WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Discover Financial Services v. Salman Khairi
Case No. D2021-3038
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 Salman Khairi, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <discoverdebtrelief.com> 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 September 15, 2021. On September 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 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 September 22, 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 September 27, 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 October 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2021.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 9, 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 a leading credit card issuer and electronic payment services company. The Complainant also offers personal and student loans, auto loans, online savings products, debt management, 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 its products and services are advertised and promoted around the world.
The Complainant is the owner of several trademark registrations, including United States Trademark Registration No. 1479946 (registered on March 8, 1988) and Pakistan Trademark Registration No. 271652 (registered on August 27, 2009) for the word trademark DISCOVER. The Complainant has used its DISCOVER trademark in connection with financial, credit, and debt-related services, amongst other goods and services, throughout the world since at least as early as 1988.
The Complainant operates its website at “www.discover.com”, where customers can log into their confidential accounts and where the Complainant provides information about its goods and services.
The disputed domain name was registered on March 10, 2021. The Complainant has provided an undated screenshot, that it says is of the website resolving from the disputed domain name at the time of the initial filing of the Complaint, which shows a website page that contains the statement “Discover Debt Relief Program is a leading debt settlement company providing people-friendly & trustworthy service since 1999”, along with information about its purported services. The Complainant has also provided a screenshot, taken on the date of filing of the amended Complaint, September 27, 2021, showing that the disputed domain name then resolved to a webpage containing the text “This site can’t be reached”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because: (i) the disputed domain name uses the DISCOVER trademark in its entirety, and merely adds the descriptive terms “debt” and “relief” to the generic Top-Level Domain (“gTLD”) “.com”; (ii) the addition of those terms makes confusion more likely, as they describe the Complainant’s services and thereby confuse consumers into thinking that the disputed domain name is associated with or endorsed by the Complainant and their well-known debt consolidation services; and (iii) use of the gTLD “.com” does not further distinguish the confusing similarity of the disputed domain name and the DISCOVER trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent has never been known as “discoverdebtrelief.com” or by the DISCOVER trademark or any variations thereof, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known, other than the infringing use noted herein; (ii) the WhoIs information for the disputed domain name does not identify a registrant organization (the field is blank), which means the Panel must conclude that the Respondent is not commonly known by the disputed domain name; (iii) the Complainant has not granted the Respondent any license, permission, or authorization by which the Respondent could own or use a domain name registration that is confusingly similar to its DISCOVER trademark; (iv) the Respondent’s use of the disputed domain name is highly likely to confuse Internet users into falsely thinking the Respondent is somehow authorized by or affiliated with the Complainant, and thereby disrupts the Complainant’s business; (v) the Respondent has never operated any bona fide or legitimate business under the disputed domain name and is now using it to passively hold the disputed domain name; (vi) the Respondent previously used the disputed domain name to draw consumers to its website where it advertised various competing services in a manner that trades on the Complainant’s goodwill and reputation, and that is likely to confuse users into believing there is an affiliation with the Complainant, thereby presenting a very real risk of phishing and fraud; and (vi) given the nature of the Respondent’s activities and the fact that it is concealing its identity by providing incomplete or false contact information in the WhoIs records, there is a significant risk that consumers may provide personally identifiable information to the Respondent under the false belief of an affiliation with the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) there is no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the Complainant’s extensive rights in its famous DISCOVER trademark, which rights have existed worldwide long before the recent registration of the disputed domain name; (ii) the Respondent is using (or previously used) the disputed domain name to capitalize on Internet users’ efforts to find the Complainant’s website, and is using fonts similar to that used by the Complainant, in an effort to attract the Complainant’s customers and profit from their confusion; (iii) the evidence strongly suggests that the Respondent’s previous use of the disputed domain name was for a phishing website, which is clear-cut bad faith registration and use; (iv) had the Respondent conducted a preliminary trademark search it would have found the Complainant’s various trademark registrations, the websites associated with the trademarks, and numerous additional references evidencing the Complainant’s use of the famous DISCOVER trademark in connection with its goods and services; (v) mail exchange or “MX” records were previously set up by the Respondent on the disputed domain name, which is a clear indication that the Respondent has made preparations to circulate emails that could potentially contain spam or fraudulent phishing emails; (vi) the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website; (vii) the Respondent is acting in bad faith by currently passively holding the disputed domain name, which now resolves to a page stating “This site can’t be reached”; and (viii) by providing incomplete or false WhoIs information, the Respondent has engaged in bad faith registration and use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark DISCOVER, followed by the word string “debtrelief”. The Complainant’s word trademark is clearly recognizable within the disputed domain name. The addition of the word string “debtrelief”, which most Internet users will read as referring to debt relief, does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of the Complainant, is not otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use its DISCOVER trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was initially used to resolve to a website that purported to offer debt relief services similar to those offered by the Complainant. At the time of the filing of the amended Complaint, the disputed domain name no longer resolved to an active website. Given the confusing similarity of the disputed domain name to the Complainant’s trademark and the absence of any relationship between the Respondent and the Complainant, neither the initial nor the subsequent use of the disputed domain name is a bona fide use or a legitimate noncommercial or fair use. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered many years after the Complainant first registered its DISCOVER word trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademark, given that the disputed domain name consists of the Complainant’s trademark followed by a word string (“debtrelief”) that relates to a business conducted by the Complainant using that trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name in an attempt to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <discoverdebtrelief.com> be transferred to the Complainant.
Andrew F. Christie
Date: November 23, 2021