WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Discover Financial Services v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico / Carolina Rodrigues, Privacy Limited
Case No. D2019-0666
1. The Parties
The Complainant is Discover Financial Services of Riverwoods, Illinois, United States of America (“United States”), represented by Winston & Strawn LLP, United States.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama / Carolina Rodrigues, Privacy Limited of Belize City, Belize.
2. The Domain Names and Registrar
The disputed domain names <discoverbnak.com> and <discovercardpersonalloan.com> (the “Domain Names”) are registered with Media Elite Holdings Limited dba Register Matrix and GoDaddy.com, LLC, respectively (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2019. On March 26, 2019, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the <discovercardpersonalloan.com> Domain Name. On March 27, 2019, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the <discovercardpersonalloan.com> Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 29, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 3, 2019, adding the <discoverbnak.com> Domain Name to the proceeding. On April 5, 2019, the Center transmitted by email to Media Elite Holdings Limited dba Register Matrix a request for registrar verification in connection with the <discoverbnak.com> Domain Name. On the same day, Media Elite Holdings Limited dba Register Matrix transmitted by email to the Center its verification response confirming that the Respondent Carolina Rodrigues is listed as the registrant and providing the contact details.
The Center verified that the Complaint together with the amended Complaint (hereafter 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 April 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2019.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 8, 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 payment services company that (either directly or through a subsidiary) offers credit cards, loans and online savings products. The Complainant owns the domain name <discover.com> which resolves to an active website where the Complainant’s services are offered to the general public.
The Complainant is the owner of numerous trade mark registrations for DISCOVER (the “DISCOVER Mark”), including a United States trade mark registered on March 8, 1988 (registration number 1,479,946) for “Financial services, namely proprietary credit card services”.
The Domain Name <discovercardpersonalloan.com> was registered on August 20, 2018. The Domain Name <discoverbnak.com> was registered on February 11, 2019. Each of the Domain Names resolves to a website (“the Respondent’s Websites”) that appears to encourage the download of unsolicited malware.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s DISCOVER Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the DISCOVER Mark, having registered the DISCOVER Mark in numerous jurisdictions, such as the United States, Panama and Belize. The Domain Names each reproduce the DISCOVER Mark along with additional generic words (or misspellings of generic words) which do not distinguish the Domain Names from the DISCOVER Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as the Domain Names nor does the Respondent have any authorization from the Complainant to register the Domain Names. The Respondent is not making a legitimate noncommercial or fair use of the Domain Names. Rather the Respondent is using the Domain Names to resolve to third party websites that contain unwanted software or malware, such use not being bona fide.
The Domain Names were registered and are being used in bad faith. By using the Domain Names to resolve to websites that deliver malware, the Respondent is using the Domain Names to divert Internet users searching for the Complainant to third party websites for commercial gain. Such conduct amounts to registration and use of the Domain Names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the DISCOVER Mark, having registrations for the DISCOVER Mark as a trade mark in the United States as well as in various other jurisdictions.
Each of the Domain Names incorporates the DISCOVER Mark with the addition of one or more descriptive terms, such as “card personal loan” and “bnak” (an obvious misspelling of “bank”). The addition of such terms to a complainant’s mark does not prevent a finding of confusing similarity, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056.
An individual viewing either of the Domain Names may be confused into thinking that each of the Domain Names would refer to a site in some way connected to the Complainant. The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s DISCOVER Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the DISCOVER Mark or a mark similar to the DISCOVER Mark. There is no evidence that the Respondent is commonly known by any of the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use.
The Respondent has used the Domain Names to redirect users to websites that encourage visitors to download malware and other unsolicited software products. As stated in section 2.3.1 of the WIPO Overview 3.0 “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” In the present case the Panel finds that the use of the Domain Names to redirect visitors to websites distributing malware does not amount to a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its 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 trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent 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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the DISCOVER Mark at the time the Domain Names were registered. There is no obvious reason (and the Respondent has not chosen to provide such a reason), for an entity to register two domain names each containing the DISCOVER Mark and terms that refer to goods/services offered by the Complainant absent any awareness of the Complainant and its DISCOVER Mark. The registration of the Domain Names in awareness of the DISCOVER Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent registered the Domain Names for the purpose of redirecting visitors to websites that encourage the visitors to download illegal malware, undoubtedly for some form of commercial gain. The use of a domain name for such purpose has been held to be use of that domain name in bad faith, see section 3.1 of the WIPO Overview 3.0 and Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303. The Panel finds that, by using the Domain Names for this purpose, the Respondent has acted in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant and the Complainant’s DISCOVER Mark.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <discoverbnak.com> and <discovercardpersonalloan.com> be transferred to the Complainant.
Date: May 15, 2019