WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Discord Inc. v. Domain Administrator, See PrivacyGuardian.org / Maven Pos Service LLP, Tilek Suierkulov

Case No. D2021-0893

1. The Parties

The Complainant is Discord Inc., United States of America (“United States”), represented by BrandIT GmbH, Switzerland.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Maven Pos Service LLP, Tilek Suierkulov, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <discord-merch.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2021. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2021, 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 March 26, 2021, 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 1, 2021.

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 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 29, 2021.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on May 5, 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 is Discord Inc., a company created in 2015 that provides a free voice, video, and text chat through a web platform and an app for mobile devices, which has over 250 million users registered worldwide.

The Complainant owns, among others, the following trademark registrations:

The Complainant is the owner of several domain names that contain the trademark DISCORD, among them, <discord.com>, <discordapp.com>, and <discordmerch.com>.

The disputed domain name was registered on June 21, 2020. At the time of filling of the Complaint, it resolved to an active website “Discord Merch – The Gaming Blog” allegedly advertising merchandise of the Complainant displaying the products bearing the Complainant’s trademarks, and also allegedly offering merchandise of other brands.

5. Parties’ Contentions

A. Complainant

The Complainant asserted the following:

That it is a corporation incorporated in the United States that provides free voice, video, and text chat services through a web platform and an app for mobile devices.

That it owns several trademark registrations for DISCORD in different jurisdictions, such as the United Kingdom, the United States, and the European Union, as well as several domain names that incorporate the DISCORD trademark.

That it has over 250 million users across its web and mobile platforms, and more than 100 million monthly active users worldwide.

That it has a strong presence online via its official web sites and social media, due to the extensive use, advertising, and revenue associated with the trademark DISCORD.

That the disputed domain name incorporates entirely the Complainant’s trademark DISCORD, as well as the descriptive term “merch”, which is a known abbreviation for “merchandise”.

That the disputed domain name was registered many years after the registration of the Complainant’s trademark.

That it has not authorized the Respondent to use the DISCORD trademark, as well, and that the Respondent is not affiliated to, nor authorized by the Complainant to register or use the disputed domain name.

That there is no evidence showing that the Respondent is commonly known by the disputed domain name or that he owns any trademark registrations incorporating the term “discord-merch.com”.

That the Respondent has been using a privacy service to conceal his identity, rather than being known by the disputed domain name.

That the disputed domain name resolves to a website that advertises goods for sale that bear the Complainant’s trademark, without authorization.

That the disputed domain name clearly refers to the Complainant and its trademarks, which reflects the Respondent’s intention to create an association in order to generate confusion among Internet users, which behavior cannot be considered as a bona fide offering of goods and services, nor constitute a noncommercial or fair use of the disputed domain name.

That the Respondent’s use the Complainant’s trademark in the disputed domain name, alongside with the content displayed on the web site to which the disputed domain name resolves, cannot be considered as a bona fide offering of goods and services, nor constitute a noncommercial of fair use of said disputed domain name.

That the Complainant sent a cease-and-desist letter to “…@discord-merch.com”, which was replied to on January 25, 2021.

That in the Respondent’s response to the cease-and-desist letter, the Respondent claimed that the purpose of his web site is to provide news related to DISCORD, and that no sales take place by means of it; however the Complainant has found, in said web site, that there is a section called “Return and Exchange Policy”, which can only suggest that such web site does feature actual sales of goods.

That the Respondent was fully aware of the existence of the Complainant when the disputed domain name was registered, since it made a “legal disclaimer” stating that DISCORD is a trademark owned by the Complainant, and that therefore the registration of the disputed domain name was made knowingly and in bad faith.

That it is highly likely that the Respondent registered the disputed domain name intentionally to take advantage of the reputation of the Complainant and its DISCORD trademark.

That the Respondent tries to pretend that the disputed domain name is only used for news and blog posts related to the Complainant’s services, but that there are several indications that the web site is also used to sell or advertise unauthorized merchandise that bear the Complainant’s DISCORD trademark, which indicates that the disputed domain name is being used in bad faith.

That in the response to its cease-and-desist letter, the Respondent mentioned the possibility of selling the disputed domain name, which is further evidence of bad faith.

B. Respondent

The Respondent did not file a Response.

6. Discussion and Findings

The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:

(i) the disputed domain name 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 with respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

In view of the Respondent’s failure to submit a Response, the Panel may decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; and International Hospitality Management IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683; and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Identical or Confusingly Similar

The Complainant has filed evidence showing that it owns registrations for the trademark DISCORD, among other places, in the United States, the European Union, and the United Kingdom, where the Respondent has declared to have his domicile.

The disputed domain name <discord-merch.com> is confusingly similar to the Complainant’s trademark DISCORD, as it incorporates said trademark entirely, with the addition of the term “merch”, which is a commonly known abbreviation for “merchandise”, and a hyphen between the trademark DISCORD and the term “merch” (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The addition of the hyphen between the trademark DISCORD and the term “merch” is irrelevant for the purpose of assessing confusing similarity.

The addition of the generic Top-Level Domain (“gTLD) “.com” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”), and therefore has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO, WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919).

In light of the above, the first element of the Policy has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did no acquire trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has asserted that there is no relationship or affiliation between the Complainant and the Respondent, that it has not granted any license, permission, authorization, or other right to the Respondent to use its trademark DISCORD, and that the Respondent has not been commonly known by the disputed domain name (see Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272). The Respondent did not contest these allegations.

The Complainant has argued that the Respondent is not and has not been commonly known by the disputed domain name and that when searching online for the words “discord” or “discord merch” most of the results listed by the relevant search engine refer to the Complainant, its trademark DISCORD and its services. The Respondent has not contended this argument.

The disputed domain name entirely reproduces the Complainant’s trademark DISCORD and adds the term “merch”, which is a commonly used abbreviation for “merchandise”, which shows that the Respondent has targeted the Complainant, its trademarks, and its business. In this regard, the Respondent did not take sufficient measures to make it clear to Internet users visiting his web site that said site is not operated by the Complainant. Therefore, the Respondent’s conduct cannot be considered as a legitimate noncommercial or fair use of the disputed domain name (see section 2.5.2 of the WIPO Overview 3.0).

In his reply to the Complainant’s cease-and-desist letter, the Respondent stated that he does not perform any sales through the web site to which the disputed domain name resolves, and that said web site is only intended to host a blog and provide news related to the Complainant’s services. However, the Complainant has demonstrated that the Respondent advertises unauthorized goods associated with the Complainant, and redirects users to third party web sites that sell such products.

The Complainant argues that the fact that the web site to which the disputed domain name resolves comprises a section related to a “Return and Exchange Policy” is an indication that the Respondent is actually selling products. This allegation was not challenged by the Respondent. Such conduct cannot be deemed to be a bona fide offering of goods and services, nor constitute a noncommercial or fair use of the disputed domain name (see section 2.5.3 of the WIPO Overview 3.0).

The consensus view among panels appointed under the Policy, is that the use of a domain name for illegal activity, such as the sale of counterfeits, impersonation or passing off, cannot confer rights to, or legitimate interests in a domain name (see section 2.13 of the WIPO Overview 3.0; see also Self-Portrait IP Limited v. Franklin Kelly, WIPO Case No. D2019-0283).

Accordingly, the Complainant has satisfied the requirements of the second element of the Policy.

C. Registered and Used in Bad Faith

Bad faith under the Policy is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or has 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) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

The Complainant has proven to have registrations for the DISCORD trademark in different jurisdictions, including the United Kingdom, where the Respondent has declared to have his domicile. These registrations predate the date of registration of the disputed domain name.

The Complainant has submitted evidence showing that the trademark DISCORD is well-known in the market of messaging and chat services. Given the notoriety of said trademark, this Panel finds that the Respondent knew the Complainant at the time of registration of the disputed domain name, which constitutes bad faith registration under the Policy (see Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation, supra.).

The fact that the Respondent registered the disputed domain name which entirely reproduces the Complainant’s trademark DISCORD, and incorporates the term “merch”, which can be perceived by Internet users as a reference to “merchandise”, shows that the Respondent has targeted the Complainant, which constitutes opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal vc. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. cv. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980; Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk, WIPO Case No. D2020-1344; and Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747).

According to the evidence filed by the Complainant, the Respondent has caused the disputed domain name to resolve to a web site that poses a risk of confusion to Internet users, in an attempt to impersonate the Complainant and its business (see section 2.5.1 of the WIPO Overview 3.0; see also Philip Morris Products S.A. v. Domain Administrator, Registrant of iqosatismaganiz.com (apiname com) / Anl Girgin, Teknoloji Sarayi, WIPO Case No. D2019-0466; and Self-Portrait IP Limited v. Franklin Kelly, WIPO Case No. D2019-0283).

The evidence submitted by the Complainant also shows that the Respondent, through the web site to which the disputed domain name resolves, advertises unauthorized goods purportedly related to the Complainant, and redirects users to third party web sites that sell such products. Therefore, the Panel finds that the Respondent has attempted to attract Internet users to his web site for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site, which constitutes bad faith under paragraph 4(b)(iv) of the Policy (see 1IQ PTY LTD v. 1337 Services LLC, WIPO Case No. D2017-2156; and Facebook, Inc., WhatsApp Inc. v. Wisdom King, Wizindo, WIPO Case No. D2019-2517).

In light of the above, the third element of the Policy has been met.

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 name <discord-merch.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: May 19, 2021