Discover Financial Services v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1810001811651
Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <discovercard.app>, registered with Dynadot, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 11, 2018; the Forum received payment on October 15, 2018.
On October 15, 2018, Dynadot, LLC confirmed by e-mail to the Forum that the <discovercard.app> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 October 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@discovercard.app. Also on October 23, 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 November 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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, Discover Financial Services, is a leading credit card issuer and electronic payment services company with a highly recognizable financial services brand. Complainant asserts rights in the DISCOVER mark based upon its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,479,946 registered Mar. 8, 1988). Respondent’s <discovercard.app> domain name is confusingly similar to Complainant’s mark because Respondent fully incorporates Complainant’s mark in the disputed domain name along with the generic term “card” and the “.app” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <discovercard.app> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use the mark in any way. Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent attempted to commercially gain by operating a parked page that contained various links to financial services.
Respondent registered and uses the <discovercard.app> domain name in bad faith because Respondent attempts to commercially gain by disrupting Complainant’s business. Furthermore, Respondent is passively holding the disputed domain name. Finally, Respondent had knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a response in this Proceeding. The Panel notes that the <discovercard.app> domain name was registered on May 9, 2018.
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 asserts rights in the DISCOVER mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish complainant’s rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides a copy of its USPTO registration for the DISCOVER mark (e.g. Reg. No. 1,479,946 registered Mar. 8, 1988). Accordingly, the Panel concludes that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <discovercard.app> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire mark in the disputed domain name plus a generic term and a gTLD. 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)). Here, Respondent includes the entire DISCOVER mark in the disputed domain name plus the generic term “card” and the “.app” gTLD. Therefore, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s mark.
Complainant argues Respondent lacks rights and legitimate interests in the <discovercard.app> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s mark in any way. Where a response is lacking, WHOIS information may be used to identify respondent per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark may be further evidence that respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant provides the relevant WHOIS information which identifies the registrant of the disputed domain name as “Privacy Service LTD c/o Dynadot” and nothing of the record indicates that Respondent is authorized to use the DISCOVER mark in any way. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Furthermore, Complainant alleges that Respondent fails to use the <discovercard.app> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent originally attempted to commercially gain by operating a parked page that contained various links for financial services. Use of a domain name to host a parked page that contains multiple links that compete with complainant’s business may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the webpage previously associated with the disputed domain name which Complainant alleges displayed links to various financial services. Accordingly, the Panel concludes that Respondent has not used the disputed domain name for a bona fide offering of goods and services or for a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <discovercard.app> domain name in bad faith because Respondent redirects Internet users to an alternative domain for Respondent’s commercial gain which disrupts Complainant’s business. Use of a domain name to commercially gain through disruption of complainant’s business may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Complainant argues that Respondent has redirected Internet users to the webpages associated with the disputed domain name and receives a profit from doing so. Accordingly, the Panel concludes that Respondent used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Next, Complainant alleges Respondent currently holds the disputed domain name passively. Use of a domain name to passively hold it may be evidence that respondent is acting in bad faith. See VideoLink, Inc. v. Xantech Corporation, FA 1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Screenshots of Respondent’s webpage show an inactive webpage that displays the message “This site can’t be reached.” Accordingly, the Panel concludes that Respondent passively holds the disputed domain name per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the mark prior to registration of the disputed domain names. Complainant contends that due to the famous and distinctive nature of the DISCOVER mark, Respondent must have had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name. The Panel agrees, and finds that Respondent had actual knowledge of Complainant’s rights in the DISCOVER mark prior to registration of the disputed domain names under Policy ¶ 4(a)(iii), which constitutes bad faith registration of the domain name.
Thus, Complainant has also satisfied ¶ 4(a)(iii) 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 <discovercard.app> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: November 27, 2018
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