Discover Financial Services v Zhichao Yang
Claim Number: FA1712001764169
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <www-discover.com>, <discovrpersonalloans.com>, and <disoverbank.com> (‘the Domain Names’) , 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2017; the Forum received payment on December 27, 2017.
On December 26, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <www-discover.com>, <discovrpersonalloans.com>, and <disoverbank.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 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2018 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@www-discover.com, postmaster@discovrpersonalloans.com, postmaster@disoverbank.com. Also on January 2, 2018, 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 January 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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’s contentions can be summarised as follows:
Complainant is the owner of the DISCOVER trade mark registered, inter alia, in the USA and China for financial services. The mark is famous and distinctive. Complainant is also the owner of discover.com and discovercard.com.
Respondent registered the Domain Names in 2012. Respondent is passively holding discovrpersonalloans.com and is using the other two domains to resolve to sites featuring pay per click advertisements. Respondent has a long history of cybersquatting and Complainant previously won a UDRP case against Respondent involving nearly 50 domains.
The Domain Names are confusingly similar to Complainant’s DISCOVER marks because they fully incorporate or rely on typographical errors of that mark. Www-discover.com only adds www and a dash together designed to take advantage of mistyping ‘www.’ and the gTLD .com. All three Domain Names rely on some typographical error, e.g., omitting the e in discovrpersonalloans.com or the ‘c’ in disoverbank.com. However, such alterations do not sufficiently differentiate the Domain Names from the DISCOVER marks for the purpose of a confusing similarity analysis.
Respondent lacks rights or legitimate interests in the Domain Names. Respondent has never been commonly known as the Domain Names or used a trade mark relating to it other than the infringing use noted here. Passive holding or to promote competing services is not a bona fide offering of goods or services or a legitimate non commercial or fair use.
Complainant has not given Respondent any permission to use Complainant’s DISCOVER mark.
The Domain Names have been registered and used in bad faith. The fact that Respondent has been subject to so many prior adverse UDRP rulings including one involving Complainant in 2013 also demonstrates a pattern of bad faith.
Further registration and use to resolve to a web site featuring pay per click advertisements which compete with Complainant and trade off Complainant’s reputation disrupts Complainant’s business and demonstrates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the DISCOVER trade mark registered, inter alia, in the USA and China for financial services with first use in the USA recorded as 1985.
Respondent registered the Domain Names in 2012. No content has been attached to discovrpersonalloans.com. The other two domain names the subject of these complaints are being used to resolve to sites featuring pay per click advertisements offering financial services.
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 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.”).
Identical or Confusingly Similar
The Domain Names consist of misspelled versions of Complainant's DISCOVER mark (which is registered, inter alia in USA and China for financial services with first use in the USA recorded as 1985), the designation ‘www’ and/or the dictionary words ‘personal’, ‘loans’ and/or ‘bank’ and/or a hyphen and the gTLD .com.
The Panel agrees with Complainant that misspellings such as a removal of a letter or the addition of ‘www-‘ to a mark does not distinguish the Domain Names from Complainant's DISCOVER trade marks pursuant to the Policy. See ShipCarsNow, Inc v Wet Web Design LLC, FA 1601260 (Forum Feb 26, 2015)(establishing a confusing similarity between ShipCarsNow.com and the mark SHIPCARSNOW because the domain name simply removes the single letter ‘s’) See Citizens Financial Group Inc. v Paul Taylor, FA 1714579 (Forum Mar 14, 2017) (adding www to the beginning of a mark in a domain name does not distinguish the domain name for the purposes of a Policy 4 (a)(i) analysis). See Health Devices Corp. v Aspen STC, FA 158254 (Forum July , 2003)(The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).)
The Panel also agrees with Complainant that nor does the adding of the above dictionary words ‘personal’, ‘loans’ and/or ‘bank’ distinguish the Domain Names from Complainant's DISCOVER trade marks pursuant to the Policy. In fact it may add to confusion as Complainant carries on business in the financial sector. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms particularly terms pertaining to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i).)
The gTLD .com does not serve to distinguish the Domain Names from Complainant’s DISCOVER mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to 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 purpose of the Policy to the DISCOVER 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 authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that Respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that Complainant had not licensed or authorized Respondent to use its ALASKA AIRLINES mark).
There has been no use of discovrpersonalloans.com which is not a bona fide offering of goods or services or a legitimate non commercial use. See Hewlett-Packard Co. v Shemesh, FA 434145 (Forum April 20, 2005)(Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4 ( c ) (i). )
With regard to <www-discover.com> and <disoverbank.com> it is clear from the evidence that Respondent has used the pages attached to these domain names to promote services which are not connected with Complainant through pay per link links. The usage of Complainants’ marks which have a significant reputation in relation to financial services in relation to similar services not connected with Complainants is not fair as the page attached to the Domain Name does not make it clear that there is no commercial connection with Complainant. As such it cannot amount to the bona fide offering of goods and services or a legitimate commercial or fair use. See Ashley Furniture Industries Inc. v domain admin / private registrations aktien Gesellschaft, FA 1506001626253 (Forum July 29, 2015).
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
In the case of each domain name the subject of this complaint the registration seeks to take advantage of the situation where Internet users may make a typographical error. Typosquatting itself is evidence of relevant bad faith registration and use under Policy 4 (b)(iii) . See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype Complainant’s mark and be taken to Respondent’s site is registration and use in bad faith).
With regard to discovrpersonalloans.com passive holding of a domain name containing a mark with a reputation is commonly held to be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The use of ‘personal loans’ with Complainant’s mark demonstrates Respondent’s knowledge of the significance of Complainant’s mark in the financial sector and actual knowledge of Complainant and its business and Respondent has given no good reason for holding the Domain Names containing Complainant’s mark or misspellings thereof since 2012.
With regard to <www-discover.com> and <disoverbank.com>, Respondent is using these domain name links to make a profit from promoting services not associated with Complainant in a disruptive and confusing manner. See Health Republic Insurance Company v above.com Legal, FA 1506001622068 (Forum July 10, 2015) (‘The use of a domain name’s resolving web site 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).’)
The use of the term ‘personal loans’ in the discovrpersonalloans.com domain name and ‘bank’ in ‘disoverbank.com’ reflects financial services and makes it clear Respondent was aware of Complainants’ rights at the time of registration and use.
It seems clear that the use of Complainants’ mark or misspellings thereof in the Domain Names would cause people to associate any website at the Domain Names with Complainant and its business and services. Accordingly, in the case of <www-discover.com> and <disoverbank.com> which have been attached to pay per click links without explanation, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant under Policy 4 (b)(iv).
Finally Complainant has brought evidence that Complainant is the subject of a previous UDRP Complaint in which Complainant was successful against Respondent in respect of almost 50 domain names containing the DISCOVER mark. There is also other evidence that Respondent has been the subject of adverse rulings in the UDRP process involving third parties not connected to this Complaint. Accordingly there is sufficient evidence of a pattern of bad faith registrations on the part of Respondent. See The Toronto-Dominion Bank v Ryan G Foo/PPA Media Services/Jinesh Shah/WhoIs Privacy Corp, FA 1408001576648 (Forum Jan 12, 2015)(‘The Panel determines that Respondent’s documented history of adverse UDRP rulings as well as Respondent’s multiple registrations relating to Complainant’s marks are independently sufficient to constitute a pattern as described by Policy 4 (b)(ii). )
As such, the Panel believes 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 under para 4 (b)(ii) and 4(b)(iii) in respect of all three Domain Names and additionally under 4 (b)(iv) in respect of <www-discover.com> and <disoverbank.com>.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <www-discover.com>, <discovrpersonalloans.com>, and <disoverbank.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 29, 2018
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