Diners Club International Ltd. v. Mainstream
Advertising aka Moniker Privacy Services
Claim Number: FA0604000672091
PARTIES
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is Mainstream Advertising aka Moniker Privacy Services (“Respondent”), 6320 Canoga Ave., Suite 250, Woodland Hills, CA 91367.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dinersclubdiscount.com>,
registered with Moniker Online Services,
Inc.
PANEL
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 5, 2006. On
April 13, 2006, the National Arbitration Forum notified Complainant that
numerous deficiencies were present in the Complaint and that those deficiencies
required rectification within five (5) calendar days. On April 18, 2006, Complainant withdrew its Complainant and sought
a dismissal of the Complaint without prejudice; the National Arbitration Forum
granted Complainant’s request by letter on April 19, 2006. Complainant
resubmitted a Complaint for the same domain name to the National Arbitration
Forum electronically on May 18, 2006 pursuant to Supplemental Rule 6(b); the
National Arbitration Forum received a hard copy of the Complaint on May 18,
2006.
On May 24, 2006, Moniker Online Services, Inc. confirmed by e-mail to
the National Arbitration Forum that the <dinersclubdiscount.com>
domain name is registered with Moniker Online Services, Inc. and that the
Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is
bound by the Moniker Online Services, 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 30, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 19, 2006 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@dinersclubdiscount.com by e-mail.
A timely Response was received and determined to be complete on June
19, 2006.
On June 22, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges, among other things, that:
Complainant is a leading provider of financial services to individuals,
small businesses and major corporations worldwide through a variety of channels
of trade, including via credit card services.
Complainant is the owner of a family of trademarks, including the mark
DINERS CLUB.
Complainant’s DINERS CLUB mark is famous and is registered with the
pertinent national authorities in many countries, dating from as early as 1965.
Respondent first registered the disputed domain name on July 26, 2005.
The contested domain name resolves to a website featuring links to
other sites which promote goods and services in competition with those of
Complainant.
Complainant has not granted Respondent any license, permission or
authorization to use its mark for any purpose.
The offending domain name is confusingly similar to Complainant’s mark.
Respondent lacks any rights to or legitimate interests in the disputed
domain name.
Respondent was aware of Complainant’s rights in its mark prior to the
registration of the contested domain name.
Respondent’s use of the same domain name for commercial gain creates a
likelihood of confusion among the Internet public as to the possibility of
sponsorship, affiliation or endorsement of Respondent’s website by Complainant.
Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent's Response to the Complaint herein recites, in pertinent
part, as follows: “[W]e do not wish to
contest the claim made … on behalf of Diners Club International Ltd. …. Mainstream Advertising grants full
authorization to the National Arbitration Forum … to complete any registration
transfer to Diners Club International Ltd.”
FINDINGS
Complainant’s
uncontested allegations justify the following findings:
(1)
the domain name
registered by the Respondent is confusingly similar to a trademark or service
mark in which Complainant has rights;
(2)
Respondent has
no rights or legitimate interests in respect of the domain name; and
(3)
the same domain
name was registered and is being used by Respondent in bad faith.
Respondent’s written Response to the
Complaint herein justifies a further finding that the parties have mutually
agreed to an immediate transfer of the disputed domain name from Respondent to
Complainant without a need for further proceedings.
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:
i. the domain name registered by the
Respondent is identical or confusingly similar to a
trademark or service mark in which the
Complainant has rights;
ii. Respondent has no rights or legitimate
interests in respect of the domain name; and
iii. the
domain name was registered and is being used by Respondent in bad faith.
DECISION
Whereas Complainant has established by its uncontested allegations all
three of the elements required to be proven under the ICANN Policy, and
Whereas the parties have stipulated in writing to an immediate transfer
of the disputed domain name from Respondent to Complainant,
And whereas Policy ¶ 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions (see Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Ar. Forum Jan. 13, 2004; see also Disney Enterprises, Inc. v. Morales, FA 475191 (Nat. Arb. Forum Jun. 24, 2005));
Now, therefore, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <dinersclubdiscount.com>
domain name be TRANSFERRED forthwith
from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 5, 2006
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