WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Discord Inc. v. RANK TW, RANKTW
Case No. D2021-4365
1. The Parties
The Complainant is Discord Inc., United States of America, represented by BrandIT GmbH, Switzerland.
The Respondent is RANK TW, RANKTW, China.
2. The Domain Names and Registrar
The disputed domain names <discord.best>, <discord.cheap>, <discord.deals> and <discord.events> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2021. On December 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 27, 2021, 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 28, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint1 . The Complainant filed an amended Complaint on December 31, 2021.
The original Complaint in this proceeding also concerned another domain name registered with a different registrar, but following receipt of the registrar’s verification, the Complainant chose to withdraw the domain name from the current 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, and the proceedings commenced on January 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2022.
The Center appointed John Swinson as the sole panelist in this matter on February 7, 2022. 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 company based in the United States of America that has a software product and App called Discord. The Discord product is a voice, video and text chat App. It was created in 2015 primarily for people who liked to play videogames and wished to chat with their friends while playing. The Complainant states that it has 14 million daily active users.
The Complainant owns registered trademarks in several jurisdictions, including United States Trademark Registration No. 4930980 for DISCORD, registered on April 5, 2016.
The Complainant also owns and uses numerous domain names containing the trademark DISCORD, including <discord.com> (registered on November 6, 2000), <discordapp.com> (registered on February 26, 2015) and <discordmerch.com> (registered on September 7, 2019).
- The disputed domain name <discord.best> and <discord.deals> were registered on April 13, 2020.
- The disputed domain name <discord.cheap> was registered on November 16, 2020.
- The disputed domain name <discord.events> was registered on May 5, 2019.
The Respondent did not file a Response, so little is known of the Respondent. The Registrar records have what appears to be a false address for the Respondent, in the State of Iowa in “Taiwan”.
At one time, the disputed domain names resolved to a website that included the Complainant’s trademarks. This website had the title “Explore RANKTW’s Store on Sellix” and included what appears to be numerous banner advertisements, including to buy bitcoin or for Discord developer tools. One advertisement promoted a service to booster your Discord member count, “Starting at $0.01”.
At the time of this decision, the disputed domain names divert to a developer’s page on Complainant’s website.
5. Parties’ Contentions
In summary, the Complainant makes the following submissions:
Discord is a free voice, video, and text chat app. Created in 2015, it was originally developed for videogame players as a chat app to communicate with friends while playing games online and to have a place to provide running commentary on what was going on, but has quickly become extremely popular among the general public and it is now used by all kinds of users, from local hiking clubs, to art communities, to study groups.
In 2020, Discord counted 300 million registered users across its web and mobile platforms and more than 14 million daily active users and 140 million monthly active users worldwide.
The Complainant owns the registered trademark referred to in Section 4 above as well as other trademarks for DISCORD in other jurisdictions including China.
The disputed domain names incorporate the Complainant’s DISCORD trademark in its entirety.
Domain names that are identical to third parties’ trademarks create a very high risk of association with the trademark owner. The incorporation of a trademark in its entirety is often sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s trademark.
The Complainant has not authorized or licensed the Respondent to use the Complainant’s trademarks or authorize the Respondent to register or use the disputed domain names. There is no evidence that the Respondent is commonly known by the disputed domain names. The Respondent is not using the disputed domain names for a bona fide offering of goods or services and is not making a legitimate noncommercial use of the disputed domain names.
The disputed domain name <discord.best> resolves to websites displaying the DISCORD trademarks creating a likelihood of confusion with the Complainant’s activity and bearing the Complainant’s trademarks without any authorization from the Complainant. When clicking on the section “Contact” on these websites, the user is redirected to the Complainant’s official pages.
The disputed domain names <discord.cheap>, <discord.deals> and <discord.events> all automatically redirect to <discord.best>.
In the present case, the appearance of the websites associated with the disputed domain names suggests a relationship with the Complainant by offering services bearing Complainant’s trademarks. Thus, the Respondent is fully aware of the Complainant’s rights, given that the websites to which the disputed domain names resolve themselves redirect to the official Complainant’s website at <discord.com>.
It is very likely that the Respondent registered the disputed domain names using the trademark DISCORD intentionally in order to take advantage of reputation of that trademark and the Complainant’s goodwill, free-riding on the Complainant’s reputation.
The disputed domain names resolve to active websites displaying servers connected to the Complainant without any authorization from the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain names are 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 disputed domain names; and
(iii) the disputed domain names have been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant owns trademark registrations for DISCORD.
The disputed domain names are identical to the DISCORD trademark, disregarding the Top-Level Domain (i.e. what is after the dot, the “TLD”).
In most cases under the Policy, the TLD is ignored when considering confusing similarity. Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels have considered the text on “both sides of the dot” when addressing the “confusing similarity” issue. See, e.g., Confederation Nationale Du Credit Mutuel v. Super Privacy Service LTD c/o Dynadot / Wei Chen, WIPO Case No. D2021-0426. Here, it is appropriate to disregard the TLD when carrying out the analysis under the first element.
The Complainant succeeds on the first element of the Policy in relation to the disputed domain names.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.
The Complainant asserts that the Complainant has not authorized or licensed the Respondent to use the Complainant’s trademarks or authorize the Respondent to register or use the disputed domain names. The Complainant also asserts that there is no evidence that the Respondent is commonly known by the disputed domain names. The Respondent is not using the disputed domain names for a bona fide offering of goods or services and is not making a legitimate non-commercial use of the disputed domain names.
The Complainant has prior rights in the DISCORD trademark, which precede the registration of the disputed domain names by the Respondent.
The Panel considers that, based upon the above, the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain names and thereby the burden shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain names.
The Respondent has chosen not to file any Response. The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names.
Based on the evidence before the Panel, none of the circumstances listed in paragraph 4(c) apply in the present circumstances. Accordingly, the Panel finds that the Respondent has no rights or any legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain names in bad faith.
In the present circumstances, the fact that the disputed domain names are identical to the Complainant’s DISCORD trademark, at one time resolved to website which included the Complainant’s trademark and sold services related to the Complainant’s chat program and had links to the Complainant’s servers, and currently resolve to the Complainant’s website, leads the Panel to conclude the registration and use of the disputed domain names is in bad faith.
The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and the Complainant’s trademark.
Additionally, others have recognized, for example in Discord Inc. v. Domain Administrator, See PrivacyGuardian.org / Maven Pos Service LLP, Tilek Suierkulov, WIPO Case No. D2021- 0893, that “the trademark DISCORD is well-known in the market of messaging and chat services”.
The Respondent provided false contact details to the Registrar in respect of the disputed domain names. Given this, and the lack of any response to the Complainant’s claims, the inference of bad faith is strengthened.
The Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists. Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk, WIPO Case No. D2020-2773.
The Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to a website by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website under paragraph 4(b)(iv) of the Policy. This website also could disrupt the business of the Complainant.
The Panel finds that the Respondent has both registered and used the disputed domain names in bad faith.
The Complainant succeeds on the third element of the Policy in relation to the disputed domain names.
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 <discord.best>, <discord.cheap>, <discord.deals> and <discord.events> be transferred to the Complainant.
Date: February 20, 2022
1 At the time of the filing of the Complaint, the Respondent’s identity was masked by a privacy service.