Diners Club International Ltd. v. B. Finkers
Claim Number: FA1004001322299
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dinergoldcard.com>, registered with Wild West Domains, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2010.
On May 2, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <dinergoldcard.com> domain name is registered with Wild West Domains, Inc. and that 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 May 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dinergoldcard.com by email. Also on May 5, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dinergoldcard.com> domain name is confusingly similar to Complainant’s DINERS mark.
2. Respondent does not have any rights or legitimate interests in the <dinergoldcard.com> domain name.
3. Respondent registered and used the <dinergoldcard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club International Ltd., is a provider of financial and credit card services to individuals and businesses with over eight million individual cardholders. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its DINERS mark (e.g., Reg. No. 1,462,209 issued October 20, 1987), as well as with the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 3,777,621 issued August 29, 2005).
Respondent, B. Finkers, registered the <dinergoldcard.com> domain name on February 26, 2010. Respondent’s disputed domain name resolves to website that offers website hosting services.
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.
The Panel finds that Complainant has established rights in
its DINERS mark under Policy ¶ 4(a)(i) through its trademark registrations with
the USPTO (e.g., Reg. No. 1,462,209
issued October 20, 1987), and OHIM (Reg. No. 3,777,621 issued August 29, 2005). See Morgan Stanley v. Fitz-James, FA
571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the
evidence that the complainant had registered its mark with national trademark
authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights
in the mark for purposes of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance
Complainant alleges that the <dinergoldcard.com> domain name is confusingly similar to Complainant’s DINERS mark. Complainant argues that the disputed domain name contains it mark, absent the letter “s,” with the additions of the descriptive term “gold card” and the generic top-level domain (“gTLD”) “.com.” Complainant alleges that the changes to its mark are not sufficient to distinguish the disputed domain name from its mark. The Panel finds that Respondent’s disputed domain name that contains Complainant’s mark, absent the letter “s,” along with the descriptive term “gold card,” that relates to Complainant’s credit card business, and the gTLD “.com” is confusingly similar to Complainant’s DINERS mark under Policy ¶ 4(a)(i). See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or
legitimate interests in the <dinergoldcard.com>
domain name. Complainant needs to make a
prima facie case in support of these
allegations. Upon Complainant making a prima facie case the burden of proof
will shift to Respondent to submit evidence to show it possesses rights or
legitimate interests in the disputed domain name. 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 Policy
¶ 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) (finding that if the 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.”).
The Panel finds that Complainant has submitted a prima facie case in support of its allegations. Due to Respondent’s failure to respond in
these proceedings, the Panel may assume that Respondent lacks rights and
legitimate interests in the <dinergoldcard.com>
domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertions
in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall
draw such inferences’ from the Respondent’s failure to comply with the rules
‘as it considers appropriate.”).
However, the Panel will evaluate the evidence on record to determine if
Respondent has rights or legitimate interests in the disputed domain name
according to Policy ¶ 4(c).
Complainant
asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain
name lists the registrant as “B. Finkers”
which Complainant argues is not similar to the disputed domain name. Complainant further asserts that it has not
granted Respondent any license, permission, or authorization by which
Respondent could use any domain name registrations incorporating Complainant’s
mark. Without evidence to the contrary,
the Panel finds that Respondent is not commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Respondent’s disputed domain name resolves to a website that promotes Respondent’s hosting services. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to divert Internet users to its resolving website for Respondent’s own gain is not 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 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).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website promoting Respondent’s hosting services. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to promote its own services from which Respondent presumably profits is evidence of bad faith registration and use 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 the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satified.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dinergoldcard.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 14, 2010
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