WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NOVUS CREDIT SERVICES INC. v. PERSONAL
Case No. D2000-1158
1. The Parties
Complainant is Novus Credit Services Inc., with a postal address of 2500 Lake Cook Road, Riverwoods, IL 60015 United States
The Respondent is PERSONAL, with a postal address of Dimitrovs Str. 22-12, Moscow, RU 102114 Russia.
2. The Domain Name and Registrar
The domain name at issue [hereinafter the Domain Name] is:
The Registrar of the Domain Name is Alabanza Corporation d/b/a BulkRegister [hereinafter BulkRegister], 10 E. Baltimore St., Suite 1300, Baltimore, Maryland, 21202, U.S.A.
3. Procedural History
On August 23, 2000, Complainant submitted, via e-mail, a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center].The Center received the hardcopy of the Complaint on August 28, 2000. On August 31, 2000, the Complainant submitted an amendment to the Complaint in accordance with the Uniform Domain Name Dispute Resolution Policy, modifying paragraph 23 of the Complaint. On September 15, 2000, the Center received the Registrarís Verification Response attesting that the current registrant for the Domain Name is the Respondent. On September 20, 2000, the Center sent an e-mail to the Complainant, indicating that the verification of the domain name conducted by the Registrar (BulkRegister) revealed that the Registrant was no longer Personal (the Respondent), but was in fact, Discover Card. The Center wanted to know if a settlement had been reached. On September 22, 2000, the Center received an e-mail from the Registrar confirming that the registrant information was originally that of the Respondent, and that the changes were made on August 31, 2000. On September 25, 2000, the Center received, by e-mail, confirmation from the Complainant that no settlement had been reached with the Respondent, and that the Registrant name and address change were in no way authorised by the Complainant. The Registrar indicated that as no transfer agreement was submitted to them and they would abide by the decision reached by the administrative panel in this matter.
The Center then proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules] and the World Intellectual Property Organisation Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees.
The Panel has reviewed the documentary evidence provided by the parties and the Panel and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
In a letter dated October 2, 2000, the Center informed the Respondent of the commencement of the proceedings as of October 3, 2000, and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
In a letter sent October 25, 2000, the Center informed the Respondent that he was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
On November 8, 2000, the Center informed both parties, by e-mail, that an administrative panel had been appointed.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to November 29, 2000, in the English language and is unaware of any other proceedings, which may have been undertaken by the parties or others in the present matter.
4. Factual Background
The Complainant in this administrative proceeding, Novus Credit Services Inc., is a credit card company which has owned, registered and used since 1985, numerous trademarks and domain names incorporating the mark, DISCOVER CARD. In credit services, Complainantís DISCOVER CARD is a unique franchise that serves more than 48 million card members and over 3.5 million merchant locations. The Complainant has also become a leading card company on the Internet, with more than 1 million registered users at the DISCOVER CARD Account Center, accessible at the web address "www.discovercard.com". Available at "discovercard.com" is a variety of consumer products and services, including, but not limited to, online credit information and applications, credit card protection programs, personal credit reports, insurance information and quotations, home loan information and applications, brokerage information and services, CD and savings account information and services and an Internet shopping center.
The evidence shows that, since 1985, the Complainant or its predecessors have registered and utilised trade names and trademarks consisting of the terms DISCOVER and DISCOVER CARD in various forms and combinations throughout the world, including, inter alia, in the United States, throughout the European Union, Japan, Australia, Argentina and Respondentís home country, Russia.
No information has been supplied regarding the attributes and businesses of the Respondent although it appears that the Respondent maintains offices in Moscow, Russia. It also appears given the hyperlinks offered via the Respondentís web page, that the Respondent might have directly or indirectly some connections to various Internet gambling and pornography sites.
As shown by the evidence, the Respondent registered the Domain Name, which consisted of "wwwdiscovercard.com" on or about January 25, 2000. The Panel decided to investigate, proprio motu, the Respondentís website. Upon entering the Domain Name, the Panel was directed to a website containing a variety of topics, none of which make mention of or are related to Complainant or Complainantís Marks. The site provided links to several different payment options for the credit card services of "Visa," "Master Card" and other direct competitors of Complainant. When the Panel attempted to move away from the site by either entering a new URL, clicking on one of the links on that page or by clicking the "Back" button in the userís browser, a box inevitably pops up displaying the following message: "Congratulations, you have won a free casino game + 20% bonus for real money play!" When the Panel hit "OK" it was directed to an online gambling website.
There is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant nor has he otherwise obtained any authorisation to use the Complainantís marks or apply for any domain names incorporating any of these marks.
5. Partiesí Contentions
At paragraph 22 to the Complaint the Complainant maintains that the Respondent registered the Domain Name under a fictitious name to evade service of process and to conceal the Respondentís true identity. PERSONAL is an alias designed to conceal the registrantís true identity. In fact, the evidence reveals that the registrant and contact information provided by Respondent upon registration of the Domain Name is confusing and misleading.
At paragraph 12 to the Complaint, the Complainant alleges its legitimate use of the name and mark, "Discover Card," as well as the goodwill and reputation attached thereto. The evidence is in the effect that for the past 15 years, the DISCOVER CARD name and mark has been continuously used to identify one of the worldís most used credit cards. The Complainant maintains that the success and notoriety of its DISCOVER CARD services continue to rise. In 1999, a concerted marketing effort to expand its network resulted in enrolment of more than 615,000 new merchant locations, the highest yearly increase in the DISCOVER credit cardís history, and 5.5 million new cardholder accounts. Further, in 1999, transaction volume increased by 22 percent and managed consumer loans by 17 percent, to $38 billion.
At paragraphs 17 and 18 of the Complaint, the Complainant continues by alleging that it is concerned with the fact the Domain Name ("wwwdiscovercard.com") complained of here is confusingly similar and practically identical to the Complainant's Mark ("discovercard.com"). The only deviation from Complainantís Marks is the "WWW" prefix evidently appended to the Complainantís "discovercard.com" mark to divert persons searching for the Complainantís website and who erroneously omit a period between "WWW" and "DISCOVERCARD". Moreover, consumers who search the Internet for the Complainant by using the Complainantís name and/or marks, and/or a slight deviation therefrom, will be directed to the Respondentís website, thus increasing the likelihood of confusion.
Further on in paragraph 18 on the Complaint, the Complainant alleges that the Respondent cannot demonstrate or establish any legitimate interest in the Domain Name. There exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or other right by which Respondent could own or use any domain name incorporating the Complainant's famous DISCOVER CARD.
At paragraph 19 on the Complaint, the Complainant advances that the Respondent has registered and is using the Domain Name in bad faith under Paragraphs 4(b)(iii) and 4(b)(iv) of the Policy in that the Respondent has registered the Domain Name primarily for the purpose of attracting Internet users, who are otherwise searching for Complainantís "discovercard.com" website, to its website or othersí websites for commercial benefit.
At paragraph 23 of the Amendment to the Complaint, The Complainant asserts bad faith in that the Respondent has registered the Domain Name with intention to transfer it to the Complainant for valuable consideration ($1500) in excess of the Respondentís out of pocket expenses. The Respondent was well aware of the filing fees required under the Domain Name Dispute and Resolution Policy and attempted to extort said fees from the Complainant.
Further on in paragraph 23 of the amendment to the Complaint, the Complainant maintains that it is impossible to conceive of any legitimate use to which the Domain Name could be put to by the Respondent. Any use of the Domain Name by the Respondent would violate the ICANN Policy by being an infringement of the Complainantís rights under the trademark, unfair competition and dilution laws.
The Respondent failed to file a response with the Center within the prescribed days.
6. Discussion and Findings
Referring to paragraph 14 of the ICANN Rules, in the absence of a response to the Complainantís allegations by the Respondent, the Panel may consider those claims in light of the unchallenged evidence submitted by the Complainant. While, the Panel cannot decide in the Complainantís favour solely on the basis of the Respondentís failure to respond, it is however entitled to draw, and in this case does draw, such inferences as it deems appropriate and just in the circumstances.
Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements. In order to have the Domain Name transferred to this end, it is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which the it holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
The Complainant provided evidence to the effect that it was the registered owner of the trademark, DISCOVER CARD, as well as domain names incorporating the mark DISCOVER CARD in a number of jurisdictions prior to the registration of the Domain Name by the Respondent. The Domain Name has been formed by the adding of the "WWW" prefix to Complainantís "discovercard.com" mark to divert persons searching for Complainantís website and who erroneously omit a period between "WWW" and "DISCOVERCARD" to the Respondentís website.
In this regard the Panel subscribes to the decision: World Wrestling Federation Entertainment Inc. v. Bassette, case No. D2000-0256,
The Panel asserts that the Respondent is a "typo-pirate" who attempts to mislead Internet users and takes advantage of and profits from the unavoidable fact that typographical errors occur.
The Panel is of the opinion that it is obviously clear that the Domain Name is confusingly similar and practically identical to Complainant's marks. Consumers who search the Internet for Complainant by using Complainantís name and/or marks, and/or a slight deviation therefrom, will be directed to Respondentís website, thus increasing the likelihood of confusion.
The Panel is therefore of the opinion that the Complainant has met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
No Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
The Panel is of the opinion that there is no evidence to support any finding of a legitimate right or interest in the Domain Name on behalf of the Respondent. The Respondent has not shown use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services, nor has he attempted to show that he has commonly been known by the Domain Name nor has he attempted to show a legitimate non-commercial or fair use of the Domain Name.
Consequently, as in LLS International vs. Mark Freeman, Case No. D2000-1080 and Altavista Company v. Grandtotal Finances Ltd., Case No. D2000-0848, the Panel finds it appropriate in this regard to draw an adverse inference from the Respondentís failure to reply to the Complaint and detail any legitimate rights or interests he might have had in the Domain Name of the type defined in paragraph 4(c) of the ICANN Policy.
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in Bad Faith. Paragraph 4(b) of the ICANN Policy provides a number of non-exhaustive circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) of the ICANN Policy holds that, if the circumstances tend to indicate that by using the Domain Name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website, then this might be evidence of bad faith registration and use on behalf of the Respondent.
The Panel finds that Respondent has used the Domain Name in bad faith pursuant to Paragraph 4(b)(iv) of the UDRP, in that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location.
It is quite obvious that the only intent of the Respondent was an attempt to appropriate the goodwill of the Complainant and to cause confusion amongst anyone who learned of the Domain Name into believing that this Domain Name, its proprietor or any website were associated with the Complainant, and to redirect traffic intended for the Complainant for his own purposes (his own online gambling website).
The Panel is also of the opinion that the Domain Name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests "opportunistic bad faith" (see Parfums Christian Dior v. Javier Garcia Quintas and "Christiandior.net" Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondťe en 1772 v. The Polygenix Group Co., Case No. D2000-0163), followed by this Panel in LLS International vs. Mark Freeman, Case No. D2000-1080, and Altavista Company v. Grandtotal Finances Ltd., Case No. D2000-0848.
The Panel also finds that the Respondent demonstrated bad faith when, after receiving Complainantís Complaint, he used his power as the administrator of the Domain Name in question, and altered the Domain Name records by replacing his registrant and contact information with false information.
For the foregoing reasons, the Panel concludes that the Complainant has met its burden of proof and has proven that the Respondentís actions have been in bad faith pursuant to paragraphs 4(b)(i) and 4(b)(iv) of the ICANN policy.
For the foregoing reasons, the Panel decides:
- that the Domain Name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- that the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel orders that the registration of the Domain Name:
be transferred to the Complainant by the Registrar, Alabanza Corporation d/b/a BulkRegister.
Jacques A. Lťger, Q.C.
Dated: November 29, 2000