WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Discover Financial Services v. discover login, discover
Case No. D2018-2869
1. The Parties
The Complainant is Discover Financial Services of Riverwoods, Illinois, United States of America (the “United States”), represented by Winston & Strawn LLP, United States.
The Respondent is discover login, discover of chennai, chennai, India.
2. The Domain Name and Registrar
The disputed domain name <discovercreditcardlogin.online> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2018. On December 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on January 18, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a credit card issuer and electronic payment service company. It offers customers a DISCOVER-branded credit card as well as other services, including personal student loans and online savings products. The Complainant also operates a payment business, branded as DISCOVER NETWORK, which has numerous merchant and cash access locations. The Complainant promotes its various DISCOVER-related services in multiple jurisdictions.
The Complainant operates a website at “www.discover.com” which can also be accessed through another of its websites at “www.discoverfinancial.com”. In addition, it owns many trade marks for DISCOVER. These include United States service mark number 1,479,946 for DISCOVER in class 36 for “financial services, namely; proprietary credit card services”, registered on March 8, 1988. The Complainant also owns trade marks in India for DISCOVER, including trade mark, registration number 470462, registered on November 23, 2005 for various services in Class 36, including credit card services, debit card services and financial and insurance services relating to the issuance of credit cards.
The disputed domain name was registered on April 30, 2018. As at late 2018, it did not resolve to an active website.
5. Parties’ Contentions
The Complainant says that the disputed domain name is confusingly similar to a trade mark in which it has rights because it fully incorporates the Complainant’s DISCOVER mark and adds only the generic terms “credit card” and “login” as well as the generic Top Level Domain (“gTLD”) “online”. These additional words do not reduce the confusing similarity between the disputed domain name and the Complainant’s mark; see, for example, ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800. In fact, the addition of the term, “credit card”, which is closely associated with the financial services industry, serves to increase the confusing similarity.
The Complainant asserts also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not using the disputed domain name for a bona fide offering of goods and services, nor is it making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is passively holding the disputed domain name, in that it does not resolve to an active website. Such use does not constitute a bona fide or legitimate business use. The Respondent has never been commonly known as “Discover”, nor any variations of it, and has never used any trade mark or service mark similar to the disputed domain name. Furthermore, the Complainant has not granted the Respondent any license, permission or authorization by which it could own or use domain name registrations which are confusingly similar to any of its DISCOVER trade marks.
Lastly, the Complainant says that the disputed domain name was registered and used in bad faith. The Respondent registered the disputed domain name with either actual or constructive knowledge of the Complainant’s marks having regard to the Complainant’s registration of its marks with the trade mark office in India, where the Respondent is located, as well as in the United States, where the Complainant resides. Registration of a confusingly similar domain name, without more, in the light of such actual or constructive knowledge, is evidence of bad faith registration; see Exxon Mobil Corporation v. Joseph Fisher, WIPO Case No. D2000-1412. There is no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the Complainant’s marks, which itself evidences bad faith registration and use; see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. Further, the Respondent is passively holding the disputed domain name in circumstances which point to bad faith registration and use; see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant shall prove each of the following three elements in order to succeed in its Complaint:
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced evidence of its service and trade mark registrations for DISCOVER, including in India and in the United States. For completeness, it should be stated that its United States service mark, number 1,479,946, full particulars of which have been set out above, was first registered by Sears Roebuck and Co., but has subsequently been assigned to the Complainant.
The disputed domain name incorporates the Complainant’s registered trade and service marks for DISCOVER in full and without alteration. The gTLD “.online” is disregarded under this element of the Policy as it is a technical requirement of registration. The additional words “credit”, “card” and “login” do not serve to prevent the disputed domain name from being considered confusingly similar for the purpose of this element of the Policy. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it had used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(iii) it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
On the basis of the evidence before the Panel, none of the grounds set out at paragraph 4(c) of the Policy are applicable. As the disputed domain name does not resolve to an active website, it is evidently not being used in connection with a bona fide offering of goods and services. Nor is there any evidence that the Respondent has been commonly known by the disputed domain name. Whilst the registrant details provided by the Registrar to the Center on December 19, 2018 state that the name of the registrant is “discover login” and that the registrant’s billing organization is “discover”, the Respondent’s alleged name is inherently implausible. In the absence of any evidence that might indicate that this is genuinely its name, the Panel concludes that the underlying registrant is not commonly known as “discover login” and that its identity is being concealed. Lastly, as the disputed domain name does not resolve to an active website, the Respondent cannot be said to be making a legitimate, noncommercial or fair use of it.
As explained at section 2.1 of the WIPO Overview 3.0; “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
The Complainant has established a prima facie case under this element of the Policy and the Respondent has made no attempt to rebut it. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists, without limitation, four circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely (in summary):
"(i) circumstances indicating that the respondent has registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on it.
The Complainant does not state the date on which it first commenced trading as DISCOVER. The United States service mark for DISCOVER trade mark referenced above claims a first use in commerce date of February 1985 by the original owner of the mark. In any event, by the date of the registration of the disputed domain name in April 2018, the DISCOVER mark had been used by the Complainant for many years and the Complainant’s repute in its DISCOVER business was extensive.
Whilst “discover” is, in itself, capable of use in respect of a wide variety of goods and services, the disputed domain name couples the Complainant’s mark with the additional words “credit card login”. “Credit card” is clearly associated with consumer-related financial services and “login” is a term which is referable, amongst other meanings, to online banking, as is the gTLD, namely “.online”. Having regard to the absence of any plausible reason why the Respondent would have chosen to register a domain name clearly referable to the Complainant, a company with which it has no known association, these additional words establish, on at least a balance of probabilities, that the disputed domain name was registered by the Respondent with an awareness of the Complainant and its repute in its DISCOVER trade mark and in order, in some way, to take advantage of it.
The fact that the Respondent has not made any actual use of the disputed domain name is not in itself a bar to a finding of bad faith registration and use; see section 3.3 of the WIPO Overview 3.0 which sets out a number of factors which panels have considered relevant when considering whether a finding of bad faith is appropriate, in circumstance where a domain name has been registered, but not used by, a respondent. These are: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
Applying each of these factors, in turn, to the current circumstances; first, the Complainant has a widespread reputation in its DISCOVER mark in, at least, the United States. Second, the Respondent has not submitted a response to the Complaint, nor is there any other evidence of actual or contemplated good-faith use. Third, the underlying Respondent has concealed its identity because the name “discover login” is plainly concocted and the true identity of the underlying registrant is not known. Finally, having regard to the fact that the disputed domain name couples the Complainant’s DISCOVER trade mark with three words which Internet users will associate closely with the services which the Complainant provides, it is not possible to conceive of a good faith use of the disputed domain name by the Respondent.
The Respondent’s passive holding of the disputed domain name therefore has the characteristics which are associated with bad faith registration and use, as set out at section 3.3 of the WIPO Overview 3.0 and the decisions of other panels, as first applied in Telstra Corporation Limited v. Nuclear Marshmallows, (supra). Whilst the Respondent’s passive holding of the disputed domain name does not fit precisely within any of the specific circumstances of bad faith and use set out at paragraph 4(b) of the Policy, those circumstances are without limitation. As the panel said in Telstra; “Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are "without limitation" - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith”.
The Panel accordingly finds that the disputed domain name was registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <discovercreditcardlogin.online> be transferred to the Complainant.
Date: February 1, 2019