national arbitration forum

 

AMENDED DECISION

 

Diners Club International Ltd. v. Robert Spayne a/k/a Rulator Corp.

Claim Number: FA0611000854291

 

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 Robert Spayne a/k/a Rulator Corp. (“Respondent”), 255 Court St., Richland Ctr, WI 53581.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <dinerscreditanytime.com> and <dinerscreditclub.com>, registered with Network Solutions, 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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 29, 2006.

 

On November 28, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <dinerscreditanytime.com> and <dinerscreditclub.com> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 December 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 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@dinerscreditclub.com and postmaster@dinerscreditanytime.com by e-mail.

 

Having received no timely response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 11, 2007, 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.

 

On January 15, 2007 a purported Response was received after the deadline and only in hard copy, a violation of ICANN Rule 5(a).  The Panel hereby disallows the Response and shall not consider the same.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <dinerscreditanytime.com> domain name is confusingly similar to Complainant’s DINERS mark, and Respondent’s <dinerscreditclub.com> is confusingly similar to Complainant’s DINERS CLUB mark.

 

2.      Respondent does not have any rights or legitimate interests in the <dinerscreditanytime.com> and <dinerscreditclub.com> domain names.

 

3.      Respondent registered and used the <dinerscreditanytime.com> and <dinerscreditclub.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Diners Club International Ltd., is one of the largest providers of financial services in the world.  Complainant has used the DINERS and DINERS CLUB marks in association with providing credit card services to individuals, small businesses, and large corporations.  Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for its DINERS mark (Reg. No. 1,462,209 issued October 20, 1987), as well as for its DINERS CLUB mark (Reg. No. 828,013 issued April 25, 1965). 

 

Respondent, Robert Spayne, registered the <dinerscreditanytime.com> domain name on June 8, 2006 and the <dinerscreditclub.com> domain name on September 28, 2006.  Respondent uses both disputed domain names to display hyperlinks promoting credit card services offered by Complainant’s competitors.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant’s registrations of the DINERS and DINERS CLUB marks with the USPTO predate Respondent’s registration of the disputed domain names.  Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to Complainant.  Thus, the Panel finds that Complainant has established rights in the DINERS and DINERS CLUB marks pursuant to Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2000) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”).

 

Respondent’s <dinerscreditanytime.com> domain name fully incorporates Complainant’s DINERS mark and adds the descriptive terms “credit” and “anytime.”  Respondent’s <dinerscreditclub.com> domain name fully incorporates Complainant’s DINERS CLUB mark and adds the descriptive term “credit” in between the two words in Complainant’s mark.  With respect to the <dinerscreditanytime.com> domain name, “anytime” is an ordinary descriptive term; in regards to both disputed domain names, the term “credit” is a generic word that describes Complainant’s financial business.  The addition of these terms to Complainant’s registered marks renders the disputed domain names confusingly similar to the marks, and the use of the generic top-level domain “.com” is without significance to this analysis.  Therefore, Respondent’s <dinerscreditanytime.com> and <dinerscreditclub.com> domain names are confusingly similar to Complainant’s DINERS and DINERS CLUB marks, respectively, pursuant to Policy ¶ 4(a)(i).   See 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); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word … nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in either of the <dinerscreditanytime.com> and <dinerscreditclub.com> 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).  Because of the Respondent’s failure to respond to the Complaint, the panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

 

Complainant has alleged that Respondent has never been commonly known by Complainant’s marks or any variations thereof, including the <dinerscreditanytime.com> and <dinerscreditclub.com> domain names.  Complainant correctly asserts that the WHOIS information identifies Respondent as “Robert Spayne” and “Rulator Corp.,” and the Panel finds no other evidence in the record suggesting that Respondent is commonly known by either of the disputed domain names.  Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds that Respondent is not commonly known by the <dinerscreditanytime.com> and <dinerscreditclub.com> domain names.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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").

 

Respondent uses the <dinerscreditanytime.com> and <dinerscreditclub.com> domain names, which are confusingly similar to Complainant’s DINERS and DINERS CLUB marks, respectively, to display hyperlinks promoting credit card services that compete with Complainant.  Such use constitutes neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy 4(c)(iii).  See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain names to promote the services of Complainant’s competitors.  As a result, potential business may be diverted from Complainant to its competitors.  Therefore, the Panel concludes that Respondent’s registration and use of the <dinerscreditanytime.com> and <dinerscreditclub.com> domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iii).  See 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).”); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO 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).

 

Complainant has alleged that Respondent’s use of the <dinerscreditanytime.com> and <dinerscreditclub.com> domain names, which are confusingly similar to Complainant’s DINERS and DINERS CLUB marks, respectively, creates a likelihood of confusion among consumers searching for Complainant’s services.  Specifically, consumers could be confused as to the source, sponsorship, affiliation, or endorsement of the credit card services that are promoted on Respondent’s website.  Respondent is attempting to commercially gain from this likelihood of confusion; therefore, Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).

 

The Panel presumes that Respondent receives click-through fees for diverting Internet users to competitors’ websites that are promoted on Respondent’s website.  Respondent’s attempts to monetarily profit from the use of the disputed domain names constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

 

 

 

 

Accordingly, it is Ordered that the <dinerscreditanytime.com> and <dinerscreditclub.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

                                                                                               

                                                           

                                                                        John J. Upchurch, Panelist

                                                                        Dated:  January 26, 2007