National Arbitration Forum

 

DECISION

 

Diners Club International Ltd. v. GDC Enterprises

Claim Number: FA0908001280221

 

PARTIES

Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, Illinois, USA.  Respondent is GDC Enterprises (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <austindinersclub.com>, registered with Wild West Domains, 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.

 

Joel M. Grossman, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 20, 2009.

 

On August 19, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <austindinersclub.com> domain name is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 August 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 10, 2009 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@austindinersclub.com by e-mail.

 

A timely Response was received and determined to be complete on September 10, 2009.

 

On September 15, 2009 Complainant timely filed an Additional Submission.

 

On September 14, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant first asserts that it has multiple trademark registrations in the “Diners Club” mark, which is a famous mark recognized worldwide for financial services including credit cards. Complainant further claims that the domain name at issue is confusingly similar to its mark as it wholly incorporates the mark, adding only the geographic descriptive term “Austin.”

 

Complainant next contends that Respondent has no rights or legitimate interests in the domain name, noting (a) that Respondent is not commonly known by the name; (b) Respondent has not operated a bona fide or legitimate business using the name; (c) that Respondent is using the domain name for an improper purpose, diverting users to its website which competes with Complainant’s advertising services; and (d) that Complainant has not granted permission or any license to Respondent to use Complainant’s mark.

 

Finally, Complainant contends that Respondent registered the domain name and used the domain name in bad faith. Complainant asserts that at a minimum Respondent had constructive knowledge of Complainant’s very famous mark, as a search of trademarks would easily have revealed the mark. In addition, the domain name has been used to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source of the domain name. Specifically, Complainant alleges that Respondent is using the domain name to sell restaurant advertising services in competition with Complainant. Further, Complainant has registered forty other similar domain names, each with a geographic location and Complainant’s “Diners Club” mark, in an obvious attempt to preclude Complainant from having websites with the specific geographic references selected by Respondent.

 

B. Respondent

On the issue of confusingly similar domain name, Respondent contends that the domain name is not confusingly similar to Complainant’s mark, noting that two generic English words—diners and club—are part of the domain name, and the domain name connotes a club for private dining in Austin, TX, with no reference to a credit card. Respondent does not directly address the second issue, whether it has any rights or legitimate interests in the domain name. However, in the course of its Response, Respondent sets forth a number of contentions which the Panel interprets to address this second prong. First, Respondent contends that it is in fact commonly known by the domain name, as this is the name of a club consisting of some 140 members in Austin, TX who pay a membership fee and occasionally gather for fine dining experiences. Additionally Respondent submitted evidence of its founder, Gwen Cash, appearing on a local radio show to promote the Austin Diners Club, as well as articles in local print media using the name, thus evidencing that Respondent is commonly known by the domain name.

 

Second, Respondent contends that it is using the name for a bona fide offering of goods and services, namely for its dining club, through which Austin residents-who pay a fee to join the club-- can enjoy fine dining at a discount. On its website Respondent includes a section called “About us,” which states that its mission is to “experience and explore fine dining in many wonderful restaurants in and around Austin.” Finally, Respondent denies that it registered or is using the name in bad faith. Respondent maintains that there can be no finding of bad faith since it has demonstrated rights and legitimate interests in the domain name, as set forth above: in Respondent’s words, its website is for “…a private diners club and not for any competing goods and services that the Complainant may assert.”

 

Apart from defending itself from Complainant’s assertions, Respondent alleges that Complainant is engaged in reverse domain name hijacking.

 

C. Additional Submissions

In Complainant’s Additional Submission it seeks to rebut points made by Respondent in the Response and reinforce points made in the Complaint. Once again Complainant asserts that Respondent’s advertising on its website directly competes with Complainant’s advertising business. Complainant also asserts that its mark is not generic, given the fact that it has been registered by the USPTO. Complainant also restates its position that Respondent is not engaged in the bona fide offering of goods or services since it is using a domain name for an infringing purpose, specifically diverting Internet users to Respondent’s website which competes with Complainant’s advertising services.

 

FINDINGS

The Panel finds that (a) the domain name is identical to or confusingly similar to a mark in which Complainant has rights; (b) Respondent has rights or legitimate interests in the name; and (c) that the name was not registered and is not being used in bad faith.

 

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 does have rights or legitimate interests in respect of the domain name; and

(3)   the domain name has not been registered and is not being used in bad faith.

 

Identical and/or Confusingly Similar

 

First, the Panel finds that Complainant’s registered federal trademarks amply demonstrate its rights in the “Diners Club” mark, and that it is a famous mark. The Panel further finds that the domain name—which incorporates the entirety of the mark, adding only a geographic location—is confusingly similar to the mark, and Internet Users searching for Complainant’s products could be confused as to the source of the domain name, or whether Complainant is in any manner affiliated with Respondent’s business. For example, users could come to believe that the term “Austin Diners Club” could be affiliated with Complainant, and could provide a list of restaurants or other services in Austin which are recommended by or somehow connected to Complainant. While the Panel recognizes that the “Diners Club” mark consists of two generic terms, the Panel also concludes that when two generic terms are linked and famous—such as “American Express” or “Seven Up.” Finally, the Panel notes that in two virtually identical cases the panels ruled that domain names such as <albuquerquedinersclub.com> and <atlantadinersclub.com> and <sydneydinersclub.com> were identical or confusingly similar to Complainant’s mark. See Diners Club International Ltd v. GDCAsh LLC FA 1272949 (Nat. Arb. Forum Aug. 21, 2009) and Diners Club International Ltd. v. RM Media, FA 1143776 (Nat. Arb. Forum March 24, 2008). This Panel joins the prior panels and holds that the domain name <austindinersclub.com> is identical to or confusingly similar to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

 

It is first noted that Complainant has the burden of making a prima facie case that Respondent lacks rights and legitimate interests in the domain name. Only if Complainant can make such a case does the burden shift to Respondent. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). In arguing this point, Complainant asserts that Respondent is not commonly known by the Diners Club mark. Of course, however, that is not the test; the test is whether Respondent is commonly known by the domain name, <austindinersclub.com>. Respondent points out that it is indeed commonly known by the name, and cites both news articles and its founder’s appearance on a local radio program to promote the business, all using the name Austin Diners Club.  The Panel concludes that Respondent has provided evidence that it is commonly known by the domain name. See Creative Software Specialists v. Printers Plus, FA 1251542 (Nat. Arb. Forum April 29, 2009). Complainant also points out that the domain name leads to a website which contains advertising for various Austin restaurants, presumably for a fee. Complainant argues, both in the Complaint and again in its Additional Submission, that such advertising competes directly with Complainant’s own advertising services. However, Complainant doesn’t explain what this means, that is, what kind of advertising services it conducts and just how Respondent’s activity competes. Complainant describes itself as 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.” Complainant goes on to describe the many kinds of businesses which accept its credit cards. Complainant says nothing at all about its advertising services, nor does it explain its summary conclusion that the advertising on Respondent’s website competes with Complainant’s advertising services. In the absence of any evidence of such competition the Panel cannot hold that Respondent’s advertising is somehow improper or violative of Complainant’s rights. Similarly, while Complainant asserts in a conclusory manner that Respondent has never used the domain name for a bona fide offering of goods or services, it does not elaborate on this point. By contrast, it certainly appears from the Response and from the <austindinersclub.com> website that Respondent is in fact using the domain name for a bona fide offering of goods and services. It appears that people can, for a $40 fee ($60 for a couple) become members of Respondent’s dining club, which entitles them to attend dinners at Austin’s fine restaurants at a discount. The Panel does not agree with Complainant that this is not a bona fide offering of goods and services. Finally, Complainant argues that the domain name is being used for an infringing purpose, in order to divert users to Respondent’s website which, according to Complainant, competes with Complainant’s own advertising services. Once again it is noted that Complainant has not explained at all just what advertising services it provides or how such services compete with Respondent’s advertising. Finally, Complainant relies on the recent panel decision cited above involving the same Complainant and Respondent, and concerning thirty-six similar domain names, including <atlantadinersclub.com>. The panel in that matter found for Complainant on this element. The panel in that matter noted that “Respondent has not submitted any evidence that it is commonly known by any of the disputed domain names.” In the present case, by contrast, as noted above the Respondent has indeed submitted evidence—including media articles and radio broadcasts-- that it is commonly known by the domain name. Thus, the prior matter is plainly distinguishable. In sum, Complainant has not met its burden on this element, and the Panel concludes that Complainant has failed to show that Respondent lacks rights or legitimate interests in the domain name.

 

Registration and Use in Bad Faith

 

Respondent argues, and the Panel agrees, that it cannot be acting in bad faith because it has rights and legitimate interests in the domain name. The Panel has determined that Respondent has rights and legitimate interests in the name and therefore concludes that the name was not registered and is not being used in bad faith. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith was moot once the panel had determined that the respondent had rights and legitimate interests in the name). The Panel concludes that given the legitimate uses of the domain name for the bona fide offering of goods and services, Respondent did not register or use the domain name in bad faith.

 

Reverse Domain Name Hijacking

 

Respondent asserts that Complainant is engaged in reverse domain name hijacking. While the Panel has not ruled in favor of Complainant, it does not see any evidence of bad faith or impropriety in Complainant’s zealous protection of its trademark. Moreover, the Panel has found in favor of Complainant on one of the three elements of the Policy. The Panel therefore rejects a claim of reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (rejecting claim of reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” element, as Complainant has in the instant matter).

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED

 

Accordingly, it is Ordered that the <austindinersclub.com> domain name not be transferred from Respondent to Complainant.

 

 

 

Joel M. Grossman, Esq., Panelist
Dated: September 25, 2009

 

 

 

 

 

 

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