WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Discover Financial Services v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues
Case No. D2020-1178
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 Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Panama.
2. The Domain Names and Registrar
The Disputed Domain Names <discovercardn.com> (the “First Disputed Domain Name”) and <discoverperpnaloans.com> (the “Second Disputed Domain Name”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2020. On May 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the First Disputed Domain Name. On May 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the First Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 19, 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 May 21, 2020, including the Second Disputed Domain Name. On May 27, 2020 the Center transmitted by email to the Registrar a request for registrar verification in connection with the Second Disputed Domain Name. On May 27, 2020, 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 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 June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2020.
The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on July 6, 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 Rules, paragraph 7.
4. Factual Background
The Complainant is a credit card issuer and electronic payment services company, established in the United States, trading under the name and brand DISCOVER. It offers in particular a DISCOVER credit card, as well as personal and student loans and on-line banking services. The products and services sold under the DISCOVER trademark are advertised and promoted in many countries.
The Complainant operates a website at <discover.com>, which can also be accessed through <discovercard.com>.
The Complainant is the owner of various registrations in the USA and Panama for the DISCOVER trademark, including:
- United States trade mark registration number 1,479,946 registered on March 8, 1988 in class 36 for financial services namely, credit card ownership services;
- United States trade mark registration number 1,620,369 registered on October 30, 1990 in class 36 for financial services namely, credit card ownership services;
- Panama trade mark registration number 48093 registered on May 5, 1989 for financial services, namely, credit card ownership services.
The Respondent registered the First Disputed Domain Name on November 27, 2019 and the Second Disputed Domain Name on September 23, 2019.
The First Disputed Domain Name used to resolve to a webpage offering sponsored links to third-party websites in relation to financial and credit card services. The Second Disputed Domain Name used to resolve to third-party commercial websites.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Names are confusingly similar to its prior DISCOVER trademark as they reproduce it in full together with descriptive words.
The Complainant has not licensed or otherwise permitted the Respondent to use the DISCOVER mark or any variation thereof. The Complainant also contends that the Respondent is not commonly known by either of the Disputed Domain Names.
The Complainant alleges that the Respondent was aware of the DISCOVER trademark before registering the Disputed Domain Names all the more so since the Respondent has already been involved in prior UDRP proceedings against the Complainant.
The Complainant claims that the Respondent does not show any bona fide or legitimate interest under the Disputed Domain Names as they used to resolve to a website with pay-per-click third-party links competing with the Complainant or to third-party commercial websites.
The Complainant further contends that the Respondent presumably receives a click through revenue by publishing links to third-party websites. In addition, the Respondent has a pattern of conduct consisting of registering domain names, which contain registered trademarks of other entities.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns various trademark registrations for the mark DISCOVER.
The First Disputed Domain Name <discovercardn.com> reproduces the Complainant’s trademark in its entirety with no alteration, and combines this trademark with the descriptive term “card” and the additional letter “n”.
The Second Disputed Domain Name <discoverperpnaloans.com> reproduces the Complainant’s trademark in its entirety with no alteration, and combines this trademark with the elements “perpna” and “loans”, which appears to be a misspelling of “personal loans”.
As a rule, UDRP panels consider that the addition of a descriptive term 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)). In addition, panels consider that a domain name, which consists of a common, obvious or intentional misspelling, is confusingly similar to the relevant mark for purposes of the first element (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0)).
In the present case, the trademark DISCOVER is clearly recognizable in the Disputed Domain Names. The mere addition of the descriptive term and misspelling does not change the overall impression produced by the Disputed Domain Names and is not sufficient to prevent a finding of confusing similarity between the Disputed Domain Names and the Complainant’s trademark (see for example DEKRA e.V.v. Andrzej Potrac, WIPO Case No. D2015-1223).
UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).
The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the Disputed Domain Names, nor has the Complainant granted to the Respondent an authorization to use the Disputed Domain Names. Moreover, there is no evidence indicating that the Respondent is commonly known by the Disputed Domain Names.
The Respondent does not appear to have ever operated any bona fide or legitimate business under the Disputed Domain Names and is not making any noncommercial or fair use of the Disputed Domain Names. Instead, the Respondent used the First Disputed Domain Name in connection with a website containing pay-per-click links to third-party websites offering services that directly compete with Complainant and the Second Disputed Domain Name as a redirection to third-party commercial websites. These types of uses do not constitute bona fide offering of goods and services.
In addition, prior panel decisions involving the Complainant and the Respondent have found that the Respondent lacks rights or legitimate interests (see WIPO Case No. D2019-0518; WIPO Case No. D2019-0666, and WIPO Case No. D2019-3114).
Accordingly, the Panel finds that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the Disputed Domain Names in bad faith.
Given the distinctive nature of the mark DISCOVER, its combination in the Disputed Domain Names with terms associated with credit card and loan services (i.e., services for which the Complainant is known), and the fact that the Respondent has already been involved in UDRP proceedings against the Complainant, the Panel considers that the Respondent could not ignore the existence of the Complainant and of its DISCOVER mark at the time of the registration of the Disputed Domain Names.
The fact that the Respondent has been involved in a large number of previous decisions under the UDRP whether with the Complainant or with third trademark right holders also shows a pattern of bad faith conduct within the meaning of paragraph 4(b)(ii) of the Policy (see section 3.1.2 of the WIPO Overview 3.0).
The presence of (presumably sponsored) links to third party websites on the page to which the First Disputed Domain Name resolves or the redirection to third-parties’ commercial websites for the Second Disputed Domain Name supports a finding of use in bad faith. Indeed, the redirection to a webpage with sponsored links or third parties commercial websites suggests, in the Panel’s opinion, an intention on the part of the Respondent to exploit and profit from the Complainant’s trademark, by attempting to generate financial gains by means of “click through” revenues. Such conduct constitutes bad faith registration and use of the Disputed Domain Name within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee, WIPO Case No. D2009-1199; Scania CV AB v. Michael Montrief, WIPO Case No. D2009-1149; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, supra; and AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230).
Finally, it is likely that the Respondent did not provide accurate contact details. Indeed, the DHL shipment of the complaint could not be delivered to the address provided by the Registrar for the underlying Respondent. This further supports a finding of bad faith.
Therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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, <discovercardn.com> and <discoverperpnaloans.com> be transferred to the Complainant.
Anne-Virginie La Spada
Date: July 20, 2020