Discord Inc. v John Snow, Geri

WIPO Case No. D2023-2510

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Discord Inc. v. John Snow, Geri

Case No. D2023-2510

1. The Parties

Complainant is Discord Inc., United States of America (“United States” or “US”), represented by BrandIT

GmbH, Switzerland.

Respondent is John Snow, Geri, United States.

2. The Domain Name and Registrar

The disputed domain name <discordmerch.store> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2023. On
June 9, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 12, 2023, 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 (Unknown) and contact information in the Complaint. The
Center sent an email communication to Complainant on June 14, 2023, providing the registrant and contact
information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.

Complainant filed an amended Complaint on June 15, 2023.

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 Respondent of the Complaint, and the proceedings commenced on June 19, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 10, 2023.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on July 18, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

page 2

Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant uses the mark DISCORD for a free voice, video and text chat app that was created in 2015 and originally developed for videogame players as a chat app to communicate with friends while playing games online. Complainant’s DISCORD branded app now has 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.

In December 2018, Complainant announced that it had raised USD 150 million in funding at a USD 2 billion valuation. In June 2020, Complainant announced that it had received an additional USD 100 million in investments.

Complainant owns numerous trademark registrations for DISCORD, including the following trademark registrations for use in connection with computer software and computer software applications for social networking, sending messages, text, photos, graphics, audio and visual files to other users, and related goods and services:

- United States Trademark Registration No. 4930980 registered April 5, 2016,

- United States Trademark Registration No. 6254199 registered January 26, 2021.

International Registration No. 1703509, designating United States, registered August 15, 2022.

Complainant also owns numerous domain names containing the trademark DISCORD, including
<discord.com> registered November 6, 2000, <discordapp.com>, registered February 26, 2015, and
<discordmerch.com>, registered September 7, 2019. Complainant uses these domain names to resolve to
its official websites through which it informs Internet users and potential consumers about its DISCORD mark
and its products and services.

At the time of filing the Complaint, the disputed domain name resolved to a website, using Complainant’s DISCORD trademark and offering supposedly DISCORD merchandising products for sale. Complainant tried to reach the Hosting Provider of the disputed domain name on April 19 and 21, 2023, and May 19, 2023, as well as the Registrar, on April 23 and 26, 2023. On April 19, 2023, Complainant also sent an email

by completing the form of the disputed domain name website and emailing the disputed domain name stating
that the disputed domain name is misusing and misappropriating Complainant’s trademark and requesting
that the URL associated with the disputed domain name be disabled.

The disputed domain name was registered on August 31, 2022, and it currently resolves to an inactive webpage.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar with Complainant’s name, and that the disputed domain name has been registered and used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

page 3

6. Discussion and Findings

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i)      the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)     Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii)    The disputed domain name has been registered and used in bad faith.

Paragraph 15(a) of the Rules instructs the Panel to 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”.

A. Identical or Confusingly Similar

Complainant has demonstrated that it has rights in the trademark DISCORD. The disputed domain name incorporates Complainant’s DISCORD mark in its entirety. The addition of the generic Top Level Domain (“gTLD”) “store” does not avoid a finding of confusing similarity.

The Panel finds that the disputed domain name is confusingly similar to Complainant’s DISCORD trademark.

B. Rights or Legitimate Interests

Complainant contends that it has not licensed or authorized Respondent to use its trademarks in any manner. Respondent is not affiliated with Complainant. Complainant did not authorize Respondent to register or use the disputed domain name incorporating Complainant’s trademark and Complainant has not endorsed or sponsored Respondent or Respondent’s website.

There is no evidence that Respondent is commonly known by the disputed domain name or owns any registered trademarks including the term “discord” or “discordmerch”. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. At the time of filing the Complaint, the disputed domain name resolved to a website which displays Complainant’s DISCORD trademark and is clearly intended to create confusion among Internet users by creating the impression that Respondent’s website is affiliated with or endorsed by Complainant, which is false. Such activity using Complainant’s mark cannot confer rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”, section 2.13). At the time of filing the amended Complaint, the disputed domain name resolved to a blank page displaying the statement “This site can’t be reached”.

Moreover, the Panel finds that the disputed domain name, which incorporates Complainant’s trademark in its
entirety and is identical to Complainant’s domain name <discordmerch.com>, is inherently misleading.
WIPO Overview 3.0, section 2.5.1.

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The use of Complainant’s DISCORD trademark on the website at the disputed domain name demonstrates that Respondent was fully aware of Complainant’s trademark rights when registering the disputed domain name. The Panel also notes that the disputed domain name is identical to Complainant’s earlier domain name <discordmerch.com>. It is inconceivable that Respondent was unaware of the existence of Complainant and its DISCORD trademark when registering the disputed domain name.

page 4

Respondent’s registration of a domain name that is confusingly similar to Complainant’s well-known trademark creates a presumption of bad faith. WIPO Overview 3.0 section 3.1.4. In addition, Respondent’s website at the disputed domain name displayed Complainant’s trademarks in connection with sales of unauthorized merchandising products of Complainant. Thus, the record indicates that Respondent registered and used the disputed domain name to confuse Internet users into mistakenly believing that they were accessing Complainant’s website. It is also noted that Respondent provided fake contact details to the Registrar, with an address that combines a Chinese region with a US town and US state name.

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 disputed domain name, <discordmerch.store> be transferred to the Complainant.

/Lynda J. Zadra-Symes/
Lynda J. Zadra-Symes
Sole Panelist
Date: August 1, 2023