Diners Club International, Ltd. v.
Infotechnics Limited
Claim Number: FA0307000169085
Complainant is Diners Club International, Ltd.,
Chicago, IL (“Complainant”) represented by Paul
D. McGrady of Ladas & Parry. Respondent is Infotechnics Limited, Apia, WESTERN
SAMOA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <diners-club.net> registered with Domaindiscover.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 16, 2003; the Forum received a hard copy of the
Complaint on July 17, 2003.
On
July 18, 2003, Domaindiscover confirmed by e-mail to the Forum that the domain
name <diners-club.net> is registered with Domaindiscover and that
Respondent is the current registrant of the name. Domaindiscover has verified
that Respondent is bound by the Domaindiscover 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
July 21, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 11, 2003 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@diners-club.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
August 12, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.
Respondent
delivered a submission entitled, “Additional Statement of Respondent,” to the
Forum on August 15, 2003.
On
the same date, Complainant countered with an Additional Submission in response
to Respondent’s submission.
On
August 16, 2003, Respondent submitted a “Petition to Consider Reply to
Complainant’s Additional Submission.”
Respondent
contends in its “Additional Statement of Respondent” that its submission should
be considered timely filed in accordance with NAF Supplemental Rule 7(a), which
reads:
A party may
submit additional written statements and documents to the Forum and the
opposing party(s) within five (5) calendar days after the date the Response was
submitted or the last date the Response was due to be submitted to the Forum,
whichever occurs first.
Respondent
interprets this language to permit it to submit a statement responsive to the
Complaint even after the Forum has issued a Notification of Respondent Default.
Respondent apparently reads Supp. Rule 7 to provide a perpetual five-day
extension of the deadline for a Response to be received by the Forum as
expressed in Rule 5(a). However, Supp. Rule 7(d) states, “Additional
submissions and responses to additional submissions may not amend the original
Complaint or Response.” Implicit in the rule is the requirement of Respondent
to have submitted a Response in order for it to subsequently submit an
additional submission. Therefore, a party may only submit an additional
submission, if said party has first submitted an original submission. In this
case, there is nothing for the “Additional Statement of Respondent” to be in
addition to because a timely Response was never filed. Thus, the Administrative
Panel (“the Panel”) finds that Respondent’s submission, regardless of what it
is entitled, is untimely filed. In its discretion, a Panel may choose to
consider an untimely filed submission. This Panel chooses not to consider
Respondent’s tardy submission. See Telstra Corp.
v. Chu, D2000-0423 (WIPO June 21, 2000)
(finding that any weight to be given to the lateness of the Response is solely
in the discretion of the Panelist). Moreover, the Panel finds that Supp. Rule 7
prohibits the Panel from considering the “Additional Statement of Respondent”
because the rule clearly requires a party to submit an original submission in
order to file an additional submission.
Respondent
cites three UDRP decisions for the application of Supp. Rule 7 in the manner
understood by Respondent. However, none of the panelists supported its
acceptance of the untimely filed Responses with any reasoning. Without any
support for these decisions, the Panel finds it difficult to rule contrary to
the clear reading of Supp. Rule 7 when read in toto. Therefore, the
Panel finds that the better reading of Supp. Rule 7 is that a party must have
first submitted an original submission in order to submit a subsequent
additional submission.
Accordingly,
Having reviewed the communications records, 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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <diners-club.net>
domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or
legitimate interests in the <diners-club.net> domain name.
3. Respondent registered and used the <diners-club.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the DINERS CLUB mark (Reg. No. 828,013 registered on April
25, 1967) related to the extension of credit to customers who purchase at
subscribing retail establishments, and making collections from such customers
through a central billing system. Complainant also holds a number of trademark
registrations for variations of the mark in the United States and several other
countries.
Respondent
registered the <diners-club.net> domain name on June 20, 2003.
Respondent is using the disputed domain name to criticize Complainant’s
business practices.
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.
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.
Complainant has
established that it has rights in the DINERS CLUB mark through registration
with the USPTO.
Respondent’s <diners-club.net>
domain name is confusingly similar to Complainant’s mark because the disputed
domain name incorporates Complainant’s entire DINERS CLUB mark and merely adds
a hyphen between the two words in the mark. The insignificant addition of a
hyphen between the two words in the mark does not sufficiently differentiate
the domain name from the mark under Policy ¶ 4(a)(i). See Nintendo Of Am. Inc. v. This Domain Is For
Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com>
identical and confusingly similar to Complainant’s GAME BOY mark, even though
the domain name is a combination of two descriptive words divided by a hyphen);
see also Gen. Elec. Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000) (finding
that placing a hyphen in a domain name between “General” and “Electric” is
confusingly similar to Complainant’s mark).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not come forward to challenge Complainant’s allegations. Thus, the Panel
accepts all reasonable allegations and inferences in the Complaint as true. 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 assertion in this regard”); see
also Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows
a presumption that Complainant’s allegations are true unless clearly
contradicted by the evidence).
Moreover,
Respondent has failed to invoke any circumstances that could demonstrate rights
to or legitimate interests in the <diners-club.net> domain name.
Once Complainant has established a prima facie case against Respondent,
the burden of proof shifts to Respondent to show that it has rights to or a
legitimate interest in the disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
the domain name, it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Meijer, Inc. v.
Porksandwich Web Servs.,
FA 97186
(Nat. Arb. Forum July 6,
2001) (finding that it is reasonable to shift the burden of proof to Respondent
to show why no reasonable alternatives exist to use of that particular domain
name that includes the mark or name of Complainant for a criticism site aimed
at Complainant).
Respondent is
using the disputed domain name to criticize Complainant’s business practices.
While Respondent may have the right to voice its displeasure about its past
relationship with Complainant, this right does not inhere in Respondent any
rights to the <diners-club.net> domain name. Therefore, the Panel
finds that Respondent has failed to establish any rights to or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) because of
Respondent’s complete appropriation of Complainant’s registered mark and
Respondent’s failure to rebut Complainant’s prima facie case. See Baker
&Daniels v. DefaultData.com, FA 104579 (Nat. Arb. Forum Mar. 27,
2002) (finding that because Respondent’s <bakeranddaniels.com> domain
name merely incorporates Complainant’s trademark, without more, it is not
protected by the First Amendment); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug.
3, 2000) (finding that establishing a legitimate free speech/complaint site
does not give rights to use a famous mark in its entirety).
Furthermore,
Respondent has proffered no evidence and there is no proof evident in the
record that suggests Respondent is commonly known by DINERS CLUB or <diners-club.net>.
Therefore, Respondent has not established any rights to or legitimate inerests
in the disputed domain name with regard to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(ii).
The Policy lists
four circumstances that, if found by the Panel to be present, shall evidence
the registration and use of a domain name in bad faith. This list was not meant
to be exclusive. Under appropriate facts, the Panel may consider the totality
of the circumstances when determining whether a domain name has been registered
and used in bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”).
Respondent may
have the right to post criticism of Complainant on the Internet, however,
Respondent does not have the right to completely appropriate Complainant’s
registered trademark in a domain name in a way that will mislead Internet users
as to the source or affiliation of the attached website. Moreover, Respondent’s
failure to come forward and respond to Complainant’s prima facie
evidence helps to sway the Panel’s decision in favor of Complainant. Thus, the
Panel finds that, in the absence of any contentions or explanations from
Respondent to the contrary, Respondent’s registration and use of a domain name
nearly identical to Complainant’s mark to criticize Complainant’s business
practices is evidence of registration and use of the <diners-club.net>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Mission KwaSizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (finding that Respondent registered the domain
names <kwasizabantu.com>, <kwasizabantu.org>, and
<kwasizabantu.net> in bad faith where Respondent published negative
comments regarding Complainant’s organization on the confusingly similar
website); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
bad faith where Respondent knowingly chose a domain name, identical to
Complainant’s mark, to voice its concerns, opinions, and criticism about
Complainant); see also Red Bull
GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s
expected use of the domain name <redbull.org> would lead people to
believe that the domain name was connected with Complainant, and thus is the
equivalent to bad faith use).
Accordingly, the
Panel finds that Complainant has established 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 <diners-club.net> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 20, 2003
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