Diners Club International Ltd. v. Self
Claim Number: FA0806001211181
PARTIES
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dinerss.com>
and <dinerreward.com> (the
“Disputed Domain Names,” in the plural, or the “Disputed Domain Name,” in the
singular, as required by context), registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 19, 2008; the National Arbitration Forum received a hard
copy of the Complaint on June 20, 2008.
On June 20, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com
confirmed by e-mail to the National Arbitration Forum that the <dinerss.com> and <dinerreward.com> domain names
are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
the Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a
Directnic.com has verified that Respondent is bound by the Intercosmos Media
Group, Inc. d/b/a Directnic.com 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 June 24, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 14, 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@dinerss.com and postmaster@dinerreward.com
by e-mail.
A timely Response was received and determined to be complete on July
14, 2008.
An Additional Submission was received from Complainant on July 15, 2008
and found to be timely and complete pursuant to the National Arbitration
Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on July 17, 2008
and found to be timely and complete pursuant to the National Arbitration
Forum’s Supplemental Rule 7.
On July 29, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Kendall C. Reed as Panelist.
RELIEF SOUGHT
Complainant requests that the Disputed Domain Names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Trademark/Service
Mark Information:
Complainant is the owner of a number of trademark registrations and
applications in the
The DINERS CLUB FAMILY
represents to the worldwide consuming public the goods and services offered by
Complainant and its licensees.
Complainant has made extensive use of the DINERS CLUB FAMILY by
providing Complainant’s Core Services and an affinity marketing program
throughout the
The Fame of
Complainant’s Marks:
Due to the extensive use and registration of the DINERS CLUB FAMILY,
the marks in the DINERS CLUB FAMILY have become famous under the laws of the
Many decades after use of
the DINERS CLUB FAMILY throughout the
Complainant
is a leading provider of financial services to individuals, small businesses,
and large corporations through many channels of trade, including but not
limited to, credit card services. The
credit cards issued by Complainant are accepted in over 200 countries and at
over 7.6 million locations around the world. Complaint offers to its card holders one of
the most acclaimed loyalty rewards programs.
Complainant is a wholly
owned subsidiary of Citigroup, a leading global financial services
organization. The credit cards issued by
Complainant are accepted at 800,000 ATMs and are issued in 64 local
currencies. Complainant has over 8
million individual cardholders. Over
half of the Fortune 500 companies hold corporate cards issued by Complainant. The principal customers of Complainant
include, frequent business travelers, corporations, service establishments,
travel managers, state and local governments, travel agents, colleges and
universities, and affluent individuals.
Respondent
uses the Disputed Domain Names to resolve to websites
promoting third-party financial services.
Once Complainant brought Respondent’s activities related to <dinerss.com> to light through a
formal demand through local counsel, Respondent, for a time, ceased use of the <dinerss.com> domain name in
conjunction with the promotion of third-party financial services. However, Respondent has once again resumed
such use, presumably believing that Complainant was no longer monitoring
Respondent’s activities. In the process
of preparing this Complaint, Complainant also became aware of Respondent’s
registration and use of <dinerreward.com>,
which he is using to promote competing credit card services.
Complainant has not given Respondent any license, permission, or
authorization by which Respondent could make any use of any of its marks.
The Disputed Domain Names are nearly identical and
confusingly similar
to the DINERS CLUB FAMILY.
The Disputed Domain Names are identical and confusingly similar to Complainant’s marks because each fully incorporates Complainant’s DINERS mark.
Further, the Disputed Domain Names are
confusingly similar to Complainant’s DINERS mark since the difference between the
mark and the domain names are minor. In
the case of <dinerss.com>: an
extra “s.” In the case of <dinerreward.com>, the deletion
of an “s” and the inclusion of the industry generic term “reward.”
Respondent
has no rights or legitimate interests in the Disputed Domain Names
Respondent lacks rights or legitimate
interests in the Disputed Domain Names.
Respondent, who refers to itself in the WHOIS database as “self”
has never been commonly known by any of Complainant's DINERS, DINERS CLUB or
DINERS CLUB INTERNATIONAL marks nor any variations thereof, and has never used
any trademark or service mark similar to the Disputed Domain Names by which it
may have come to be known, other than the infringing use noted herein.
Respondent has never operated any bona fide or legitimate business under the Disputed Domain Names, and is not making a protected noncommercial or fair use of the Disputed Domain Names. As noted above, Respondent uses the Disputed Domain Names to direct Internet users to websites which consist of pay-per-click advertisements which promote third party financial services. Such a use is not a bona fide offerings of goods or services or a legitimate noncommercial or fair use.
As noted above, the Disputed Domain Names are confusingly similar
to Complainant’s marks. In addition,
Respondent was undoubtedly aware of the DINERS CLUB FAMILY prior to the
registration of the Disputed Domain Names, given the considerable registration
and/or use, as set forth in detail above.
The content which Respondent has posted or allowed to be posted on the
website to which the Disputed Domain Names resolve provides further evidence of
Respondent’s knowledge of the DINERS CLUB FAMILY. Because Respondent had notice of
Complainant’s trademark rights when registering domain names nearly identical
and/or confusingly similar to those marks, Respondent has no rights or
legitimate interest in the Offending Domains.
Complainant has
not granted Respondent any license, permission, or authorization by which it
could own or use any domain name registrations which are confusingly similar to
any of Complainant’s marks.
Respondent registered and
used the Disputed Domain Names in bad faith:
Bad Faith Registration. At the time of registration of each of the
Disputed Domain Names, Respondent, a resident of the
Respondent had actual knowledge of Complainant’s marks due to the obvious
connection between the additional elements such as “s” and “reward” as well as
the content featured on Respondent’s websites which promotes third-party
financial services.
Even if Respondent were able to
claim lack of knowledge, bad faith can exist when a search of the trademarks
registry would reveal the registration rights of a Complainant.
Bad Faith Use. The Disputed Domain Names have been put to use to intentionally attempted to attract, for commercial gain,
Internet users to Respondent’s website or other online location, by creating a
likelihood of confusion with Complainant's mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s website or location or of a product
or service on Respondent’s website or location.
Specifically, Respondent has associated these domain names to a website
promoting various goods and services, including third-party financial services.
Further,
Respondent’s activities result in Complainant’s inability to reflect its mark
in these domain names and Respondent has a history of such activity. Respondent is or was the registrant of the
following domain names which contain the well-known marks of others:
<baylinerclub.com><chilifranchise.com><chilifranchises.com><corvettemagazines.com>
<discoverbanks.com>
<harleydealerships.com><harleydestination.com><harleyfranchise.com><harleyfranchises.com><harleymaintenance.com><harleymanual.com><harleymanuals.com><harleyproblem.com><harleyservices.com><harleyt-shirt.com><harleyvacation.com><harleyvacations.com><uspostoffice.name><uspostoffices.biz>
B. Respondent
Respondent recognizes the relevance and protection of Complainant’s Service and Trademarks and was fully cognizant of these marks at the time of the registration of the two domains. Respondent maintains that the marks of Complainant specifically address the words “Diners Club International” with rights primarily pertaining to financial/credit card services and travel expense management utilizing the aforementioned. The Disputed Domain Names, <dinerss.com> and <dinerrewards.com>, have zero ability to confuse the public with regard to the brand and rights of Complainant’s own website, which is <dinersclub.com>. Instead, they were acquired and are currently under development to address the restaurant, food and dining industries with regard to better informing the public of local restaurant and food service dining options. They have never been utilized nor do we ever plan to deploy websites based on these domains that address any financial services as stated by the Claimant. They are in fact in Phase Two of development at this date meaning their designs are being optimized and serving food and restaurant related ads as part of their Phase Two status. This is customary and by design in our business model.
Respondent respectfully maintains that it has unequivocal rights and legitimate interests in the Disputed Domain Names and has no intention of encroaching on the rights of Complainant. The Disputed Domain Names have always been used by Respondent in connection with a bona fide offering of goods and services that do not encroach on the rights of Complainant. Respondent has always been commonly known by the Disputed Domain Names and indeed in fact provides for e-mail contact information directly to Respondent in the left header of the sites. Respondent has made no effort to misleadingly divert consumers or to tarnish the trademark or service mark of Complainant.
The Disputed Domain Names have not been
registered or used in bad faith by Respondent.
They have been registered to build an online system serving the
restaurant industry and dining public.
There have been no specific circumstances whatsoever that indicate that
Respondent has acquired the Disputed Domain Names for the purpose of selling,
renting or otherwise transferring said domains for a profit to
Complainant. Respondent does not recognize
Complainant’s claim as to trademark encroachment but to further clarify,
Respondent has not registered the domain names to prevent Complainant from
purchasing them themselves. Indeed, Complainant had decades to register the
aforementioned domain names and made no effort to do so. Respondent has not registered the Disputed
Domain Names with the primary purpose of disrupting the business of
Complainant, primarily because Respondent is in the food industry, not the
financial services industry as Complainant has stated and trademarked. Specifically, there has been zero attempt by
Respondent to attract, for commercial gain, Internet users to Respondent’s website
or other online location, by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s website or location or of a product or service on Respondent’s
website or location.
C. Complainant’s Additional
Submission
Respondent’s Response fails
to refute the allegations in the Complaint.
Much of what Respondent states are mere assertions without reference to
law or facts, and some of which are clearly ludicrous. For example, Respondent’s claim that he is
commonly known as <dinerreward.com>
and <dinerss.com>, when
his name apparently is “Mark Milburn” is ridiculous on its face. Given the nature of such assertions, most are
not addressed in these Additional Submissions.
Suffice it to say that Complainant disagrees with any of Respondent’s
assertions which are contrary to the claims in the Complaint.
However, Complainant draws the Panel’s attention to a few
items of note.
Respondent admits that he was aware of Complainant’s DINERS mark and chose to register the Disputed Domain Names anyway. Respondent’s statement that, in his opinion, Complainant’s rights are limited to the DINERS CLUB INTERNATIONAL mark are inconsistent with reality and U.S. Reg. No. 1462209 for the mark DINERS. Respondent’s admission that he knew of Complainant’s rights is further evidence of bad faith disregard for Complainant’s intellectual property rights.
Respondent attempts to mislead
the Panel by stating “[t]hey [the Disputed Domain Names] have never been
utilized nor do we ever plan to deploy websites on these domains that address
any financial services as stated by Complainant.” This is not correct. Respondent has used <dinerss.com> to offer links to travel insurance services and
through <dinerreward.com>,
Respondent has offered links to credit card services and other financial
services content (in fact, Respondent’s website featured a picture of a credit
card). It is not clear why Respondent
would choose to destroy his credibility with the Panel when with reality of the
abusive use of these domain names is such an easily verifiable matter.
Respondent attaches exhibits to its
response which appear to show pay-per-click advertising pages related to
food. These screenshots are undated and
the content associated with each domain name was posted after the filing of the
Complaint in an apparent attempt to create a “cover story” for Respondent’s
acts of cybersquatting. Further,
Respondent’s mere assertion that he is in the restaurant business and the
domain names are going to be used for some other purpose is insufficient to
evidence a bona fide use prior to
notice of the dispute. Past panels have
rejected such pretextual uses as insufficient to show demonstrable preparation
to use a domain name.
Respondent does not deny that the Disputed Domain Names are confusingly similar to Complainant’s marks.
Respondent does not deny that he
is the registrant of the domain names listed above which contain the famous
marks of others.
D. Respondent’s Additional
Submission
The Disputed Domain Names are not identical or confusingly similar to a
trademark or service mark in which Complainant has rights. Respondent does have rights and legitimate
interests in respect to the Disputed Domain Names. The Disputed Domain Names
have most certainly not been registered and used in bad faith.
Furthermore, although behind in development, virtually no effort has been
expended to drive traffic to the Disputed Domain Names while they await
development by Respondent. The traffic
and income statistics for the Disputed Domain Names are as follows: <dinerss.com>
= 58 visitors, 1 click, total revenue for 365 days is $0.10; <dinerreward.com>: 16 visitors, 1 click, total revenue for 365
days is $0.10.
FINDINGS
Complainant is the owner of the following
DINERS
CLUB, registration number 828,013;
DINERS
CLUB INTERNATIONAL, registration number 1,127,084;
DINERS
CLUB INTERNATIONAL, registration number 2,658,706;
DINERS
CLUB PRORATION, registration number 2,293,109;
DINERS
CLUB ON THE GO, registration number 2,812,306; and
DINERS,
registration number 1,462,209.
Each of these trademark registrations were
initially issued before Respondent registered the Disputed Domain Names.
Each of these trademark registrations is now
incontestable.
These trademarks are also registered or
subject to application in a large number of countries around the world.
The <dinerss.com>
Disputed Domain Name was directed at some point earlier this year to a website
that offered a click-though capacity to a number of third-party websites on
which were offered various goods and services, one of which was “Travel
Insurance.”
The <dinerreward.com>
Disputed Domain Name was directed at some point earlier this year to a website
that offered click-through capacity to a number of third-party websites on
which were offered a variety of services, several of which were credit card
services.
The <dinerss.com>
Disputed Domain Name currently directs to a website that concerns food and food
services.
The <dinerss.com>
Disputed Domain Name is confusingly similar to Complainant’s DINERS mark.
The <dinerreward.com>
is not identical or confusingly similar to any of Complainant’s marks.
Respondent is not commonly known by the
Disputed Domain Names or any name similar thereto.
Respondent is not licensed to use any of
Complainant’s trademarks.
Respondent is not making a non-commercial or
fair use of the Disputed Domain Names.
Respondent has legitimate interests in <dinerss.com> Disputed Domain
Name.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
This element of the Policy has two
parts. Firstly, Complainant must have
rights in one or more trademarks, and secondly, the subject disputed domain
name(s) must be identical and/or confusingly similar thereto.
Trademark registration with a national trademark office, such as the United States Patent and Trademark Office, prior to the date on which the disputed domain name was first registered is sufficient to establish trademark rights for purposes of the Policy. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority).
For purposes of determining identicality and/or confusing similarity, Complainant’s marks are compared to the Disputed Domain Names. Minor variations are not generally sufficient to create a meaningful distinction. See W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the <barnesandnobles.info> and <barnesandnobles.biz> domain names are confusingly similar to the complainant’s BARNESANDNOBLE.COM mark because the additions of the letter “s” and generic top-level domains to the dominant features of the complainant’s mark do not negate the confusingly similar aspects of the domain names pursuant to Policy ¶ 4(a)(i)).
At the same time, some degree of similarity is permissible in the Internet context. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.").
A factor that is
important to the analysis of confusing similarity is a mark’s strength. A strong mark creates a dominant feature
within a disputed domain name that and be recognizable even when combined with
a number of other characters and/or words.
See Federated Western Pro., Inc. v. Chan, D2003-0472 (WIPO Sept. 17, 2003)(finding
disputed domain names “macysflowerclub.com” and “macysvisa.com” confusingly
similar to Complainant’s trademark in MACY’S, even where Complaint was not
found to have rights in the terms “flower club” or “Visa”); see also Citigroup Inc. v. Acme Mail, FA
0402000241987 (Nat. Arb. Forum Apr. 12, 2004)(finding the domain name
“citiban.com” confusingly similar to Complainant’s CITI mark because the
“domain name incorporates in its entirety Complaint’s CITI mark and the CITI
mark is the dominant element in Respondent’s domain name”); see also Apple Computer, Inc. v.
Apple-Computer c/o Marcus Grey, FA 535416 (Nat. Arb. Forum September 22,
2005)(ordering transfer of <apple-computers.us> in part because the
domain name fully incorporated the complainant’s mark).
A weak mark, in contrast, can lose its recognizable nature with relatively fewer changes, whether by way of additions or deletions.
In the present case, the Complainant has
trademark registrations in the
DINERS
CLUB
DINERS
CLUB INTERNATIONAL
DINERS CLUB PRORATION
DINERS
CLUB ON THE GO, and
DINERS
All of these marks were initially registered
prior to the date on which the Disputed Domain Names were registered, and are
incontestable.
Further, Respondent acknowledges these
trademark registrations.
As such, Complainant has rights in the listed
marks for purposes of the Policy.
The Disputed Domain Names are: <dinerss.com> and <dinerrewards.com>.
This Panel has no difficulty finding that the
<dinerss.com> Disputed Domain
Name is confusingly similar to Complainant’s DINERS trademark. The only two differences are the gTLD,
“.com,” and the addition of a single letter “s.”
As such, and as to the <dinerss.com> Disputed Domain Name, Complainant has
established the first required element of the Policy.
However, the matter is otherwise with respect
to the <dinerreward.com> Disputed
Domain Name.
The Panel believes that Complainant’s mark
DINERS is a weak mark because in addition to being a registered trademark, it
is a word of common usage. In this it is
different from the marks in the above-noted cases, MACY’S, CITI, and VISA. In this, it is also different from
Complainant’s strong mark DINERS CLUB.
The Disputed Domain Name <dinerreward> is not a close match to Complainant’s mark
DINERS. The differences are the deletion
of the letter “s” and addition of the word “reward.” The overall impression is different, and the
mark is not a dominant feature of the Disputed Domain Name.
The Disputed Domain Name <dinerreward> is even less of a match to Complainant’s other
listed marks, all of which include the words “diners club.”
Complainant points out that its mark DINERS
is incontestable under U.S. trademark law, and presumably this is for the
purpose of pointing out that its mark cannot be contested on the basis of
distinctiveness. See 15 U.S.C. 1115(b).
However, 15 U.S.C. 1115(b) provides a degree of protection from an
attack on the mark. Here, the issue is
whether in the Internet context a domain name is identical and/or confusingly
similar to the relevant mark; no attack on the mark is involved in the present
case.
Complainant cites to a previous
administrative proceeding pursuant to the Policy that addressed the <dinerreward.com> Disputed Domain
Name. That previous case is Diners Club International Ltd., v. Standard
Tactics LLC, FA 820358 (Nat. Arb. Forum Nov. 30, 2006) in which that panel
found the Disputed Domain Name <dinerreward.com>
to be confusingly similar to Complainant’s marks DINERS and DINERS CLUB. The panel in that previous case found that
the deletion of the single letter “s” did not “…distinguish the disputed domain
name from Complainant’s marks,” and further stated, “…the addition of a term
[“reward”] descriptive of Complainant’s business does nothing to overcome the
confusing similarity between Complaint’s marks and the disputed domain name.”
The Panel in the present case respectfully
disagrees with the conclusion of that prior case on this issue. In that prior case, the respondent (an entity
different from the Respondent in the present case) did not file a response, and
the award notes that “…the panel shall decide this administrative proceeding on
the basis of Complainant’s undisputed representations….” This is not the
situation in the present case in which Respondent has filed a response.
Additionally, in finding confusing
similarity, that prior Diners Club
case focused on the word “reward,” believing it to be merely descriptive of one
of Complainant’s activities, which is to reward customers who use its financial
services, and as such, it could be disregarded for purpose of making the
required comparison. However, this Panel
believes that the word “reward,” whether or not descriptive of Complainant’s
activities, does create a different overall impression for this Disputed Domain
Name.
As such and with respect to the Disputed Domain Name <dinerreward.com>, Complainant
has not established the first required element of the Policy, and as such, this
Disputed Domain Name will not be analyzed further. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because the complainant must prove all three elements under the
Policy, the complainant’s failure to prove one of the elements makes further
inquiry into the remaining element unnecessary); see also Hugo Daniel
Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into
the respondent’s rights or legitimate interests or its registration and use in
bad faith where the complainant could not satisfy the requirements of Policy ¶
4(a)(i)).
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to
show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
In the present case, Complainant asserts, and
the Panel agrees, that Respondent is not commonly known by the Disputed Domain
Name and that Respondent is not making a noncommercial or fair use of the
Disputed Domain Name.
Respondent argues that it is commonly known
by the Disputed Domain Name because the Disputed Domain Name is used as an
e-mail address for Respondent, which e-mail address is clearly visible on
Respondent’s web page. The Panel does
not locate this e-mail address on any of the screenshots provided by the
parties showing Respondent’s websites, but even if the Panel had located the e-mail
address, this argument proves too much.
If using a disputed domain name as an e-mail address was sufficient to
establish “being commonly known by the domain name,” then all respondents could
do the same and thereby always avoid an adverse finding under the Policy.
Complainant argues that respondent has not
used the Disputed Domain Name in connection with a bona fide offering of goods or services. Further, Complainant asserts that any use by
Respondent of the Disputed Domain Name that might be found to be in connection
with a bona fide offering of goods or
services is merely a pretext that should not be allowed.
Complainant argues that Respondent uses the
Disputed Domain Name to direct to a website that is a click-through website,
and Complainant has attached a screenshot of this website as an exhibit to its Complaint
(“Respondent’s Initial Website”).
According to Complainant, Respondent’s Initial Website includes links to
third-parties websites where Internet users can purchase services competitive
with those of Complainant, and as such this use cannot constitute a bona fide offering of goods or services.
See
MSNBC Cable, LLC v. Tyssy.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no
rights or legitimate interests in the famous MSNBC mark where the respondent
attempted to profit using the complainants market by redirecting Internet
traffic to its own website); see also Metro.
Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (ordering
transfer of <metropolitanlife.us> based in part upon a finding that using
the domain name in conjunction with pay per click advertising scheme “is
diverting Internet users for commercial gain and that such use does not
represent a bona fide offering of goods or services under policy ¶ 4(c)(ii) or
a legitimate noncommercial or fair use of the disputed domain name under policy
¶ 4(c)(iv).”).
The Panel agrees that Respondent’s Initial
Website does include a click-through heading (option) entitled “Travel
Insurance,” which directs to a third-party website where travel insurance can
be purchased. This is directly
competitive with Complainant’s services as evidenced by Complainant’s trademark
DINERS CLUB INTERNATIONAL, registration number 2,658,706. This registration specifically includes
“travel insurance” among the recited services.
This issue is further discussed below, but at this point Complainant’s
showing is sufficient to support Complaint’s obligation to make a prima facie case.
As such, Complainant has met its burden of
establishing a prima facie case that
Respondent does not have rights or legitimate interests in the Disputed Domain
Name.
Respondent argues that its current use of the
Disputed Domain Name is in connection with a bona fide offering of goods and services. Respondent attaches to its response
screenshots of the website to which the Disputed Domain Name currently directs
(“Respondent’s Current Website”).
Respondent’s Current Website concerns food, food products, and food services. Respondent describes the purpose of
Respondent’s Current Website as: “… to address the restaurant, food and dining
industries with regard to better informing the public of local restaurant and
food service dining options.”
Respondent asserts that this has been its
purpose at all times, including the time of registration.
The Panel believes that Respondent’s Current
Website constitutes a bona fide
offering of goods and services, and further that this use is noncompetitive as to
Complainant’s services under its trademarks listed above.
As noted, Complainant argues that
Respondent’s current use of the Disputed Domain Name is a pretext. The Panel notes that Respondent’s prior use
of the Disputed Domain Name is not inconsistent with Complainant’s argument,
but nevertheless, the Panel believes that Respondent’s current use is not a
pretext and that Respondent’s current use of the Disputed Domain Name was
always its intention.
Respondent’s prior use is troubling, but this
prior usage was competitive only to the one noted point of “travel insurance,”
and that service was only one among many items on Respondent’s Initial
Website. None of the others items on
that website were competitive. The Panel
is not convinced that this one point of competition is sufficient in itself to
justify a finding against Respondent on this second element of the Policy given
the evidence provided by Respondent as to its current use of the Disputed
Domain Name.
With respect to Respondent’s intention prior
to the time it received notice of the dispute, the timeline of events is not
altogether clear from the documents provided, but given the Panel’s finding
that Respondent’s intention has always been to use the Disputed Domain Name as
it is being used with respect to Respondent’s Current Website, this necessarily
leads to the further conclusion that Respondent’s intention was appropriate
prior to its receipt of notice of the dispute.
As such, Respondent has satisfied its burden
to demonstrate to the satisfaction of the Panel that it has legitimate
interests in the Disputed Domain Name.
As such, Complainant has failed to establish
the second required element of the Policy.
This being the case, the Panel need not
consider the third required element of the Policy.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED as to both of the Disputed Domain Names,
<dinerss.com> and <dinerreward.com>.
Kendall C. Reed, Panelist
Dated: August 14, 2008
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