WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Discover Financial Services v. 徐海民 (Xu Hai Min)

Case No. D2020-3297

1. The Parties

The Complainant is Discover Financial Services, United States of America (“USA”), represented by Taft, Stettinius & Hollister, LLP, USA.

The Respondent is 徐海民 (Xu Hai Min), China.

2. The Domain Name and Registrar

The disputed domain name <discoversudentloans.com> (the “Domain Name”) is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2020. On December 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 16, 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 in English on December 17, 2020.

On December 16, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on December 16, 2020. The Respondent did not comment on the language of the 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 in English and Chinese, and the proceedings commenced on December 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2021.

The Center appointed Karen Fong as the sole panelist in this matter on February 5, 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, which is headquartered in the USA, is a credit card issuer, loan and electronic payment services company. It also offers personal loans, student loans, online savings products, certificates of deposit, and money market accounts. The Complainant offers its services under the DISCOVER trade mark which is advertised and promoted around the world.

The Complainant has trade mark registrations for DISCOVER in the USA since 2001 and in China, where the Respondent is based, since 2009 for services including student loan services. The Complainant also has a trade mark registration in the USA for DISCOVER STUDENT LOANS since 2017. The marks will individually and collectively be referred to as the Trade Mark.

The Complainant operates its main website at “www.discover.com” which can also be accessed through the website connected to the domain name <discovercard.com>, where customers can log into their confidential accounts.

The Domain Name was registered on July 2, 2020. The Domain Name resolved to a pay-per-click website (the “Website”) containing links to third-party websites offering services that directly compete with the Complainant. Prior to that, the Domain Name redirected users to a website that appears to be an unauthorised replica of the Complainant’s website at “www.discover.com/student-loans”. The Domain Name does not currently appear to be active.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.

B. Language of the Proceeding

The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.

The Complainant submits that the language of the proceeding should be English for the following reasons:

- the Domain Name is in English;

- the Website is entirely in English, which suggests that the Respondent understands English and therefore would not be in any way prejudiced if the proceeding is conducted in English; and,

- the Complainant would be put to great expense and inconvenience to have to translate the Complaint and its evidence, which would cause undue delay.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.

The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.

C. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.

The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.

In this case, the Domain Name comprises the entirety of the Trade Mark, DISCOVER STUDENT LOANS excluding the letter “t” after “s” in the word “student”. It is well established that a domain name which consist of a common, obvious, or intentional misspelling of a trade mark is considered to be confusingly similar to the relevant mark for the purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark (See section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). This is a typical typosquatting case as the Domain Name is clearly a misspelling of one of the Trade Marks, reproducing the Complainant’s DISCOVER trade mark in its entirety.

For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) in this case, “.com”. It is viewed as a standard registration requirement.

The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

D. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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 it has acquired no trade mark 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 trade mark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the UDRP panel weighs all the evidence, with the burden of proof always remaining on the complainant.

None of the above apply in these circumstances. The Complainant has not authorised, licensed or permitted the Respondent to either register or use the Domain Name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the Domain Name. Impersonating the Complainant’s website and having pay-per click links to the goods and services of the Complainant’s competitors is not making a legitimate noncommercial use of the Domain Name.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has failed to respond and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

E. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name given the Trade Mark was registered prior to registration of the Domain Name and that the Domain Name comprises a misspelling of the Trade Mark. Further the Domain Name resolved to web pages that imitate the Complainant’s website. It is implausible that the Respondent was unaware of the Complainant when he registered the Domain Name.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.

The Panel also finds that the actual use of the Domain Name is in bad faith. Firstly, there is a presumption of bad faith in the registration and use of a domain name in typosquatting cases. As stated in TPI Holdings, Inc. v. LaPorte Holdings, WIPO Case No. D2006-0235, typosquatting – intentionally adding or deleting a letter or two, or transposing letters in, a valid mark of another in one’s domain name – is presumptive evidence of bad faith registration and use of a disputed domain name.

The Respondent’s use of the Website also supports a finding that the Domain Name is being used in bad faith. The Website was a pay-per-click site which was obviously set up for the commercial benefit of the Respondent. It is highly likely that Internet users when typing the Domain Name into their browser or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent.

The Domain Name is likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the misspelling of the Trade Mark as the most prominent element of the Domain Name, with a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Websites are authorised or endorsed by the Complainant.

In addition, the Website was also set up to imitate the Complainant’s official website. Such use is clearly bad faith use as the purpose of imitating the website of a financial institution is generally for fraudulent intent, which is evidence of bad faith.

From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is authorised or somehow connected to the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <discoversudentloans.com> be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: February 28, 2021