Discovercardlogon.com

The timeline behind discovercardlogon.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Discover Financial Services v. michal restl c/o Dynadot Privacy Claim Number: FA1312001534599 PARTIES Complainant is Discover Financial Services (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is michal restl c/o Dynadot Privacy (“Respondent”), California, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <discovercardlogon.com>, registered with DYNADOT LLC. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. John J. Upchurch as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on December 13, 2013; the National Arbitration Forum received payment on December 16, 2013. On December 15, 2013, DYNADOT LLC confirmed by e-mail to the National Arbitration Forum that the <discovercardlogon.com> domain name is registered with DYNADOT LLC and that Respondent is the current registrant of the name. DYNADOT LLC has verified that Respondent is bound by the DYNADOT LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On December 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@discovercardlogon.com. Also on December 16, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On January 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS Complainant Complainant, Discover Financial Services, is a leading credit card issuer and electronic payment services company with a highly recognizable brand in financial services. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DISCOVER mark (e.g., Reg. No. 1,479,946, registered March 8, 1988). The offending domain name is confusingly similar to Complainant’s mark because it fully incorporates Complainant’s DISCOVER mark. The only difference between Complainant’s product name, including the DISCOVER mark, and Respondent’s domain is the addition of the generic terms “card” and “logon.” Respondent has no rights or legitimate interests in the offending domain name. i. Respondent has never been commonly known as <discovercardlogon.com> and has never used any trademark or service mark similar to the offending domain by which it may have come to be known. ii. The offending domain name currently redirects to a website that offers credit report services targeting Complainant’s cardholders (and previously resolved to a parked webpage containing various links to financial services, many of which are direct competitors of Complainant and a credit card application site). Respondent registered and uses the offending domain name in bad faith. i. Respondent’s used the offending domain name in bad faith, first, in conjunction with a pay-per-click advertising scheme that featured ads for Complainant’s direct competitors, second, in conjunction with a credit card application website, and now, in conjunction with a credit score service. ii. The offending domain name has been put to use to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website or other online locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s websites or location. iii. Respondent had actual knowledge of Complainant’s mark as evidenced by Respondent’s use of the DISCOVER mark in its domain name in conjunction with the industry relevant “card” and “logon” terms. Further, Respondent had at least constructive knowledge of Complainant’s marks based on Complainant’s registration of its mark in the United States. Respondent registered the <discovercardlogon.com> domain name on April 4, 2013. Respondent has not submitted a Response to this case. FINDINGS 1. Respondent’s <discovercardlogon.com> domain name is confusingly similar to Complainant’s DISCOVER mark. 2. Respondent does not have any rights or legitimate interests in the <discovercardlogon.com> domain name. Respondent registered or used the <discovercardlogon.com> domain name in bad faith. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Identical and/or Confusingly Similar Complainant asserts that it is a leading credit card issuer and electronic payment services company with a highly recognizable brand in financial services. Complainant contends that it is the owner of trademark registrations with the USPTO for the DISCOVER mark (e.g., Reg. No. 1,479,946, registered March 8, 1988). See Complainant’s Exhibit C. In Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), the panel concluded that complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. Therefore, the Panel finds that because Respondent appears to reside and operate within the United States, Complainant’s registration of the DISCOVER mark with the USPTO proves Complainant’s rights in the mark under Policy ¶ 4(a)(i). Complainant asserts that Respondent’s <discovercardlogon.com> domain name is confusingly similar to Complainant’s mark because it fully incorporates Complainant’s DISCOVER mark. Complainant contends that the only difference between Complainant’s product name and Respondent’s disputed domain name is the addition of the generic terms “card” and “logon.” The Panel finds that Respondent’s inclusion of generic terms is irrelevant to a Policy ¶ 4(a)(i) determination. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel observes that Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in its disputed domain name. In Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007), the panel held that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant. Accordingly, the Panel concludes that Respondent’s <discovercardlogon.com> domain name is confusingly similar to Complainant’s DISCOVER mark according to Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Complainant asserts that Respondent has never been commonly known as <discovercardlogon.com> and has never used any trademark or service mark similar to the offending domain by which it may have come to be known. The Panel notes that the WHOIS record for the disputed domain name identifies “michal restl c/o Dynadot Privacy” as the registrant. See Complainant’s Exhibit B. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Thus, the Panel determines that Respondent is not commonly known under the <discovercardlogon.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant claims that Respondent’s <discovercardlogon.com> domain name currently redirects to a website that offers credit report services targeting Complainant’s cardholders. The Panel notes that Respondent’s disputed domain name resolves to a webpage that appears to allow Internet users to apply for various credit cards, such as “American Express Serve,” “BuyRight Prepaid Mastercard,” “Pink ACE Elite Visa Prepaid Card,” and more. See Complainant’s Exhibit D. Previous panels have concluded that a respondent’s use of a disputed domain name to provide competing services is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Therefore, the Panel finds that Respondent is not using the <discovercardlogon.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. Complainant contends that Respondent’s <discovercardlogon.com> domain name previously resolved to a parked webpage containing various links to financial services, many of which are direct competitors of Complainant and a credit card application site. The Panel observes that Respondent’s disputed domain name offered competing links such as “Discover Card,” “Best Rewards Credit Card,” “Credit Card Designs,” and others. See Complainant’s Exhibit D. In Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008), the panel held that “Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Consequently, the Panel finds that Respondent’s previous use of the disputed domain name was not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. Registration and Use in Bad Faith Complainant asserts that Respondent’s use of the <discovercardlogon.com> domain name, first, in conjunction with a pay-per-click advertising scheme that featured ads for Complainant’s direct competitors, second, in conjunction with a credit card application website, and now, in conjunction with a credit score service. See Complainant’s Exhibit D. Thus, the Panel finds that Respondent’s use of a disputed domain name to feature competing links or to provide a good or service that is competing with Complainant’s goods or services disrupts Complainant’s legitimate business, showing bad faith use and registration under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Complainant contends that Respondent’s <discovercardlogon.com> domain name has been used to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website or other online locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s websites. The Panel observes that Respondent is using the <discovercardlogon.com> domain name to link to a webpage that appears to allow Internet users to apply for various credit cards, such as “American Express Serve,” “BuyRight Prepaid Mastercard,” “Pink ACE Elite Visa Prepaid Card,” and more. See Complainant’s Exhibit D. Additionally, the Panel notes that Respondent has previously used the disputed domain name to provide competing hyperlinks titled “Discover Card,” “Best Rewards Credit Card,” “Credit Card Designs,” and others. Id. If the Panel finds that Respondent has been using the <discovercardlogon.com> domain name to mislead and divert consumers for Respondent’s own commercial gains, the Panel determines that Respondent’s use of the disputed domain name demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Complainant argues that Respondent had actual knowledge of Complainant’s mark as evidenced by Respondent’s use of the DISCOVER mark in its domain name in conjunction with the business-relevant “card” and “logon” terms. Further, Complainant claims that Respondent had at least constructive knowledge of Complainant’s DISCOVER marks based on Complainant’s registration of its mark in the United States. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <discovercardlogon.com> domain name be TRANSFERRED from Respondent to Complainant. John J. Upchurch, Panelist Dated: January 24, 2014 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.