Diners Club International Ltd. v. Marketing Total S.A.
Claim Number: FA0705000994144
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dinersinternacional.com>, registered with Belgiumdomains, LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 31, 2007.
On May 30, 2007, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <dinersinternacional.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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
31, 2007, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 20, 2007
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@dinersinternacional.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 27, 2007, 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.
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:
Complainant is a worldwide provider of financial services, especially credit card services.
Complainant has offered its services under its DC DINERS CLUB INTERNATIONAL and associated marks continuously for over 30 years.
Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the DC DINERS CLUB INTERNATIONAL mark (Reg. No. 1,127,084, issued November 27, 1979).
Respondent is not authorized or licensed by Complainant to use the DC DINERS CLUB INTERNATIONAL mark in any way.
Respondent registered the <dinersinternacional.com> domain name on April 25, 2007.
Respondent’s domain name resolves to a website featuring links to various third-party websites, many of which are in direct competition with Complainant’s financial and credit card services business.
Respondent’s <dinersinternacional.com> domain name is confusingly similar to Complainant’s DC DINERS CLUB INTERNATIONAL mark.
Respondent does not have any rights or legitimate interests in the domain name <dinersinternacional.com>.
Respondent has registered and uses the disputed <dinersinternacional.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of the DC DINERS CLUB INTERNATIONAL mark with the USPTO sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See Innomed Techs., 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.” See also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002).
Respondent’s <dinersinternacional.com>
domain name is confusingly similar to Complainant’s DC DINERS CLUB
INTERNATIONAL mark. The disputed domain name
simply omits the letters “d” and “c” from the beginning of the mark, omits the
word “club,” and inserts the letter “c” instead of the letter “t” in
“INTERNATIONAL,” which also reflects the Spanish language equivalent of the
word. Previous panels have held, and
this Panel agrees, that the omission of letters and words and common
misspellings of a mark do not negate confusing similarity under Policy ¶ 4(a)(i). Moreover, the
addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s mark
is irrelevant, inasmuch as a gTLD is a required element of all domain names. Thus, we conclude that the <dinersinternacional.com> domain
name is confusingly similar to Complainant’s DC DINERS CLUB INTERNATIONAL mark
pursuant to Policy ¶ 4(a)(i). See Dow
Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1,
2000) (holding that the deliberate introduction of errors or changes, such as
the addition of a fourth “w” or the omission of periods or other such “generic”
typos do not change a respondent’s infringement on a trademark held by a
complainant); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to a
complainant’s ASPREY & GARRARD and MISS ASPREY marks); further see Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the
top level of a domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar to a competing mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <dinersinternacional.com> domain name under Policy ¶ 4(a)(ii). Once Complainant has made out a prima facie case, however, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent has no right or legitimate interest is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest does exist). In the instant case, we are satisfied that Complainant has established a prima facie case.
Respondent’s failure to respond to the Complaint therefore raises the presumption that Respondent lacks rights or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
Nevertheless, the Panel will now examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests under Policy ¶ 4(c).
In this connection, we first note that Respondent’s WHOIS information does not indicate, and there is nothing else in the record to suggest, that Respondent is commonly known by the <dinersinternacional.com> domain name. Furthermore, Respondent does not deny Complainant’s allegation that Respondent is not authorized or licensed by Complainant to use the DC DINERS CLUB INTERNATIONAL mark in any way. Therefore, Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by the mark there in issue and never applied for a license or permission from a complainant to use the trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
We also observe that Respondent does not deny Complainant’s allegation that Respondent’s <dinersinternacional.com> domain name resolves to a website displaying links to third-party websites which are in direct competition with Complainant’s business. We infer that Respondent profits from this website through the accrual of click-through fees. This does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in a disputed domain name where a respondent was using a complainant’s mark to redirect Internet users to a website offering services unrelated to those legitimately offered under a complainant’s mark); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links, some of which linked to that complainant’s competitors, was not a bona fide offering of goods or services).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
We presume that Respondent receives click-through fees when Internet users access the links featured on the website that resolves from Respondent’s domain name. Respondent is therefore capitalizing on the likelihood that users will confuse the disputed domain name as being affiliated with Complainant. This is evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet users seeking a complainant’s site to its own website for commercial gain); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name confusingly similar to a complainant’s mark and used it to host a website offering services similar to those of that complainant).
Furthermore, Respondent has been a respondent in several
previous UDRP decisions in which disputed domain names were transferred from
Respondent to the respective complainants.
See Questar
Corp. v. Mktg. Total S.A., FA 819504 (Nat. Arb. Forum Nov. 21,
2006); see also Hershey Entm’t & Resorts
Co. v. Mktg. Total S.A., FA 888088 (Nat. Arb. Forum Feb. 20, 2007); further
see SR Holdings, Inc. v. Mktg. Total
S.A., FA 915273 (Nat. Arb. Forum Mar. 15, 2007). Under Policy ¶ 4(b)(ii),
this pattern further indicates that Respondent registered and is using the
current disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Abortion Fed’n v. Dom 4
Sale, Inc., FA 170643 (Nat. Arb. Forum
Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because, among
other things, a respondent had several adverse decisions against it in previous
UDRP proceedings, which established a pattern of cybersquatting); see also
Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004)(“[Respondent]
registered the <usgames.com> domain name in order to prevent
[Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain
name [pursuant to Policy ¶ 4(b)(ii)].
The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP
proceedings [against] Respondent.”).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <dinersinternacional.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
July 9, 2007
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