WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Discover Financial Services v. 钱梦聃 (qianmengdan)

Case No. D2020-3373

1. The Parties

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

The Respondent is 钱梦聃 (qianmengdan), China.

2. The Domain Names and Registrar

The disputed domain names <ddiscoverhomeloans.com>, <discovergomeloans.com>, <discoverhhomeloans.com>, <discoverhimeloans.com>, <discoverhmeloans.com>, <discoverhoeloans.com>, <discoverhomeeloans.com>, <discoverhomelloans.com>, <discoverhomeloana.com>, <discoverhomeloand.com>, <discoverhomeloanns.com>, <discoverhomeloanss.com>, <discoverhomloans.com>, <discoverhommeloans.com>, <discoverhomrloans.com>, <discoverhomwloans.com>, <discoverhoneloans.com>, <discoverhoomeloans.com>, <discoverhpmeloans.com>, <discoverjomeloans.com>, <discoveromeloans.com>, <discoverrhomeloans.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2020. On December 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 14, 2020, 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 Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 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 in English on December 21, 2020.

On December 17, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on December 18, 2020. The Respondent did not comment on the language of the proceeding.
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, in English and Chinese, and the proceedings commenced on January 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent in English and Chinese of its default on February 9, 2021.

The Center appointed Francine Tan as the sole panelist in this matter on February 16, 2021. 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, Discover Financial Services, states that it is a leading credit card issuer and electronic payment services company with a highly recognizable financial services brand. The Complainant offers credit cards under the DISCOVER trade mark in addition to offering personal and student loans, online savings products, certificates of deposit and money market accounts through its Discover Bank subsidiary. The Complainant’s payment businesses consist of the Discover Network, with millions of merchant and cash access locations. The Complainant has thousands of employees and the products and services sold under the DISCOVER mark are advertised and promoted around the world. The Complainant operates its website at the domain name <discover.com> where customers can log into their confidential accounts and where the Complainant provides consumer information about its goods and services.

The Complainant owns numerous trade mark registrations for DISCOVER in many countries across the world, including in the U.S. and China. Its trade mark registrations include the following:

(i) U.S. Registration No. 1,479,946, registered on March 8, 1988;

(ii) U.S. Registration No. 4,211,365, registered on September 18, 2012; and

(iii) China Registration No. 4891650, registered on May 14, 2009.

The Complainant states that as a result of the extensive use and registration of its DISCOVER marks around the world, the DISCOVER mark is well known, including in the U.S. and China.

The disputed domain names were registered on August 23, 2020, all of which resolve to pay-per-click pages with links showing e.g. “Home Equity Loans”, “Refinance Home Mortgage”, “Find a Local Mortgage Broker”, “Credit Card Approval for Poor Credit Scores”, “Business Credit Cards”, and “Small Business Bank”, and which redirect to third-party websites offering competing services.

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainant’s DISCOVER trade mark they fully incorporate the DISCOVER trade mark with the addition of extra elements such as letters (e.g. “h”, “l” and “m”) and industry-specific terms, “home” and “loans”. In some cases, the words “home” and “loan” are mis-spelt. The addition and omission of letters in the disputed domain names constitute typosquatting, which is a practice of deliberately adding slight deviations to famous marks for commercial gain. The alterations do not avoid confusing similarity with the Complainant’s trade mark. The industry-specific terms “home” and “loans” (including the misspellings thereof) of “home” and “loans” are generic phrases in the financial services industry. Their addition also does not avoid confusing similarity with the Complainant’s trade mark.

The Respondent has no 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 the disputed domain names. The Respondent has neither been commonly known by the DISCOVER trade mark nor any variations thereof. The Respondent has never used any trade mark or service mark similar to the disputed domain names by which it may have come to be known, other than the infringing use asserted by the Complainant. The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the DISCOVER trade marks. The Respondent has never operated any bona fide or legitimate business under the disputed domain names and is not making a protected noncommercial or fair use of the disputed domain names. Instead, the Respondent currently uses the disputed domain names in relation to pay-per-click websites containing links to third-party websites offering services that directly compete with the Complainant.

The disputed domain names were registered and are being used in bad faith to trade off the reputation and goodwill of the Complainant’s DISCOVER trade marks. The Respondent is using the disputed domain names to presumably obtain click-through revenue by publishing links to third-party websites offering competing services. The Respondent would have been aware of the Complainant’s rights in the DISCOVER trade marks in the U.S. and China by conducting a preliminary trade mark search. The Respondent provided the Registrar with false contact information and in so doing, has engaged in bad faith registration and use of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue: Multiple Domain Names

A preliminary issue to the consolidation of 22 disputed domain names in the single Complaint. 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 person or entity. In this case, the identity of the disputed domain name holder has been ascertained as the same individual, 钱梦聃 (qianmengdan).

The Panel therefore determines the Complaint in respect of the 22 disputed domain names is in compliance of paragraph 3(c) of the Rules.

6.2 Preliminary Issue: Language of the Proceeding

Paragraph 11 of the Rules provides that:

“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreements for the disputed domain names is Chinese.

The Complainant requested that the language of the proceeding be English. The reasons are that:

(i) The disputed domain names and websites to which they resolve are in in English, and not Chinese, evidencing the Respondent’s ability to communicate in English.

(ii) The Complainant will be put through an undue burden and the proceeding will be unnecessarily delayed if Chinese were made the language of the proceeding.

The Respondent did not comment on the language of the proceeding.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

Having considered the above-mentioned factors, the Panel determines that English be the language of the proceeding. The Panel agrees that the Respondent appears to be familiar and comfortable with the English language, taking into account his selection of the English words “discover”, “home” and “loans” (and deliberate mis-spellings thereof) in the disputed domain names.

In the absence of any objection by the Respondent, the Panel does not find it procedurally efficient to have the Complainant translate the Complaint and evidence into Chinese. There is no evidence that the Panel’s decision in this regard would be prejudicial to the Respondent.

6.3 Substantive Issues

A. Identical or Confusingly Similar

The Complainant has established it has rights in the DISCOVER trade mark. The trade mark is reproduced in its entirety and appears as the first word in the disputed domain names. The Panel agrees that the addition of individual letters of the alphabet and the terms “home” and “loans” (including mis-spellings thereof) does not serve to avoid confusing similarity with the Complainant’s trade mark. Further, the generic Top-Level Domain “.com” is a technical requirement for domain name registrations and not relevant to the issue of the identity or confusing similarity between the disputed domain names and the Complainant’s trade mark.

The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant’s registrations of the DISCOVER trade mark long predate the registration date of the disputed domain names. The Complainant did not license or authorize the Respondent to use the DISCOVER mark as a trade mark or in a domain name. Neither is there evidence that the Respondent is commonly known by the term “discover”. The use of the disputed domain names which incorporate the Complainant’s DISCOVER trade mark redirecting to websites which contain links to third-party websites offering services that directly compete with Complainant do not constitute a bona fide offering of goods or services. (See section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).)

Having established a prima facie case, the burden of production shifts to the Respondent to show that he/she has rights or legitimate interests in the disputed domain names. The Respondent failed to respond to or rebut the Complainant’s assertions in this proceeding.

The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Complainant’s DISCOVER trade mark is a well-established mark in the financial services industry. The Respondent could not by pure coincidence and without prior knowledge of the Complainant and its mark have selected the disputed domain names without the Complainant and/or its DISCOVER mark in mind. The use of a domain name “that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith” (see section 3.1.4 of the WIPO Overview 3.0).

The Panel finds that (i) the Respondent’s absence of rights or legitimate interests in the disputed domain names, (ii) his/her pattern of conduct in registering numerous variations of disputed domain names comprising the Complainant’s mark in combination with descriptors (and mis-spellings thereof) which correspond to the type of services provided by the Complainant (i.e. the offer of loans), and (iii) the use of the disputed domain names for the purpose of deriving pay-per-click revenue via competing links, all constitute evidence that the disputed domain names were registered and are being used in bad faith. The Panel also draws a negative inference from the Respondent’s failure to respond in this proceeding.

The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.

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, <ddiscoverhomeloans.com>, <discovergomeloans.com>, <discoverhhomeloans.com>, <discoverhimeloans.com>, <discoverhmeloans.com>, <discoverhoeloans.com>, <discoverhomeeloans.com>, <discoverhomelloans.com>, <discoverhomeloana.com>, <discoverhomeloand.com>, <discoverhomeloanns.com>, <discoverhomeloanss.com>, <discoverhomloans.com>, <discoverhommeloans.com>, <discoverhomrloans.com>, <discoverhomwloans.com>, <discoverhoneloans.com>, <discoverhoomeloans.com>, <discoverhpmeloans.com>, <discoverjomeloans.com>, <discoveromeloans.com>, <discoverrhomeloans.com>, be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: March 2, 2021