Citigroup Inc. and Diners Club International Ltd. v. M Morgan a/k/a Mike Morgan
Claim Number: FA0609000797565
Complainants are Citigroup Inc. and Diners Club International Ltd. (collectively, “Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is M Morgan a/k/a Mike Morgan (“Respondent”), 12 Webster Place, CBS, Topsail, NF A1W 5M7, CA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <citipremierpass.com>, registered with Enom, Inc., and <dinerclubus.com>, registered with LE GRAND NOM, 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.
John J. Upchurch 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 18, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <citipremierpass.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 September 19, 2006, LE GRAND NOM, INC confirmed by e-mail to the National Arbitration Forum that the <dinerclubus.com> domain name is registered with LE GRAND NOM, INC and that Respondent is the current registrant of the name. LE GRAND NOM, INC has verified that Respondent is bound by the LE GRAND NOM, INC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On September 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 11, 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@citipremierpass.com and postmaster@dinerclubus.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 John J. Upchurch 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citipremierpass.com> domain name is identical to Complainant’s CITI PREMIERPASS mark and the <dinerclubus.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <citipremierpass.com> and <dinerclubus.com> domain names.
3. Respondent registered and used the <citipremierpass.com> and <dinerclubus.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup Inc. (“Citigroup”), is one of the world’s largest financial services firms. Citigroup’s services include commercial banking, checking accounts, savings accounts, credit cards, insurance mortgages and investment advice. Under the CITI family of marks, Citigroup operates over 1,700 branches and 5,100 ATMs in over 100 countries around the world.
Complainant, Diners Club International Ltd. (“Diners Club”), is also in the business of providing financial services, primarily credit card services. Diners Club is a wholly owned subsidiary of Citigroup. Diners Club’s credit card under the DINERS CLUB mark is accepted at over one million ATMs in over sixty-four local currencies. Diners Club’s customers include over eight million individual cardholders and over half of the Fortune 500 companies.
The Panel will hereinafter refer to both Complainants collectively as Complainant.
Complainant has registered the following marks with the United States Patent and Trademark Office (“USPTO”): CITI (Reg. No. 1,181,467 issued December 8, 1981), CITIPREMIERPASS (Reg. No. 2,961,545 issued June 7, 2005, filed February 6, 2004) and DINERS CLUB (Reg. No. 828,013 issued April 25, 1967). Complainant holds over one hundred additional registrations for variations of the CITI mark with the USPTO.
Respondent registered the <citipremierpass.com> domain name on December 20, 2004 and the <dinersclubus.com> domain name on June 5, 2006. Respondent is using both domain names to maintain a web directory with links to competing financial services. Internet users resolving to Respondent’s domain names are also subjected to pop-up advertisements with adult-oriented content.
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.
Complainant has established rights in the CITI and DINERS CLUB mark under Policy ¶ 4(a)(i) through registration of the marks with the USPTO before Respondent registered the disputed domain names. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Because Complainant’s rights in the CITI PREMIERPASS mark date back to its filing date for the trademark registration, Complainant has also established rights in the CITI PREMIERPASS mark under Policy ¶ 4(a)(i). See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
The <citipremierpass.com> domain name is identical to Complainant’s CITI PREMIERPASS mark because the disputed domain name contains the entire mark and merely eliminates the space between terms and adds the generic top-level domain (“gTLD”) “.com.” Neither alteration sufficiently distinguishes the disputed domain name from Complainant’s mark. Accordingly, the Panel finds the <citipremierpass.com> domain name to be confusingly similar to the CITI PREMIERPASS mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
With respect to the <dinersclubus.com> domain
name, Respondent has failed to differentiate the disputed domain name from
Complainant’s mark by simply adding the term “us.” In L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb.
Forum Sept. 14, 2000), the panel concluded that the <shopllbean.com>
domain name was confusingly similar to the complainant’s L.L. BEAN mark because
the addition of a generic word does not avoid the confusing similarity aspect
of the ICANN policy. Therefore, the
mere addition of a common term to the end of Complainant’s DINERS CLUB mark in
the <dinersclub.com> domain name renders the disputed domain name
confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125
(WIPO Apr. 16, 2001) (finding that the respondent’s domain names were
confusingly similar to Complainant’s GOOGLE mark where the respondent merely
added common terms such as “buy” or “gear” to the end).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent has no rights or
legitimate interests in the disputed domain names. Complainant has the initial burden of proof in establishing that
Respondent lacks rights or legitimate interests in the disputed domain
names. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Hanna-Barbera Productions, 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 Policy ¶ 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.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”); see also Canadian Imperial Bank of Commerce v. D3M Virtual
Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or
legitimate interests where no such right or interest was immediately apparent
to the panel and the respondent did not come forward to suggest any right or
interest it may have possessed). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Additionally, Respondent is not commonly known by the domain names in dispute, because the WHOIS information lists “M Morgan a/k/a Mike Morgan” as the registrant of the domain names in dispute, and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain names. Accordingly, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Instron Corp. v. Kaner, FA 768859 (Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometer.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Moreover, Respondent’s domain names each resolve to
a website displaying links to competing financial services websites. The Panel presumes that Respondent is
generating click-through fees for each consumer it redirects to these competing
websites. In Or. State Bar v. A Special Day, Inc.,
FA 99657 (Nat. Arb. Forum Dec. 4, 2001), the panel found that the respondent’s
use of the <oregonstatebar.tv> domain name to redirect Internet users to
its own website selling products that competed with the complainant’s products
under the OREGON STATE BAR mark was not a bona fide offering of goods or
services, stating, “Respondent is using a mark confusingly similar to the
Complainant's to sell competing goods.”
Likewise, Respondent is also diverting Internet users seeking
Complainant’s financial and credit card services under the CITI PREMIERPASS and
DINERS CLUB marks to competing websites.
Such diversionary use of the disputed domain name for Respondent’s own
commercial gain does not constitute a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use of the domain name pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the disputed domain names to redirect
Internet users seeking Complainant’s financial services to a web directory
displaying links to competing financial services websites. In ESPN,
Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000), the panel
found bad faith where the respondent had registered the <espnclassic.com>
domain name and used it to redirect Internet users to a website at the
<iwin.com> domain name, because the respondent presumably received a
portion of the advertising revenue from the third-party website by redirecting
Internet traffic there and thus the respondent was using the domain name to
attract Internet users for commercial gain.
Likewise, the Panel infers that Respondent receives
referral fees for each consumer it diverts to other websites and is, therefore,
taking advantage of the confusing similarity between the disputed domain names
and Complainant’s marks in violation of Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island
Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that
“[s]ince the disputed domain names contain entire versions of Complainant’s
marks and are used for something completely unrelated to their descriptive quality,
a consumer searching for Complainant would become confused as to Complainant’s
affiliation with the resulting search engine website” in holding that the
domain names were registered and used in bad faith pursuant to Policy ¶
4(b)(iv)); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb.
28, 2003) (finding that the respondent’s registration of an infringing domain
name to redirect Internet users to banner advertisements constituted bad faith
use of the domain name).
In addition, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii) because Respondent’s redirecting of Internet users to websites competing with Complainant suggests that Respondent is attempting to disrupt Complainant’s business under the CITI PREMIERPASS and DINERS CLUB marks. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel concludes that Complainant has satisfied 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 <citipremierpass.com> and <dinerclubus.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 31, 2006
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