WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Discover Financial Services v. Registration Private, Domains By Proxy, LLC / Tripti Chaturvedi, Tripti Main
Case No. D2020-2586
1. The Parties
The Complainant is Discover Financial Services, United States of America, represented by Taft, Stettinius & Hollister, LLP, United States of America (“United States”).
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Tripti Chaturvedi, Tripti Main, India.
2. The Domain Name and Registrar
The disputed domain name <discovercarloans.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2020. On October 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 October 12, 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 October 14, 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 October 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2020.
The Center appointed Adam Taylor as the sole panelist in this matter on November 24, 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 supplies credit card, loan and electronic payment services under the “Discover” brand including the “Discover Credit Card” as well as the “Discover Network”, with millions of merchant and cash access locations. The Complainant’s employees number in the thousands.
The Complainant operates websites at “www.discover.com” and “www.discovercard.com”.
The Complainant owns United States trade mark no. 1479946 for DISCOVER, filed November 22, 1986, registered March 8, 1988, in class 36.
The disputed domain name was registered on December 24, 2019.
The disputed domain name has been used for a website branded “Discover Car Loans”, offering vehicle financing.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions:
The Complainant’s brand is highly recognisable in the field of financial services. The Complainant promotes its products and services worldwide.
Due to its extensive registration and use around the world, the Complainant’s DISCOVER mark is well known and famous in the United States and India. Previous UDRP panels have found the mark to be famous and distinctive.
The disputed domain name is confusingly similar to the Complainant’s trade mark. It incorporates the Complainant’s mark and merely adds the term “car”, which can be read as either a descriptive term or a misspelling of “card”, plus the descriptive term “loans”. Indeed, the additional terms increase the degree of confusing similarity with the Complainant’s mark because they constitute typo-squatting and/or descriptive terms relevant to the Complainant’s business.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Instead, the Respondent is using the disputed domain name for a website offering automobile financing loans to customers in direct competition with the Complainant’s personal / vehicle loans business.
The Respondent has not been commonly known by the disputed domain name.
The Complainant has not granted the Respondent any licence to use any domain name that it is similar to the Complainant’s marks.
The disputed domain name was registered and is being used in bad faith.
The Respondent registered the disputed domain name with actual or constructive knowledge of the Complainant’s marks. There was no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill in the Complainant’s marks, which long predate the Respondent’s registration of the disputed domain name.
Even if the Respondent claimed that it was unaware of the Complainant’s marks, preliminary trade mark and Internet searches would have brought the Complainant’s marks to the Respondent’s attention.
The Respondent’s use of the Complainant’s mark in the disputed domain name was intended to create a likelihood of confusion under paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the mark DISCOVER by virtue of its registered trade mark.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s trade mark is readily recognisable within the domain name and, accordingly, the addition of the descriptive terms “car” and “loans” are insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind.
Not only was the Complainant’s business well-established by the date of registration of the disputed domain name, the Respondent used the disputed domain name to offer vehicle financing services in direct competition with the Complainant. There is no obvious connection between the term “discover” and the supply of such services other than in the context of the Complainant’s mark.
The Respondent has not come forward to deny the Complainant’s assertions of bad faith, let alone put forward any plausible legitimate explanation for its registration and use of the disputed domain name.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 disputed domain name, <discovercarloans.com>, be transferred to the Complainant.
Date: December 7, 2020