Diners Club International Ltd. v. RM Media
Claim Number: FA0802001143776
Complainant is Diners Club Internatinal Ltd. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP, of
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <sydneydinersclub.com> and <sydneydinerscard.com> registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 12, 2008.
On February 11, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sydneydinersclub.com> and <sydneydinerscard.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sydneydinersclub.com and postmaster@sydneydinerscard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 13, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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." 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.
By e-mail correspondence dated March 16, 2008, Respondent indicated to the National Arbitration Forum its willingness “to transfer the domain sydneydinersclub.com” to Complainant.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a leading
provider of financial services, and the credit cards issued by Complainant are
accepted in over 200 countries.
Complainant has registered
the DINERS (Reg. No. 1,462,209 issued Oct. 20, 1987) and DINERS CLUB (Reg. No.
828,013 issued Apr. 25, 1967) service marks with the United States Patent and
Trademark Office (“USPTO”).
Complainant has also
registered the DINERS (Reg. No. 820,821 issued Feb. 21 2001) and DINERS CLUB
(Reg. No. 820,822 issued Feb. 21, 2001) marks with IP Australia.
Respondent was never given authority to use any of Complainant’s marks.
Respondent registered the <sydneydinersclub.com>
domain name on June 27, 2007 and the <sydneydinerscard.com>
domain name on July 15, 2007.
Respondent has utilized the
disputed domain names to resolve to a website promoting a loyalty rewards
program and Respondent’s other businesses and affiliations.
Respondent has not made an
active use of the <sydneydinersclub.com>
domain name after receiving a cease-and-desist letter from Complainant.
Respondent’s <sydneydinersclub.com> and <sydneydinerscard.com> domain names are confusingly similar to Complainant’s DINERS and DINERS CLUB marks.
Respondent does not have any rights or legitimate interests in the domain names <sydneydinersclub.com> and <sydneydinerscard.com>.
Respondent registered and uses the domain names <sydneydinersclub.com> and <sydneydinerscard.com> in bad faith.
B. Respondent failed to submit a timely Response in this proceeding; however, in an exchange of e-mail correspondence with the National Arbitration Forum, Respondent has indicated its consent to the transfer of the domain name <sydneydinersclub.com> to Complainant without the need for further proceedings.
(1) the domain names registered by Respondent are confusingly similar to service marks in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
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."
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 a 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.”
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:
i. the domain name registered by Respondent 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 in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s service mark registrations in the
The disputed domain names are confusingly similar to Complainant’s
marks. The addition of a geographically
descriptive term “sydney,” a generic top-level domain (“gTLD”) “.com,” and, as
to one of them, the common term “card,” which directly relates to Complainant’s
use of the DINERS mark for credit cards, fail to distinguish the <sydneydinersclub.com> and <sydneydinerscard.com>
domain names from Complainant’s DINERS and DINERS CLUB marks for purposes of
Policy ¶ 4(a)(i). See AXA China Region
Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the
<axachinaregion.com> domain name “is confusingly similar to a
Complainant's mark ‘AXA’” because “common geographic qualifiers or generic
nouns can rarely be relied upon to differentiate a mark if the other elements
of a domain name comprise a mark or marks in which another party has rights”); see
also Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a
respondent’s domain name combines a complainant’s mark with a generic term that
has an obvious relationship to that complainant’s business); further see Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb.
Forum Mar. 27, 2007) (concluding that affixing a gTLD to a domain name is
irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
The Complaint herein makes out a prima facie case to the effect that Respondent lacks rights or interests in the domain names here in dispute for purposes of the Policy, which shifts the burden to Respondent to present evidence that it nonetheless possesses rights to or legitimate interests in the disputed domain names. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name pursuant to Policy ¶ 4(c)); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that, if a complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”
Respondent’s failure to respond to the Complaint permits us
to presume that Respondent lacks any right to or legitimate interest in the
domain names. See Am. Express Co. v. Fang Suhendro,
FA 129120 (Nat. Arb. Forum Dec. 30,
2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
Nonetheless, we will review the available record to
determine if there is any basis for concluding that Respondent has rights to or
legitimate interests in the domain names pursuant to Policy ¶ 4(c).
We begin by noting that the record does not show that Respondent is or ever was commonly known by either of the disputed domain names. Moreover, the WHOIS information for the disputed domain names lists the registrant as “RM Media.” Complainant contends, and Respondent does not deny, that Respondent was never given authority to use any of Complainant’s marks. We therefore conclude that Respondent does not have any rights to or legitimate interests in the <sydneydinersclub.com> and <sydneydinerscard.com> domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the pertinent WHOIS information and other evidence in the record); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when that respondent is not known by the mark in question).
We also observe that there is no dispute that currently the <sydneydinerscard.com> domain name redirects (and previously the <sydneydinersclub.com> domain name) redirected Internet users to a website that promotes a loyalty rewards program and other businesses and affiliations of Respondent which compete with the business of Complainant. This use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that a respondent’s use of a confusingly similar domain name to advertise real estate services which competed with a complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s
demonstrated intent to divert Internet users seeking Complainant’s website to a
website of Respondent and for Respondent’s benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is
not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
We note in passing that it is undisputed that, following
Respondent’s receipt of a cease-and-desist letter from Complainant, the <sydneydinersclub.com> domain name is no longer in
use. Respondent’s failure to make an active use of the
disputed domain name is evidence that Respondent lacks rights and legitimate
interests in the domain name <sydneydinersclub.com> pursuant to Policy ¶¶ 4(c)(i) and
(iii). See VICORP Rests., Inc. v. Paradigm Techs. Inc., FA
702527 (Nat.
Arb. Forum June 21,
2006) (finding that a respondent’s extended failure to use a disputed domain
name is evidence that the domain name was not engaged in a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276
(Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights to or
legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶
4(c)(iii) where it failed to make any active use of the domain name).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Under this head, Complainant contends, and Respondent does not deny, that the disputed domain names have been used to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s marks. Respondent is thus taking advantage of the confusing similarity between the <sydneydinersclub.com> and <sydneydinerscard.com> domain names and Complainant’s DINERS and DINERS CLUB marks to profit from the goodwill associated with the marks. We conclude from this that Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website, likely profiting from the diversion); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005):
[T]he Panel finds that Respondent is capitalizing on the confusing similarity
of its domain names to benefit from the valuable goodwill that Complainant has
established in its marks. Consequently,
it is found that Respondent registered and used the domain names in bad faith
under Policy ¶ 4(b)(iv).
In addition, on the record before us, it is evident that Respondent had at least constructive knowledge of Complainant’s rights in the DINERS and DINERS CLUB marks at the time it registered the contested domain name. Registration of a domain name that is confusingly similar to a known mark is evidence of bad faith registration and use of a domain name pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between a complainant’s mark and the content advertised on a respondent’s website was obvious, that respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002): “[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the domain names <sydneydinersclub.com> and <sydneydinerscard.com> be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 24, 2008
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