The Complainant is Discover Financial Services, United States of America (“United States”) (hereinafter “Complainant”), represented by Taft, Stettinius & Hollister, LLP, United States.
The Respondent is Jackie Graves, ChangeMyRate.com A Mortgage Corporation, United States (hereinafter “Respondent”).
The disputed domain name <discovermortgageloans.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on December 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2020. Respondent sent an email to the Center on December 11, 2020, stating: “I am unable to remove the forwarding from this domain. Please remove the forwarding so that my attorney can see the website for this domain. Thank you”. Respondent did not submit a formal response. Accordingly, the Center notified the Commencement of Panel Appointment on December 30, 2020. On the same day, after said Center communication, the Respondent submitted a second email (see 5. B below).
The Center appointed M. Scott Donahey as the sole panelist in this matter on January 7, 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.
Complainant is a recognized issuer of credit cards, and a well-known provider of loans and electronic payment services. Complainant is well-known through its advertisements and the provision of its services. Complainant’s services include the Discover Network, with millions of merchants and cash access locations throughout the United States, and Complainant advertises its services and products under its DISCOVER mark throughout the world. Complainant operates a website which may be accessed through its registered domain names <discover.com> and <discovercard.com>, which provides information about its products and services. At this web site customers may long in and access their confidential accounts and transact business. Complaint, Annex 4.
Complainant is the owner of registrations of the mark DISCOVER, including trademarks with the United States Patent and Trademark Office (USPTO), registered as early as March 8, 1988, registration No. 1,479,946, covering credit card services, and the DISCOVER mark registered September 18, 2012, registration No. 4,211,365, covering other financial services including the provision of loans and lines of credit. Complaint, Annex 5.
Respondent registered the disputed domain name on February 6, 2019. Respondent is using the disputed domain name to resolve to a website at which Respondent offers services directly competing with those offered by Complainant, including mortgage loans. Complaint, Annex 6.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s registered trademark. Complainant contends that Respondent has no rights or legitimate interest in its use of the disputed domain name. Complainant asserts that Respondent has registered and is using the domain name to attract Complainant’s existing and prospective customers to its web site.
Respondent did not formally reply to Complainant’s contentions. In its email communication of December 30, 2020, the Respondent stated that “I dispute any cause of action by the complaint. The name we registered is DISCOVERMORTGAGELOANS.COM POWERED BY CHANGEMYRATE.COM and is used as such. Thank you”.1
“A Panel shall decide a 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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
The disputed domain name consists of Complainant’s registered trademark followed by “mortgage loans,” a description of one of Complainant’s areas of business and of Respondent’s competing business. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademark.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to advance any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is using the disputed domain name to attract present or prospective customers of Complainant to Respondent, so that Respondent can attempt to sell them a competing product. This is the classic model of bad faith registration and use.
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, <discovermortgageloans.com>, be transferred to the Complainant.
M. Scott Donahey
Date: January 7, 2021
1 The Panel has considered this brief Respondent communication, as it was submitted one day after the Response due date, and prior to Panel Appointment.
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