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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Discover Financial Services v. WhoisGuard Protected, WhoisGuard, Inc. / Dave Skeen, tradebitr

Case No. D2019-0811

1. The Parties

Complainant is Discover Financial Services of United States of America (the “United States”), represented by Winston & Strawn LLP, United States.

Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Dave Skeen, tradebitr of United States.

2. The Domain Name and Registrar

The disputed domain name <discoveryonlinebanking.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2019. On April 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 11, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 12, 2019.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on April 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2019. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2019.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on May 13, 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

Complainant is a credit card issuer and financial services company offering a credit card, personal and student loans, online savings accounts, certificates of deposit and money market accounts under the DISCOVER brand. Alongside other businesses, Complainant’s Discover Network is accessed through millions of merchant and cash access locations. Complainant has thousands of employees and products and services sold under the DISCOVER Mark are available and promoted around the world. Complainant owns the domain names <discover.com> and <discoverfinancial.com>, which resolve to active websites offering Complainant’s services.

Complainant is the proprietor of numerous trademark registrations containing the DISCOVER mark (the “DISCOVER Mark” or “Mark”), including the following:

- United States trademark No. 1479946 for DISCOVER (word mark) for “financial services, namely; proprietary credit card services,” registered on March 8, 1988;

- United States trademark No. 3025822 for DISCOVER (word mark) for “financial services, namely, credit card services; prepaid card services offered through cards with stored value; debit card services; electronic credit and debit transaction services […]” registered on December 13, 2005;

- United States trademark No. 3760567 for DISCOVER (combined mark) for “financial services, namely, credit card services […]” registered on March 16, 2010;

Respondent registered the Domain Name <discoveryonlinebanking.com> on January 26, 2019. The Domain Name currently resolves to an inactive website. It previously resolved to a website containing pay-per-click links to third-party websites offering services by Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows: First, the Domain Name is confusingly similar to Complainant’s DISCOVER Mark, which is well known and famous in the United States and India. The Mark should therefore be granted liberal protection. The Domain Name fully incorporates the DISCOVER Mark, adding only the generic terms “online” and “banking,” which do not make the Domain Name any less confusingly similar.

Second, Respondent has not rights or legitimate interests in the Domain Name. Respondent is identified as “Dave Skeen and tradebitr,” and has never been commonly known by any of the DISCOVER Mark nor by any mark similar to the Domain Name. Complainant has not granted Respondent permission to own or use any domain name that is confusingly similar to the Mark. Respondent has not operated any bona fide or legitimate business under the Domain Name, which previously resolved to a pay-per-click website to third-party services that directly compete with Complainant.

Third, the Domain Name was registered and is being used in bad faith. Respondent had actual or constructive knowledge of Complainant’s Mark, which alone would be sufficient to demonstrate bad faith registration of a domain name. In relation to bad faith use, the Domain Name previously resolved to a website containing links to websites of third parties that are in direct competition with Complainant. Respondent was presumably obtaining click-through revenue from said links. Respondent registered the Domain Name for the purpose of seeking to benefit from the reputation and goodwill of Complainant’s Mark to intentionally attract, for commercial gain, Internet users to a website that contained Complainant’s Mark. Respondent essentially passed itself off as Complainant. Respondent’s website required consumers to create a personal account, leading Complainant to believe that Respondent was engaging in phishing. Respondent is currently holding the Domain Name passively, and used a privacy service to shield its identity. Such conduct amounts to registration and use of the Domain Name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the reasonable contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the DISCOVER Mark, through trademark registrations in at least the United States, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name <discoveryonlinebanking.com> wholly incorporates Complainant’s Mark. The addition of the letter “y” and the dictionary words “online” and “banking” do not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, section 1.8 (See also Discover Financial Services v. Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico / Carolina Rodrigues, Privacy Limited, WIPO Case No. D2019-0666). It is the consensus view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that the materials in the case file indicate that Respondent is not an agent or an employee of Complainant, nor is Respondent a licensee or a subsidiary thereof. There is no evidence that Respondent is commonly known by the Domain Name. The Domain Name currently resolves to an inactive website and no information is provided on what rights or legitimate interests Respondent may have in the Domain Name. To the contrary, the Domain Name previously resolved to a website containing pay-per-click links to competitor websites, and invited Internet users to enter their personal information to create an account. Both activities are of a nature that cannot support a finding of rights or legitimate interests (see section 2.3.1 of the WIPO Overview 3.0 and cases cited thereunder).

Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see L’Oreal v. Zhao Jiafei, WIPO Case No. D2015-1458). Respondent has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of fair use of Complainant’s Mark.

The Panel finds that Complainant has established the second element under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Name was registered and is being used in bad faith. Respondent has not provided any explanation for the selection of the Domain Name containing Complainant’s Mark, and, in the absence of any explanation, and considering the longstanding and broad use of Complainant’s Mark in respect of financial services and the fact that the Domain Name contains Complainant’s Mark together with the words “online” and “banking,” the Panel finds that Respondent registered the Domain Name in full awareness of this Mark and therefore in bad faith.

The Domain Name previously resolved to a website that contained pay-per-click links and also invited Internet users to enter personal information to create a supposed account. This website contained Complainant’s Mark. At this time, the Domain Name is being passively held. The Panel holds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s Mark. There is no evidence in the record that would provide an alternative explanation for use of the Domain Name. To the contrary, such circumstances are clear evidence of bad faith use of the Domain Name, as previous panels have held (see section 3.1.4 of the WIPO Overview 3.0.) moreover, passive holding of a domain name does not prevent a finding of bad faith.

Further, Respondent’s concealing of its identity and use of false contact details, and its failure to submit a Response or to provide any evidence of actual or contemplated good-faith use, further demonstrate bad faith.

The totality of the circumstances, supported by the evidence supplied by Complainant, demonstrate bad faith wherein Respondent has intentionally attempted to capitalize on Complainant’s trademark rights in pursuit of an illegitimate business enterprise. See WIPO Overview 3.0, section 3.1.

The Panel concludes that Complainant has established the third element under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <discoveryonlinebanking.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: May 27, 2019

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