Diners Club International Ltd. and Discover Financial Services v. New Ventures Services / New Ventures Services, Corp
Claim Number: FA1504001613832
Complainants are Diners Club International Ltd. and Discover Financial Services (“Complainants”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is New Ventures Services / New Ventures Services, Corp (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <diners.co>, registered with Register.com, Inc.; and <cardmember-discovercard.com>, registered with Network Solutions, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainants submitted a Complaint to the Forum electronically on April 9, 2015; the Forum received payment on April 10, 2015.
On April 10, 2015, Register.com, Inc. confirmed by e-mail to the Forum that the <diners.co> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 April 14, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <cardmember-discovercard.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 April 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2015 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@diners.co and postmaster@cardmember-discovercard.com. Also on April 15, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
(i) Complainants use the DINERS and DISCOVER marks in connection with their expansive business purposes in both the restaurant industry and the finance industry. Complainants have registered the DINERS and DISCOVER marks with the likes of the United States Patent and Trademark Office (“USPTO”). For example, the DINERS mark bears the registration number 1,462,209; with the registration date of October 20, 1987. See Compl., at Attached Ex. C. Additionally, the DISCOVER mark bears the registration number 1,479,946; with the registration date of March 8, 1988. Id. The <diners.co> and <cardmember-discovercard.com> domain names are confusingly similar to the DINERS and DISCOVER marks as they both incorporate the marks in their entirety, while adding the country-code top-level domain (“ccTLD”) “.co”, or the generic top-level domain (“gTLD”) “.com”, and the descriptive/generic terms “card” and “member” and a hyphen.
(ii) Respondents have no rights or legitimate interests in the disputed domain names. Respondents are not commonly known by the disputed domain names, nor have they been given authorization by Complainants to make any use of the DINERS or DISCOVER marks in domain name registrations. Further, Respondents are not making a bona fide offering of goods or services or a legitimate noncommercial or fair use through the disputed domain names. Rather, the <diners.co> domain name previously resolved to a pay-per-click site, and currently resolves to a site which states “The domain diners.co may be for sale by its owner!” See Compl., at Attached Ex. F. The <cardmember-discovercard.com> domain name resolves to a pay-per-click site which directs Internet users to competitors of Complainants. Id.
(iii) Respondents have used the <diners.co> and <cardmember-discovercard.com> domain names in bad faith. Respondent listed the domain names for sale in excess of out-of-pocket costs, demonstrating bad faith under Policy ¶ 4(b)(i). Next, Respondents used the <cardmember-discovercard.com> domain name to divert Internet users to Competitors of Complainants thereby constituting disruption per Policy ¶ 4(b)(iii). Additionally, both disputed domain names’ resolution to pay-per-click sites evinces attraction for commercial gain under Policy ¶ 4(b)(iv). Finally, Respondents had actual and/or constructive knowledge of the DINERS and DISCOVER marks prior to registering the disputed domain names.
B. Respondent
Respondents did not submit a response to the complaint. The <diners.co> domain name was registered on July 21, 2010, and the <cardmember-discovercard.com> domain name was registered on April 17, 2013.
C. Additional Submissions
On May 29, 2015, the Panel issued a Procedural Order requesting Complainants to demonstrate the relationship between Complainants regarding their standing as joined Complainants, setting a deadline of June 5, 2015. On June 3, 2015, Complainants submitted an Additional Submission evidencing the relationship between Complainants.
(1) Multiple Complainants
There are two Complainants in this matter: Diners Club International Ltd. and Discover Financial Services.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel notes that Complainant Discover Financial Services acquired another Complainant Diners Club International Ltd. in 2008 which was announced on April 7, 2008. As the Panel accepts that the evidence in the Complaints’ Additional Submission is sufficient to establish a sufficient nexus or link between the Complainants, it treats them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant” hereinafter as appropriate.
(2) Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel notes the relevant WHOIS information for the Respondents evinces identical contact information, imputing that the multiple Respondents in the instant proceeding are in fact one in the same.
The Panel finds that the disputed domain names are commonly controlled by a single Respondent who is using multiple aliases, and therefore accepts the standing as multiple Respondents. The Respondents will be collectively referred to as “Respondent” hereinafter as appropriate.
Complainant established that it had rights in the marks contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected marks.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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.
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.”).
Complainant uses the DINERS and DISCOVER marks in connection with their expansive business purposes in both the restaurant industry and the finance industry. Complainant purports to have registered the DINERS and DISCOVER marks with the USPTO. For example, the DINERS mark bears the registration number 1,462,209; with the registration date of October 20, 1987. See Compl., at Attached Ex. C. Additionally, the DISCOVER mark bears the registration number 1,479,946; with the registration date of March 8, 1988. Id. Complainant argues that such trademark registrations serve to demonstrate rights in the marks under Policy ¶ 4(a)(i). Panels have seen such registrations as sufficient in demonstrating rights in marks. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Therefore, the Panel agrees that Complainant has met the burden of demonstrating rights in a mark under Policy ¶ 4(a)(i).
Next, the <diners.co> and <cardmember-discovercard.com> domain names are argued to be confusingly similar to the DINERS and DISCOVER marks as they both incorporate the marks in their entirety, while adding the ccTLD “.co”, or the gTLD “.com”, and the descriptive/generic terms “card” and “member” and a hyphen. Panels have seen such alterations as insufficient in overcoming a finding of confusing similarity per Policy ¶ 4(a)(i). See Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds non-distinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”). Therefore, the Panel agrees that Respondent’s disputed domain names are confusingly similar to the DINERS and DISCOVER marks pursuant to Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant asserts that Respondent is not commonly known by the disputed domain names, nor has it been given authorization by Complainant to make any use of the DINERS or DISCOVER marks in domain name registrations. In light of the relevant WHOIS information in addition to the fact that Respondent has failed to submit a response in this proceeding, the Panel agrees that there is no basis for which a finding of Respondent’s being commonly known by the disputed domain names is proper. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant contends that Respondent is not making a bona fide offering of goods or a legitimate noncommercial or fair use through the disputed domain names. Rather, Complainant argues, the <diners.co> domain name previously resolved to a pay-per-click site, and currently resolves to a site which states “The domain diners.co may be for sale by its owner!” See Compl., at Attached Ex. F. The <cardmember-discovercard.com> domain name resolves to a pay-per-click site which directs Internet users to competitors of Complainant. Id. Panels have agreed that the use of pay-per-click links via a confusingly similar domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel therefore agrees that Respondent’s use of the <diners.co> and <cardmember-discovercard.com> domain names constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii).
Complainant argues that Respondent listed the domain names for sale in excess of out-of-pocket costs, demonstrating bad faith under Policy ¶ 4(b)(i). The Panel’s attention is directed to Complainant’s Attached Exhibit G for a demonstration of Respondent’s offer to sell the <diners.co> domain name for $377.00, and its offer to sell the <cardmember-discovercard.com> domain name for $677.00. Previous panels have found such offers for sale to be in bad faith under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding respondent’s $2,000 offer to sell the domain name sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)). Thus, the Panel agrees that Respondent has been sufficiently shown to have acted in bad faith per Policy ¶ 4(b)(i).
Next, Respondent is argued to have used the <diners.co> and <cardmember-discovercard.com> domain names to divert Internet users to competitors of Complainant thereby constituting disruption per Policy ¶ 4(b)(iii). Such links that would purportedly disrupt the business of Complainant are as follows: “MasterCard”, “Balance Transfer Credit Cards”, “0 Interest Credit Cards”, “Local Diners”, “classic diners”, and “Chicago Restaurants.” See Compl., at Attached Ex. F. Panels have found where a respondent has included hyperlinks which seem to divert Internet users to competitors of complainant have used such disputed domains in bad faith per 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)). Therefore, the Panel concludes that Respondent registered and used the <diners.co> and <cardmember-discovercard.com> domain names to divert Internet users to competitors of Complainant pursuant to Policy ¶ 4(b)(iii).
Additionally, Complainant posits that both disputed domain names’ resolution to pay-per-click sites evinces attraction for commercial gain under Policy ¶ 4(b)(iv). Such pay-per-click links include the following: “MasterCard”, “Balance Transfer Credit Cards”, “0 Interest Credit Cards”, “Local Diners”, “classic diners”, and “Chicago Restaurants.” See Compl., at Attached Ex. F. Previous panels have agreed where a respondent has included numerous pay-per-click hyperlinks, some of which resolve to competitors of complainant, bad faith attraction for commercial gain under Policy ¶ 4(b)(iv) is evinced. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Thus, the Panel agrees that Respondent has attracted Internet users for commercial gain in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's DINERS and DISCOVER marks, it is inconceivable that Respondent could have registered the <diners.co> and <cardmember-discovercard.com> domain names without actual and/or constructive knowledge of Complainant' rights in the marks. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel infers due to the fame and notoriety of Complainant's DINERS and DISCOVER marks that Respondent had actual knowledge of Complainant' rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <diners.co> and <cardmember-discovercard.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 4, 2015
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