Diners Club International Ltd. v. Leisure & Travel Guides E.A. Ltd a/k/a Hassan Jiwani
Claim Number: FA1310001523176
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is Leisure & Travel Guides E.A. Ltd a/k/a Hassan Jiwani (“Respondent”), represented by Faith M. Macharia of Anjarwalla and Khanna Advocates, Kenya.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goplacesdinersclub.com>, registered with FastDomain, 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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2013; the National Arbitration Forum received payment on October 9, 2013.
On October 7, 2013, FastDomain, Inc. confirmed by e-mail to the National Arbitration Forum that the <goplacesdinersclub.com> domain name is registered with FastDomain, Inc. and that Respondent is the current registrant of the name. FastDomain, Inc. has verified that Respondent is bound by the FastDomain, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 2013 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@goplacesdinersclub.com. Also on October 9, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A Response was received on October 29, 2013. The Forum determined that this Response was deficient as it was in violation of Annex A to the Supplemental Rules, which requires that each e-mail be limited to no more than 10 megabytes of memory; the Response was received in a single e-mail totaling 32 megabytes.
On November 4, 2013, The Complainant submitted an Additional Submission which is considered to comply with Supplemental Rule 7.
On November 5, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant contends that:
Respondent registered the disputed on November 13, 2012.
By its Response, the Respondent contends that:
Policy ¶ 4(a)(ii)
C. Additional submissions
By its additional submissions, the Complainant reiterates its initial assertions.
Preliminary Issue: Deficient Response
The Response was submitted in a timely manner, yet the e-mail in which it was submitted exceeded the requirement that any e-mail to the Forum not exceed 10 MB—apparently due to failure to compress the .pdf files. As stated in Annex A of the Supplemental Rules, 10 megabytes is the size limit for any individual e-mail submitted to the Forum, and thus Respondent ought to have sent several e-mails if it wished to send its files to the Forum in their current state. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. In the line to other Panels’ decisions, despite of the procedural deficiency for which nonconsideration would represent an extreme remedy, the Panel chooses to accept and consider this Response, as it provides information which the Panel sees relevant in the file. See Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Preliminary Issue: Evidence as to Use of the Domain Name
The Panel noted that neither party has provided any substantive evidence as to the use of the domain name’s website. Both parties made general statements as to the use, and no record or document has been presented in the exhibits to illustrate the actual use of the <goplacesdinersclub.com> domain name. Given the importance that the domain name’s use serves in illustrating Policy ¶ 4(a)(ii) rights and legitimate interests, as well as the necessity of such evidence in proving Policy ¶ 4(a)(iii) bad faith use, the Panel requested by Order for Additional Submissions and Extending Time for Rendering a Decision, dated November 18, 2013 evidence of the domain name’s use pursuant to UDRP Rule 12.
D. Additional Submissions further to the Procedural Oder dated November 18, 2013
Following the Panel’ s Order for Additional Submissions and Extending Time for Rendering a Decision, dated November 18, 2013, both parties submitted additional submissions
By its Further Additional Submissions the Complainant asserted that the website associated to the disputed domain name is not accesible and that the Respondent disabled the website following the filling of the Complaint. The Complainant attached a screenshot of the first page of the website and a screenshot of the domain name as recorded by the Internet Archive Way Back Machine.
By its Additional Submissions, the Respondent contended that it has not disabled any website associatted to the disputed domain name, but that it has been experiencing a problem with the hosting company of the website and because of this it is not able to provide any screenshots showing the use of the disputed domain name. In documenting its statements, the Respondent provided copies of the alleged email correspondence with its hosting services provider.
The Panel finds that the Respondent has registered the disputed domain name in order to take advantage of the notoriety of the Complainant’ s trademark.
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."
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.
According to Complainant, it uses its DINERS CLUB mark to operate credit card services, consumer loyalty programs, and referral services, as well as traveler’s checks and other travel-oriented financial and financial-security services. Complainant has presented evidence that it has registered its mark with various trademark registrars, including the USPTO (e.g., Reg. No. 828,013 registered on April 25, 1967), the KIPI (Reg. No. 14,007 registered on February 14, 1967), and the OHIM (Reg. No. 111,906 registered on October 7, 1998). The Panel agrees that evidence of trademark registration in these countries, particularly registration in Respondent’s home country of Kenya, satisfies Policy ¶ 4(a)(i) with respect to Complainant’s rights in the mark. 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).”).
Complainant next explains that Respondent’s <goplacesdinersclub.com> domain name is identical and confusingly similar to the DINERS CLUB mark. Complainant notes that the domain name adds the generic terms “go” and “places” to the DINERS CLUB mark. Complainant claims that the addition of the gTLD “.com” does not distinguish this domain name from the mark. The Panel initially agrees that neither the deletion of the mark’s spacing, nor the addition of the gTLD, are considered distinctive features of the domain name. See, e.g., Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). In the case of Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel found that merely generic terms could not distinguish the domain name from a mark in any meaningful way. In regards to Respondent’s suggestion that it has rights in a GO PLACES mark, the panel in G.D. Searle & Co. v. Entm’t Hosting Servs., Inc., FA 110783 (Nat. Arb. Forum June 3, 2002), found that there remained an essence of confusing similarity when the domain name merely combined two different marks. Thus the Panel agrees that in either case, a Policy ¶ 4(a)(i) confusing similarity surrounds the <goplacesdinersclub.com> domain name.
While Respondent contends that the <goplacesdinersclub.com> domain name is comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Therefore, the Panel finds that the disputed domain name is identical and confusingly similar with the Complainant’s trademarks, and the first element under Policy ¶ 4(a)(i) has been proven.
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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.”).
Complainant notes that Respondent refers to itself as “Leisure & Travel Guides E.A. Ltd a/k/a Hassan Jiwani,” and thus has never been commonly known as the <goplacesdinersclub.com> domain name. Complainant states that it has not licensed or authorized Respondent’s use of the DINERS CLUB mark in such a manner. The Panel agrees that even though Respondent alleges it operates a customer loyalty program under the name GO PLACES Diners Club, there is insufficient evidence to suggest that Respondent is actually known as the <goplacesdinersclub.com> domain name under Policy ¶ 4(c)(ii). See, e.g., Sumner v. Urvan, D2000-0596 (WIPO July 24, 2000) (finding that the respondent’s evidence that he used the name “Sting” as a login name at a gaming site was “at the weaker end of the spectrum of such evidence” and thus did “not establish that he has been ‘commonly known’ by the domain name as contemplated by” the Policy).
Complainant argues that Respondent uses the <goplacesdinersclub.com> domain name to promote competing restaurant loyalty services under the confusingly similar VIP DINERS CLUB mark. The Panel notes that while initially neither party presented any evidence as to the domain name’s use, the evidences produced further by the Complainant, at the Panel’s Order dated November 18, 2013, and the parties’ agreement, are in the sense that disputed domain name is used by Respondent to operate a loyalty-style rewards program that offers discounts and special deals to consumers enrolled in Respondent’s program.
On the other side, Respondent argues that it is known as GO PLACES, as it has used this mark in commerce for over sixteen years and that its adoption of the <goplacesdinersclub.com> domain name represents the “diners club” that Respondent offers under its GO PLACES mark. Moreover, Respondent claims that it uses the terms “diners” and “club” in the <goplacesdinersclub.com> domain name for their generic value in describing the fact that GO PLACES offers a card where participating Kenyan and east African businesses can provide dining and restaurant discounts to card-holders. The Respondent asserts that “diners club” words are very descriptive trademarks for any business of a like kind. Moreover, the Respondent contends that either party would be infringing upon the other party’s mark in the event that either one of the parties retain control over the domain name.
The Panel agrees, based on the evidences provided in the file, that the Respondent has developed a business under a domain name, which includes its own trademark GO PLACES. Nevertheless, the disputed domain itself and the content of the website associated to the disputed domain name indicate that the registration of the disputed domain name was targeting the Complainant’s trademarks DINERS CLUB. The disputed domain name includes the Complainant’s famous trademark DINERS CLUB. Moreover, the screenshots of the website associated with the disputed domain name, provided by the Complainant, indicate that the said website displays the Complainant’s trademark DINERS CLUB proeminently, by itself, as such as it creates the impression that the it is the Complainant who is associated with the said website. Therefore, the use of the disputed domain name by the Respondent passes over the initial interest confusion threshold, which this Panel aknowledges, but also it creates a likelihood of confusion further when the website associated with the disputed domain name is accessed.
The Panel cannot agree, as the Respondent asserts, that Complainant’s DINERS CLUB is such a descriptive trademarks for anybody who develops the same kind of business. The association of the Complainant’s trademark DINERS CLUB to the Respondent’s trademark GO PLACES is not a coincidence. The Respondent, in the same line of business as the Complainant, has chosen to promote a restaurant loyalty services, as the Complainant has done for many decades, under the confusingly similar VIP DINERS CLUB Complainant’s trademarks associated to its own trademark GO PLACES. In the opinion of this Panel, this cannot be considered a legitimate bona fide use of the domain name under Policy ¶ 4(c)(i).
The Panel considers that, not even the legal rights held by the Respondent in the GO PLACES trademark, which is included in the disputed domain name, could justify legal rights or legitimate interest in the disputed domain name as long as the intent of the Respondent in registering the disputed domain name in order to take advantage of the Complainant’s trademark DINERS CLUB is so transparent.
Therefore, the Panel finds that the second element under Policy ¶ 4(a)(i) has been proven.
Complainant claims that Respondent disrupts Complainant’s business by using the <goplacesdinersclub.com> domain name to directly compete with legitimate DINERS CLUB services. From the evidences submitted by both parties, and also from the parties’ statements, the Panel finds that the <goplacesdinersclub.com> domain name is being used to promote a rewards/loyalty initiative similar to Complainant’s DINERS CLUB mark. In the case of DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel found that the use of a disputed domain name to make competing business offerings was inherently disruptive to the complainant’s business.
Complainant next argues that Respondent seeks to intentionally attract Internet users to the <goplacesdinersclub.com> domain name in hopes that Internet users will do business with Respondent in belief that Respondent’s services derive from, or are endorsed by, Complainant. As no parties have provided initially the actual evidence of the domain name’s use, the Panel ordered under Rules to have such evidences submitted. Following the Panel’s Order dated November 18, 2013, it was only the Complainant who submitted screenshots of the website to which the disputed domain name resolves provided by the Way Back Machine. The Respondent has avoided to submit any evidences as to the disputed domain name use, by ascertaining that due to some hosting company’s technical issue, the website cannot be accessed for several days. The Panel by itself has tried to access the website under the disputed domain name, for several times, last time being at the date of rendering this decision. The website under the disputed domain name is still not accesible. Considering the evidences in the case and the statements of the parties, and considering mainly the screenshots of the website provided by the Complainant which displays proeminently the Complainant’s DINERS CLUB VIP trademarks, with no reference whatsoever to the Respondent’s trademark, the Panel is inclined to believe that the Respondent has actually disabled the website as the use of the disputed domain name would represent further evidence that it targeted the Complainant’s trademark DINERS CLUB in order to take full advantage of it.
Complainant lastly argues that Respondent had constructive notice of Complainant’s rights in the DINERS CLUB mark through KIPI registration, as well as the USPTO and OHIM registrations. Complainant further argues that Respondent also had actual knowledge of Complainant’s rights in the mark as the <goplacesdinersclub.com> domain name is being used to advertise services that happen to compete directly with Complainant’s own DINERS CLUB mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark and Respondent’s provision of competitive services at the disputed domain name, Respondent had actual knowledge of the mark and Complainant's rights.
For all the reasons above, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goplacesdinersclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka, Panelist
Dated: December 3, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page