discover-com.com>, <discover-it-credit-card-login.com>, <discover-it-credit-card.com>, <discover-it-student.com>, <discover-login-center.com>, <discover-login-online.com>, <discover-login.com>, <discovercard-com-login.com>, <discovercard-com.com>, <discovercard-login.com>, and <discovercard-pay-bill.com> in bad faith. The disputed domain names attempt to disrupt Complainant’s business by attracting internet users to webpages offering goods and services in direct competition with Complainant, presumably for Respondent’s commercial gain. Respondent registered the disputed domain names with actual knowledge of Complainant and its rights to the DISCOVER marks.
1. Respondent did not submit a response.
1. Respondent’s <discover-card-login.com>, <discover-card-sign-in.com>, <discover-com.com>, <discover-it-credit-card-login.com>, <discover-it-credit-card.com>, <discover-it-student.com>, <discover-login-center.com>, <discover-login-online.com>, <discover-login.com>, <discovercard-com-login.com>, <discovercard-com.com>, <discovercard-login.com>, and <discovercard-pay-bill.com> domain names are confusingly similar to Complainant’s DISCOVER, DISCOVER IT, and DISCOVER CARD marks.
2. Respondent does not have any rights or legitimate interests in the <discover-card-login.com>, <discover-card-sign-in.com>, <discover-com.com>, <discover-it-credit-card-login.com>, <discover-it-credit-card.com>, <discover-it-student.com>, <discover-login-center.com>, <discover-login-online.com>, <discover-login.com>, <discovercard-com-login.com>, <discovercard-com.com>, <discovercard-login.com>, and <discovercard-pay-bill.com> domain names.
3. Respondent registered or used the <discover-card-login.com>, <discover-card-sign-in.com>, <discover-com.com>, <discover-it-credit-card-login.com>, <discover-it-credit-card.com>, <discover-it-student.com>, <discover-login-center.com>, <discover-login-online.com>, <discover-login.com>, <discovercard-com-login.com>, <discovercard-com.com>, <discovercard-login.com>, and <discovercard-pay-bill.com> domain names 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 global financial services company. Complainant uses the DISCOVER marks in conjunction with its business practices. Complainant claims it registered the DISCOVER and DISCOVER IT marks with the USPTO (e.g., Reg. Nos. 1,479,946, registered Mar. 9, 1988; 4,280,808, registered Jan. 22, 2013). Additionally, Complainant states it registered the DISCOVER and DISCOVER CARD marks with the Austrian government’s trademark agency (e.g., Reg. Nos. 111715, registered Feb. 13, 1986; 111917, registered Mar. 4, 1986). See Compl., at Attached Annex 3. The general consensus among panels is that mark registrations with USPTO and other government agencies are sufficient to show rights in a mark. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (“As stated above, Complainant has shown rights in the mark RACKSPACE by virtue of its registrations in the US, Europe, Mexico, Turkey, as well as in Australia, Respondent’s country of origin. All of the trademark registrations predate the registration of the disputed domain name by the Respondent and are sufficient evidence for Complainant’s rights under Policy ¶ 4(a)(i).”). Therefore, the Panel agrees and concludes that Complainant has sufficient rights to the DISCOVER marks according to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s disputed domain names are confusingly similar to Complainant’s DISCOVER marks under Policy ¶ 4(a)(i). Complainant argues that Respondent makes a variety of changes to the disputed domain names, but that none of such changes remove the disputed domain names from the realm of confusing similarity. The Panel notes that the disputed domain names all contain the DISCOVER marks in their entirety, add a generic term, and add the gTLD “.com.” Previous panels have found that such changes do not remove a disputed domain name from confusing similarity under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s DISCOVER marks pursuant to Policy ¶ 4(a)(i).
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 contends that Respondent has no rights or legitimate interests in the disputed domain names. To support its contention, Complainant states that Respondent is not commonly known by the disputed domain names. WHOIS information associated with this case identifies Respondent as “Hildegard Gruener.” See Compl., at Attached Annex 2. Further, Complainant notes that Respondent has not been licensed or authorized to use any of the DISCOVER marks. Panels typically determine that a Respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of evidence to the contrary. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel agrees and determines that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the disputed domain names. The disputed domain names resolve to websites displaying the DISCOVER marks, offering goods and services in direct competition with Complainant, presumably for Respondent’s profit. See Compl., at Attached Annex 5. Panels have found that capitalizing on the well-known marks of a complainant by attracting internet users to its disputed domain names where the respondent sells competing products of the complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010). Therefore the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4 (c)(i) or ¶ 4(c)(iii).
Complainant maintains that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). The disputed domain names resolve to webpages displaying the DISCOVER marks, while offering goods and services in direct competition with Complainant. Complainant asserts that the disputed domain names attempt to disrupt Complainant’s business by attracting internet users to webpages offering goods and services in direct competition with Complainant, presumably for Respondent’s commercial gain. Past panels have agreed that such behavior indicated bad faith under Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent registered the disputed domain names with actual and/or constructive knowledge of Complainant and its rights in the DISCOVER marks. In light of the fame and notoriety of Complainant's DISCOVER marks, it is inconceivable that Respondent could have registered the <discover-card-login.com>, <discover-card-sign-in.com>, <discover-com.com>, <discover-it-credit-card-login.com>, <discover-it-credit-card.com>, <discover-it-student.com>, <discover-login-center.com>, <discover-login-online.com>, <discover-login.com>, <discovercard-com-login.com>, <discovercard-com.com>, <discovercard-login.com>, and <discovercard-pay-bill.com> domain names without actual knowledge of Complainant's rights in the mark. Panels have found that any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel agrees that Respondent had actual knowledge of Complainant's rights in the DISCOVER marks prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION 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 <discover-card-login.com>, <discover-card-sign-in.com>, <discover-com.com>, <discover-it-credit-card-login.com>, <discover-it-credit-card.com>, <discover-it-student.com>, <discover-login-center.com>, <discover-login-online.com>, <discover-login.com>, <discovercard-com-login.com>, <discovercard-com.com>, <discovercard-login.com>, and <discovercard-pay-bill.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 3, 2016
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