The Complainant is Discover Financial Services, United States of America (“United States” or “USA”), represented by Taft, Stettinius & Hollister, LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
The disputed domain name <discoverbankk.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2020. On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 20, 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 November 20, 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 November 20, 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 November 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 18, 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.
The Complainant is a credit card issuer and electronic payment services company, established in the United States, trading under the name and brand “Discover”. It offers in particular a Discover-branded credit card, as well as personal and student loans, and online banking services.
The Complainant operates a website promoting its business linked to the domain name <discover.com>, which can also be accessed by redirection from <discovercard.com> or <discoverbank.com>.
The Complainant is the owner of various trademark registrations in the USA and Panama for the word Discover, including: United States trade mark registration number 1,479,946 registered on March 8, 1988, in class 36 for financial services namely, credit card ownership services; United States trade mark registration number 1,620,369 registered on October 30, 1990, in class 36 for financial services namely, credit card ownership services; Panama trade mark registration number 48093 registered on May 5, 1989, for financial services, namely, credit card ownership services. These trademarks are referred to collectively in this decision as the “DISCOVER trademark”
The Disputed Domain Name was created on May 15, 2020. The Complainant has provided evidence that at the time of filing of the Complaint, the Disputed Domain Name was involved in dynamic redirect, resolving users to a page purportedly warning users that their “McAfee Antivirus” subscription had ended and offering a renewal discount, and also to financial services-related pay-per-click (“PPC”) links including those of competitors.
The Complainant says that the Disputed Domain Name is confusingly similar to its prior DISCOVER trademark as it reproduces it in full together with a typographical variation of the descriptive word “bank”.
The Complainant says it has not licensed or otherwise permitted the Respondent to use the DISCOVER trademark or any variation thereof. The Complainant also says that the Respondent is not commonly known by the Disputed Domain Name.
The Complainant alleges that the Respondent was aware of the DISCOVER trademark before registering the Disputed Domain Name particularly since the Respondent has been involved in prior UDRP proceedings including several brought by the Complainant – see Discover Financial Services v. Registration Private, Domains By Proxy, LLC, DomainsbyProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0518; Discover Financial Services v. Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico / Carolina Rodrigues, Privacy Limited, WIPO Case No. D2019-0666; Discover Financial Services v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-3114; Discover Financial Services v. Registration Private, Domains By Proxy, LLC Carolina Rodrigues, WIPO Case No. D2020-1178 (together the “Previous Decisions”).
The Complainant says that the Respondent is in substance a serial offender having in multiple previous UDRP proceedings been found to have acted in bad faith, both in the Previous Decisions and in other UDRP complaints brought by third parties. The Complainant provides extensive details of the cases in question (see below).
It says the Respondent also acts in bad faith as the web page to which the Disputed Domain Name resolves appears at times to deliver some form of malicious payload. It also at times resolves to a website with PPC links to businesses competing with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Preliminary Matters
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (“Registration Private, Domains By Proxy, LLC”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case, the Panel considers the substantive Respondent to be Carolina Rodrigues, Fundacion Comercio Electronico, and references to the Respondent are to that person.
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant clearly has rights in the DISCOVER trademark. The Panel finds the Disputed Domain Name is confusingly similar to the DISCOVER trademark. It simply combines that trademark with a typographical variation of the term “bank”.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). It is established in WIPO Overview 3.0 at section 1.7 that, where a domain name incorporates the entirety of a mark, or where at least a dominant feature of a mark is recognizable in a domain name, the domain name is considered to be confusingly similar to the mark.
It is also established that the addition of a term (such as here “bankk”) to a domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a term to the relevant mark does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the 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 has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the DISCOVER trademark. The Complainant has rights in the DISCOVER trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish her rights or legitimate interests in the Disputed Domain Name. Moreover, the Complainant has furnished evidence illustrating that the Disputed Domain Name engaged in dynamic redirect, pointing users to sites allegedly distributing malware or comprising competing PPC links; neither of those scenarios would confer rights or legitimate interests upon the Respondent, nor do they represent a bona fide offering of goods or services. See WIPO Overview 3.0, sections 2.13 and 2.9.
Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
The Panel finds it hard to imagine a more egregious case of registration in bad faith. The Respondent has repeatedly acted in bad faith in relation to the Complainant’s DISCOVER trademark in each of the Previous Decisions and each time she loses a case, she appears to simply register a different domain name, being in each case confusingly similar to the Complainant’s trademark. The present Complaint simply relates to the latest time she has done this.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have 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) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
In the present circumstances, the Panel agrees with the Complainant that there was 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 DISCOVER trademark. As such, the (typo) nature of the domain name itself evidences bad faith registration and use. See Charles Jorden Holding AG v. AAIM, WIPO Case No. D2000-0403, finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith”.
The Panel also agrees with the Complainant that the Respondent is a serial offender. The Complainant identifies as examples the following cases – Accor v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1861; Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com/ Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1810; Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC/ Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1809; CVS Pharmacy, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1741; Asurion, LLC v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1650; VUR Village Trading No. 1 Limited t/a Village Hotels v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1596; Government Employees Insurance Company v. Domains By Proxy, LLC / Fundacion Comercio Electronico, WIPO Case No. D2019-1595; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409; and, Baillie Gifford & Co. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1312. There are over 140 cases filed through the Center – found via a simple search on its public website – involving the Respondent, ranging from 2012 to the present. The Panel agrees that the Respondent is clearly in the business of registering domain names that include the trademarks of others. Following this pattern, the Respondent has registered the Disputed Domain Name using the Complainant’s DISCOVER trademark in order to trade off the Complainant’s reputation (and by so doing, preventing Complainant from registering the Disputed Domain Name). This alone constitutes evidence of registration and use in bad faith. See the Policy at 4.b. (ii) (above).
There are further grounds for finding bad faith based on the content of the website to which the Disputed Domain Name resolves as described above.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <discoverbankk.com> be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: January 1, 2021