Diners Club International
Ltd. v. Jason McCandlish
Claim Number: FA0810001230033
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 <ecarddiner.info>, <ecarddiner.net>,
<carddiner.info>, <carddiner.biz>, <carddiner.org>, <carddiner.net>, <carddiner.com>, <ecarddiner.org>, <ecarddiner.biz> and <ecarddiner.com>,
registered with Godaddy.com, Inc.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 20, 2008; the
National Arbitration Forum received a hard copy of the Complaint on October 21, 2008.
On October 20, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <ecarddiner.info>, <ecarddiner.net>,
<carddiner.info>, <carddiner.biz>, <carddiner.org>, <carddiner.net>, <carddiner.com>, <ecarddiner.org>, <ecarddiner.biz> and <ecarddiner.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 October 22, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 12, 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@ecarddiner.info, postmaster@ecarddiner.net, postmaster@carddiner.info, postmaster@carddiner.biz, postmaster@carddiner.org, postmaster@carddiner.net, postmaster@carddiner.com, postmaster@ecarddiner.org, postmaster@ecarddiner.biz and postmaster@ecarddiner.com by e-mail.
A Response was received and determined to be complete on November 12, 2008. However, this Response was
deficient because it was not received in hard copy pursuant to ICANN
Supplemental Rule 5(b).
On November 17, 2008, Complainant filed a timely and complete
Additional Submission with the National Arbitration Forum in accordance with
the National Arbitration Forum’s Supplemental Rule 7.
On November 17, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <ecarddiner.info>, <ecarddiner.net>, <carddiner.info>, <carddiner.biz>, <carddiner.org>, <carddiner.net>, <carddiner.com>, <ecarddiner.org>, <ecarddiner.biz> and <ecarddiner.com> domain names are confusingly similar to Complainant’s DINERS mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Response:
Respondent failed to submit a proper Response in this proceeding and his email
communications following service of the Complaint do not raise any cognizable defenses to the relief sought by Complainant.
C. Additional Submissions:
Complainant filed an Additional Submission which basically pointed out the inadequacy of the email of Respondent to either establish a defense or serve as a proper Response in this proceeding.
FINDINGS
Complainant owns many
Each of the disputed domain names contains Complainant’s DINERS mark omitting
the letter “s”. Additionally, each of the <ecarddiner.info>, <ecarddiner.net>,
<ecarddiner.org>, <ecarddiner.biz> and <ecarddiner.com> domain names
precedes Complainant’s mark with the term “ecard,” while each of the <carddiner.info>, <carddiner.biz>, <carddiner.org>, <carddiner.net>, and <carddiner.com> domain names
precedes Complainant’s mark with the word “card.” And finally, each of the
disputed domain names contains the generic top level domain (“gTLD”) “.info,”
“.net,” “.biz,” “.org” or “.com.”
Complainant has not licensed or otherwise authorized Respondent to use
any of its trademarks, nor does Respondent so allege in his email to the
National Arbitration following the commencement of this proceeding. Respondent registered each of the domain
names at issue on or about April 24, 2008, with actual or constructive
knowledge of Complainant’s rights in the DINERS CLUB marks.
Respondent did not file a Response which complied with the Policy but sent email to the National Arbitration Forum following the commencement of this proceeding which did not set up any cognizable defenses to the Complaint. Accordingly, the Panel determined that it would disregard the email of Respondent for the purposes of this proceeding.
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.
As noted above, the Complainant has numerous registrations of long standing with respect to the DINERS CLUB family of marks which substantially predate registration of the domain name at issue. See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
The omission of the letter “s” in the domain names at issue does not preclude a finding of confusing similarity with the Complainant’s family of marks. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); 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)).
Further, the presence of the word
“card” in each of the domain names at issue does not insulate against a finding
of confusing similarity. The Panel finds that the addition of one word
or term to Complainant’s mark, especially one that has a close relation to the
credit card services provided under Complainant’s mark, fails to differentiate
the disputed domain names. See
Am. Express Co. v. MustNeed.com, FA
257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s
<amextravel.com> domain name confusingly similar to Complainant’s AMEX
mark because the “mere addition of a generic or descriptive word to a
registered mark does not negate” a finding of confusing similarity under Policy
¶ 4(a)(i)); see also Am. Online, Inc. v.
Miller, FA 180625 (Nat. Arb. Forum Sept. 15, 2003) (finding confusing
similarity where “[t]he domain name includes Complainant’s mark with the
addition of the descriptive word “hot,” which does not dispel any confusion
arising from the inclusion of Complainant’s mark in the domain name.”).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Complainant has made a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain names under Policy ¶ 4(a)(ii) by having alleged without
contravention that it has not licensed or otherwise authorized Respondent to
use any form of the DINERS CLUB marks and that Respondent is not commonly known
by the domain names at issue.
Accordingly, 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.”).
Respondent is not commonly known by the
disputed domain names and Respondent does not contest this. The WHOIS
information for each of the disputed domain names identifies Respondent as
“Jason McCandish.” Complainant also states that it has not granted Respondent
any license, permission or authorization to use the DINERS mark in anyway.
Consequently, Respondent is not commonly known by any of the disputed domain
names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback,
FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to
establish rights and legitimate interests in the <emitmortgage.com>
domain name as the respondent was not authorized to register domain names
featuring the complainant’s mark and failed to submit evidence of that it is
commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat.
Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly
known by the <thirteen.com> domain name based on all evidence in the
record, and the respondent did not counter this argument in its response).
The disputed domain names each either
resolve to a website that advertises goods or services that directly compete
with Complainant or redirect Internet users to the websites of third-parties
who compete with Complainant. These websites promote various competing
financial services. This does not constitute 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 Constellation Wines
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
The disputed domain names each resolve to a website featuring various links to direct competitors of Complainant. This competitive use is sufficient to establish that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent had actual or at least constructive knowledge of Complainant’s rights in the DINERS mark because of Complainant’s federal registrations of the mark with the USPTO. This is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).
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 <ecarddiner.info>, <ecarddiner.net>,
<carddiner.info>, <carddiner.biz>, <carddiner.org>, <carddiner.net>, <carddiner.com>, <ecarddiner.org>, <ecarddiner.biz> and <ecarddiner.com> domain
names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 28, 2008
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