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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Discover Financial Services v. WhoisGuard Protected, WhoisGuard, Inc. / Registration Private / DFS Administrator, DFS Services LLC / Colin McDougall

Case No. D2020-0751

1. The Parties

The Complainant is Discover Financial Services, United States of America (“United States”), represented by Taft, Stettinius & Hollister, LLP, United States.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Registration Private United States / DFS Administrator, DFS Services LLC, United States / Colin McDougall, Canada.

2. The Domain Names and Registrar

The disputed domain names <discoverit.cc>, <discoveritcreditcard.net> and <discoveritcreditcards.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2020. On March 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on April 6, 2020 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 8, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on April 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2020.

The Center appointed Assen Alexiev as the sole panelist in this matter on May 18, 2020. 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 Rulesoverv, paragraph 7.

4. Factual Background

The Complainant is a credit card issuer and electronic payment services company with millions of merchant and cash access locations. It offers the DISCOVER IT Cash Back Credit Card and other credit card options.

The Complainant is the owner of the following trademark registration of the sign “Discover” (the “DISCOVER trademark”):

- the trademark DISCOVER with registration No. 1,479,946, registered in the United States on March 8, 1988 for services in International Class 36;
- the trademark DISCOVER IT with registration No. 4,741,770, registered in the United States on May 26, 2015 for services in International Class 36;
- the trademark DISCOVER with registration No. 434011, registered in Australia on October 1, 1985 for services in International Class 36;
- the trademark DISCOVER with registration No. 185692, registered in Panama on November 13, 2009 for services in International Class 36;
- the trademark DISCOVER with registration No. TMA844881, registered in Canada on February 27, 2013 for services in International Class 36; and
- the trademark DISCOVER CARD with registration No. TMA331566, registered in Canada on September 4, 1987 for services in International Class 36.

The Complainant operates its website at the domain name <discover.com>. The Complainant’s website can also be accessed through the domain names <discovercard.com> and <discoverit.com>.

The disputed domain names <discoveritcreditcards.com> and <discoveritcreditcard.net> were registered on February 7, 2019. None of them resolves to an active website. The disputed domain name <discoverit.cc> was registered on February 13, 2020 and it resolves to a webpage containing various pay-per-click (PPC) links related to different credit cards.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to the DISCOVER trademark because they fully incorporate this trademark. The Complainant points out that the disputed domain name <discoverit.cc> adds the Cocos Islands country code Top-Level Domain “ccTLD” “.cc”, which may add to the confusion since some Internet users may come to the erroneous conclusion that “.cc” stands for “credit card” and attribute to this disputed domain name and its associated website more credibility than they should. The Complainant further states that the two other disputed domain names include the dictionary words “credit” and “card,” which also increase the confusingly similarity, as these terms are directly related to the goods and services for which the DISCOVER trademark is registered.

According to the Complainant, the Respondent lacks rights or legitimate interests in the disputed domain names and is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of them. The Complainant notes that the Respondent is not commonly known under any of the disputed domain names or under the DISCOVER trademark, and the Complainant has not granted the Respondent authorization to register or use domain names that are confusingly similar to the DISCOVER trademark. The Complainant points out that the Respondent had previously associated the disputed domain name <discoveritcreditcard.net> with a website that impersonated the Complainant’s website in an attempt to collect personal data from Internet users presumably looking for the Complainant. After the Complainant requested the removal of the content on this website, the Respondent uploaded the same web content on the website associated with the disputed domain name <discoverit.cc>. The Complainant further submits that the disputed domain name <discoveritcreditcards.com> was registered with false WhoIs contact information impersonating the Complainant.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. According to it, the Respondent registered the disputed domain names with knowledge of the Complainant’s DISCOVER trademark, which is registered in the jurisdictions, where the Respondent is allegedly located or which are being targeted by the Respondent’s websites, and based on the Respondent’s use of the DISCOVER trademark on the websites associated to the disputed domain names, by which the Respondent attempts to trade off of the reputation and goodwill of the trademark by redirecting consumers through a PPC website to websites that directly compete with the Complainant’s goods and services, or by using the disputed domain names for website that impersonated the Complainant’s official website.

Finally, the Complainant submits that the Respondent has provided the Registrar with false contact information, impersonating the Complainant and the entity Domains by Proxy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Procedural issue - Consolidation against multiple Respondents

The Complainant requests the consolidation against multiple Respondents in respect of the disputed domain names. The Complainant maintains that the disputed domain names are under common control. It points out that the registrant information for the disputed domain name <discoveritcreditcards.com> is false and impersonates the Complainant, which is not the registrant of this disputed domain name. The Complainant also states that the current public WhoIs registrant information lists WhoisGuard Protected, WhoisGuard, Inc. as the registrant of the disputed domain names <discoverit.cc> and <discoveritcreditcard.net>, although the Registrar has informed the Center that the registrant of the disputed domain name <discoverit.cc> is listed as Registration Private, and that the registrant of the disputed domain name <discoveritcreditcard.net> is listed as Colin McDougall. According to the Complainant, the listing of Registration Private as registrant of the disputed domain name <discoverit.cc> is false.. According to the Complainant, there appears to be a single person named Colin McDougall, who is attempting to hide his connection with the other domain names. However, all three disputed domain names were registered with the same Registrar, and two of them on the same day, while the third (<discoverit.cc>) was registered following a successful takedown request by the Complainant in respect of the website at the disputed domain name <discoveritcreditcard.net> and was then used to republish the same content. The Complainant maintains that it should not have to bear the cost and burden of filing multiple UDRP complaints because the Respondent is using falsification methods to attempt to hide his connection to all three disputed domain names.

The Center has discharged its duties to notify each of the entities listed as registrants of the disputed domain names. Neither of these entities has submitted a Response in this proceeding or denied the requests and statements made by the Complainant, including those related to the consolidation of the disputes in respect of the three disputed domain names.

Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. As discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complaint is filed against multiple respondents, panels look at whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in the content or layout of websites corresponding to the disputed domain names, any naming patterns in the disputed domain names, any changes by the respondent relating to any of the above items following communications regarding the disputed domain names, or other arguments made by the complainant.

The Panel is satisfied that the Complainant has shown good reasons why the consolidation of the disputes related to the disputed domain names in a single proceeding is justified and appropriate in the circumstances.

The Complainant has provided evidence that the disputed domain names <discoveritcreditcard.net> and <discoverit.cc> have been used to post the same website content mimicking the Complainant’s official website and the second of them was activated immediately following the taking down of the first (as discussed in section 6.2.B below). Both of these disputed domain names reproduce the DISCOVER and DISCOVER IT trademarks entirely. This satisfies the Panel that the disputed domain names <discoveritcreditcard.net> and <discoverit.cc> are more likely than not under common control.

The disputed domain name <discoveritcreditcards.com> was registered on the same day as the disputed domain name <discoveritcreditcard.net>, and they exhibit the same naming pattern <[mark][services].gTLD>, the only relevant difference between them being the use of the singular or the plural word “card” or “cards”. The Complainant has also made the point that the WhoIs information about the disputed domain name <discoveritcreditcards.com> is false as it impersonates the Complainant, and there is no evidence in the case file to suggest otherwise. All the above satisfies the Panel that it is more likely than not that the disputed domain name <discoveritcreditcards.com> is also under common control with the other two disputed domain names.

Neither of the listed registrants of the disputed domain names has advanced any reasons why it may not be equitable to allow the consolidation of the disputes, which is likely to lead to greater procedural efficiency, and the Panel is not aware of any reasons why the consolidation would not be fair and equitable to all parties.

Therefore, the Panel decides to allow the consolidation in relation to the disputed domain names in the present proceeding. All registrants of the disputed domain names will be jointly referred to in this Decision as the “Respondent”.

6.2. Substantive issues

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the Respondent has registered and is using the disputed domain names in bad faith.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.

The Respondent has however not submitted a Response and have not disputed the Complainant’s contentions and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence for the registration of the DISCOVER and DISCOVER IT trademarks, which satisfies the Panel that the Complainant has established its trademark rights for the purposes of the present proceeding.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) and ccTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” and “.net” gTLDs and the “.cc” ccTLD of the disputed domain names.

The disputed domain names all incorporate the DISCOVER trademark in its entirety and they are their most prominent element, and two of the disputed domain names also include the dictionary words “credit”, “card” or “cards”, which refer to credit cards, which is the product for which the DISCOVER trademark is registered and which is offered by the Complainant. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.

In view of the above, the Panel finds that the disputed domain names are confusingly similar to the DISCOVER and DISCOVER IT trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent is not commonly known under any of the disputed domain names or under the DISCOVER trademark, and the Complainant has not granted the Respondent authorization to register or use domain names that are confusingly similar to this trademark. The Complainant points out that the disputed domain name <discoveritcreditcard.net> was previously associated with a website that impersonated the Complainant’s website and attempted to collect personal data of Internet users, and that after the Complainant requested the removal of this website, the same web content was uploaded on the website at the disputed domain name <discoverit.cc>. The Complainant further submits that the disputed domain name <discoveritcreditcards.com> was used to resolve to a PPC website containing links to competitors of the Complainant, and was registered with false WhoIs contact information impersonating the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent had a fair opportunity to present its case and to address the arguments and evidence of the Complainant and explain why it should be regarded as having rights or legitimate interests in the disputed domain names, but refrained from doing so.

The disputed domain names are confusingly similar to the DISCOVER trademark of the Complainant and to the Complainant’s domain names <discover.com>, <discovercard.com> and <discoverit.com>, and two of the disputed domain names also contain the words “credit card” or “credit cards”, which is the main product offered by the Complainant and for which the DISCOVER trademark is registered. The Respondent does not deny that it had knowledge of the Complainant when it registered the disputed domain names and that two of them have at certain points in time resolved to websites that mimic the official website of the Complainant in an attempt to collect personal data from unsuspecting Internet users, while the third of them was used to resolve to a website featuring PPC links to competitors of the Complainant.

In view of the above, it appears to the Panel that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant and of its DISCOVER trademark, has registered and used the disputed domain names in an attempt to confuse and attract Internet users to the websites at the disputed domain names and to collect their personal data. To the Panel, such conduct does not appear to be fair or giving rise to rights or legitimate interests of the Respondent in the disputed domain names.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Respondent has incorporated the Complainant’s DISCOVER trademark in the disputed domain names. As discussed above, the disputed domain names have been associated with websites that mimic the Complainant’s website and attempt to collect personal data by misleading Internet users, or with a website displaying PPC links to competitors of the Complainant. This is sufficient to satisfy the Panel that the Respondent must have been well aware of the Complainant and of the DISCOVER trademark when it registered the disputed domain names and that it has targeted this trademark with the registration and use of the disputed domain names, likely in an attempt to confuse and attract Internet users for financial gain. In consideration of this, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith with the intent to profit from them or otherwise exploit the DISCOVER trademark through collection of personal data and/or through the generation of revenue from PPC links.

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 disputed domain names <discoverit.cc>, <discoveritcreditcard.net> and <discoveritcreditcards.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: May 27, 2020

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