Diners Club International Ltd. v. UAE Investments Company Ltd. (BVI)
Claim Number: FA0609000797553
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul
D. McGrady, Jr., of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <dinersclubcardfinance.com> and <dinersclubfinance.com>, registered with Namesecure.com.
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.
Honorable Karl F. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 19, 2006.
On September 19, 2006, Namesecure.com confirmed by e-mail to the National Arbitration Forum that the <dinersclubcardfinance.com> and <dinersclubfinance.com> domain names are registered with Namesecure.com and that Respondent is the current registrant of the names. Namesecure.com has verified that Respondent is bound by the Namesecure.com 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 September 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 12, 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@dinersclubcardfinance.com and postmaster@dinersclubfinance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dinersclubcardfinance.com> and <dinersclubfinance.com> domain names are confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <dinersclubcardfinance.com> and <dinersclubfinance.com> domain names.
3. Respondent registered and used the <dinersclubcardfinance.com> and <dinersclubfinance.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club
International Ltd., is a leading provider of financial services to individuals,
small businesses and large corporations through many channels of trade
including credit card services.
Complainant currently has over eight million cardholders and its cards
are accepted in over 200 countries.
Complainant holds trademark registrations in various countries, including
with the United States Patent and Trademark Office (“USPTO”) for its DINERS
CLUB mark (Reg. No. 828,013 issued April 25, 1967).
Respondent registered the <dinersclubcardfinance.com> and <dinersclubfinance.com> domain names on June 15, 2006. Respondent’s disputed domain names resolve to websites that display links to third-party websites that are in direct competition with Complainant.
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’s trademark registrations both internationally and with the USPTO sufficiently establishes Complainant’s rights in the DINERS CLUB mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Respondent’s <dinersclubcardfinance.com> and <dinersclubfinance.com> domain names are confusingly similar to Complainant’s DINERS CLUB mark as they combine Complainant’s mark in its entirety with the addition of one or more generic terms that have an obvious relationship to services offered by Complainant. Such additions do not negate the confusing similarity between Respondent’s disputed domain names and Complainant’s mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests in the <dinersclubcardfinance.com> and <dinersclubfinance.com> domain names. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain names. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use
Complainant’s DINERS CLUB mark, and that Respondent is not associated with
Complainant in any way. Furthermore,
Respondent’s WHOIS information does not suggest that Respondent is commonly known
by the <dinersclubcardfinance.com> and <dinersclubfinance.com>
domain names. In RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001), the panel interpreted Policy ¶ 4(c)(ii) to require a
showing that one had been commonly known by the disputed domain name prior to
registration of the domain name in order to prevail. See Ian Schrager
Hotels, L.L.C. v. Taylor, FA 173369 (Nat.
Arb. Forum Sept. 25, 2003) (finding
that without demonstrable evidence to support the assertion that a respondent
is commonly known by a domain name, the assertion must be rejected). The Panel thus finds that Respondent is not
commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Respondent is using the disputed domain names to display hyperlinks to direct competitors of Complainant. The Panel presumes that such use of the <dinersclubcardfinance.com> and <dinersclubfinance.com> domain names is for Respondent’s own commercial gain through the earning of click-through fees. Such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(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); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent is using the <dinersclubcardfinance.com> and <dinersclubfinance.com>
domain names to divert Internet users to a website that displays links to
third-party websites that are in direct competition with Complainant. The Panel finds that such use constitutes
disruption and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); see
also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Respondent is using the disputed domain names to display links to third-party websites, a use the Panel presumes is for the commercial gain of Respondent through the earning of click-through fees. Additionally, the <dinersclubcardfinance.com> and <dinersclubfinance.com> domain names may create a likelihood of confusion as to the source and affiliation of Complainant with the disputed domain names and corresponding websites. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the Panel found that the respondent’s prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the disputed domain name provided links to the complainant's competitors and respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”). Accordingly, the Panel finds that Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dinersclubcardfinance.com> and <dinersclubfinance.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 23, 2006
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