national arbitration forum

 

DECISION

 

Diners Club International Ltd. v. Keyword Marketing, Inc.

Claim Number: FA0803001160158

 

PARTIES

Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Keyword Marketing, Inc. (“Respondent”), West Indies.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dinerscreditcard.com>, registered with Belgiumdomains, 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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 12, 2008.

 

On March 12, 2008, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <dinerscreditcard.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name.  Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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 March 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 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@dinerscreditcard.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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."  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

A.  Complainant makes the following assertions:

 

1.      Respondent’s <dinerscreditcard.com> domain name is confusingly similar to Complainant’s DINERS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <dinerscreditcard.com> domain name.

 

3.      Respondent registered and used the <dinerscreditcard.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Diners Club International Ltd., provides financial services, including credit card services; credit card user loyalty programs; and assistance to travelers in the form of medical and legal referrals, recovery or replacement of lost or stolen travel documents, travelers’ checks and credit cards.  These services are marketed under the DINERS mark.  Complainant registered the DINERS mark with the United States Patent and Trademark Office (“USPTO”) on October 20, 1987 (Reg. No. 1,462,209).

 

Respondent registered the <dinerscreditcard.com> domain name on January 17, 2005.  At the website that resolves from the disputed domain name, links to competing financial services are advertised.  Respondent has also previously been ordered by UDRP panels to transfer disputed domain names to the complainant in those disputes.  See SkinMedica, Inc. v. Keyword Mktg., Inc., FA 1112121 (Nat. Arb. Forum Jan. 2, 2008) (transferring the <tnsrecoverycomplex.com> domain name); see also PH4 Corp. v. Keyword Mktg., Inc., FA 1119345 (Nat. Arb. Forum Feb. 8, 2008) (transferring the <delwebb.org> domain name).  

 

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."

 

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.”).

 

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.

 

Identical and/or Confusingly Similar

 

By registering the DINERS mark with the USPTO, Complainant has established rights to the mark under Policy ¶ 4(a)(i).  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").

 

The <dinerscreditcard.com> domain name is confusingly similar to Complainant’s DINERS mark because it incorporates the entire mark and adds the generics term “credit” and “card.”  Previous panels have held that the addition of generic terms does not sufficiently distinguish the disputed domain from the complainant’s mark under Policy ¶ 4(a)(i).  Thus, Respondent’s addition of the generic terms “credit” and “card” does not distinguish the disputed domain name from the DINERS mark.  Moreover, because all domain names are required to have a top-level domain, the inclusion of the generic top-level domain (“gTLD”) “.com” is irrelevant for the purposes of determining confusing similarity.  Therefore, the Panel finds that the <dinerscreditcard.com> domain name is confusingly similar to Complainant’s DINERS mark under Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), the complainant has the initial burden of showing that the respondent lacks all rights and legitimate interests in the disputed domain name, thus establishing a prima facie case.  Complainant has asserted that Respondent has neither rights nor legitimate interests in the <dinerscreditcard.com> domain name.  The Panel concludes that Complainant has made a prima facie case under Policy ¶ 4(a)(ii).  In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel held that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.”  Therefore, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).

 

Based on Respondent’s failure to respond to the Complaint, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name.  The panel in American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) held that “based on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”  The Panel, however, will consider all evidence in the record to determine if Respondent has any rights or legitimate interests pursuant to Policy ¶ 4(c).  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

The WHOIS information indicates that the registrant of the disputed domain name is “Keyword Marketing, Inc.”  This information does not suggest that Respondent is commonly known by the disputed domain name.  Moreover, Complainant asserts that it has not granted Respondent any license, authorization, or permission to use the DINERS mark.  The Panel, therefore, concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Respondent is using the disputed domain name to advertise links to financial services websites in competition with the services provided by Complainant.  In 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003), the panel held that the respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to the complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.  The Panel here also finds that Respondent’s use of the disputed domain name does 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”) 

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

By using the <dinerscreditcard.com> domain name to advertise financial services in competition with Complainant’s business, Respondent is benefiting from the goodwill associated with the DINERS mark.  Furthermore, Respondent’s use of the disputed domain name is capable of creating confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name.  The Panel finds that Respondent’s commercial use of the disputed domain name is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); 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.’”).

 

Moreover, because Respondent is using the disputed domain name to advertise links to websites that offer competing financial services, there is evidence that Respondent’s use of the disputed domain name is disruptive to Complainant’s business.  The Panel concludes that such use is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii).  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

In addition, Respondent has been the respondent in several other UDRP decisions, in which panels order the transfer of the disputed domain names.  See SkinMedica, Inc. v. Keyword Mktg., Inc., FA 1112121 (Nat. Arb. Forum Jan. 2, 2008); see also PH4 Corp. v. Keyword Mktg., Inc., FA 1119345 (Nat. Arb. Forum Feb. 8, 2008).  Respondent’s pattern of registering domain names evidences bad faith registration and use under Policy ¶ 4(b)(ii).  See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (finding a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) because the respondent had previously acquired several domain names that reflected names of celebrities and requested payment from such celebrities for the transfer of the domain name registrations); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

 

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 <dinerscreditcard.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  April 16, 2008

 

 

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