Diners Club International Ltd. v Hanif Saddiq / CRE8
Claim Number: FA1601001656526
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is Hanif Saddiq / CRE8 (“Respondent”), Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dinersclubcard.me>, <dinerscluboffers.me>, <dinersclubuae.me>, <dinersclubvip.me>, <dinersclubme.net>, <dinersclubvip.net>, <dinerscluboffers.net>, <dinersclubuae.info>, and <dinersclubuae.org>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2016; the Forum received payment on January 15, 2016.
On January 14, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dinersclubcard.me>, <dinerscluboffers.me>, <dinersclubuae.me>, <dinersclubvip.me>, <dinersclubme.net>, <dinersclubvip.net>, <dinerscluboffers.net>, <dinersclubuae.info>, and <dinersclubuae.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dinersclubcard.me, postmaster@dinerscluboffers.me, postmaster@dinersclubuae.me, postmaster@dinersclubvip.me, postmaster@dinersclubme.net, postmaster@dinersclubvip.net, postmaster@dinerscluboffers.net, postmaster@dinersclubuae.info, postmaster@dinersclubuae.org. Also on January 15, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant made the following contentions.
Complainant has registered the DINERS CLUB trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 828,013, registered Apr. 25, 1967). The mark is used on or in connection with the offering of financial services, including credit cards, and its promotional services. Respondent’s <dinersclubcard.me>, <dinerscluboffers.me>, <dinersclubuae.me>, <dinersclubvip.me>, <dinersclubme.net>, <dinersclubvip.net>, <dinerscluboffers.net>, <dinersclubuae.info>, and <dinersclubuae.org> domain names are confusingly similar to the DINERS CLUB trademark. Complainant notes that all of the domain names contain the entire mark, along with other alterations that fail to distinguish the domain names from Complainant’s mark, including the addition of generic terms and the elimination of spaces.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate fair use through the disputed domain names. Rather, Respondent has failed to associate any content with any of the domain names.
Respondent is using the disputed domain names in bad faith. Respondent has a pattern of bad faith registration and use as evidenced by a prior UDRP proceeding brought by Complainant against Respondent in which the Panel awarded transfer of the domain name. Further, Respondent’s inactive holding of the domain names further evidences bad faith use and registration under Policy ¶ 4 (a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of offering financial services, including credit cards, and related promotional services.
2. Complainant has registered the DINERS CLUB trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 828,013, registered Apr. 25, 1967).
3. Respondent registered the <dinersclubcard.me>, <dinerscluboffers.me>, <dinersclubuae.me>, <dinersclubvip.me>, <dinersclubme.net>, <dinersclubvip.net>, <dinerscluboffers.net>, <dinersclubuae.info>, and <dinersclubuae.org> domain names on July 9, 2015.
4. Respondent has failed to associate any content with any of the domain names and has engaged in passive holding of the domain names.
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."
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.
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(f), 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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant has registered the DINERS CLUB trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 828,013, registered Apr. 25, 1967). The mark is used on or in connection with the offering of financial services, including credit cards, and its promotional services. The Panel notes that registration of a mark with the USPTO is sufficient to establish rights under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s DINERS CLUB mark. Complainant argues that the <dinersclubcard.me>, <dinerscluboffers.me>, <dinersclubuae.me>, <dinersclubvip.me>, <dinersclubme.net>, <dinersclubvip.net>, <dinerscluboffers.net>, <dinersclubuae.info>, and <dinersclubuae.org> domain names are confusingly similar to the DINERS CLUB trademark. Complainant notes that all of the domain names contain the entire mark, along with other alterations that fail to distinguish any of the domain names from the trademark. Complainant initially notes that each domain name contains an additional word or phrase. Complainant then argues that the addition of these generic terms including “offers,” “card,” and “vip” and the geographic abbreviation “uae” meaning the United Arab Emirates do not distinguish any of the domain names from Complainant’s mark. The other alterations to Complainant’s mark are the elimination of spaces and the addition of generic top-level domains (“gTLD”) “.net,” “.info,” and “.org” or country code top-level domain (“ccTLD”) “.me.” Past panels have found such alterations to be insufficient avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Therefore, the Panel finds that Respondent’s domain names are confusingly similar to the DINERS CLUB mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., 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 UDRP ¶ 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s DINERS CLUB mark and to use it in its domain names, making only alterations that do not distinguish any of the domain names from the trademark;
(b) Respondent registered the disputed domain names on July 9, 2015.
(c) Respondent has failed to associate any content with any of the domain names;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interest in the disputed domain names as Respondent is not commonly known by any of the disputed domain names. The Panel notes that the WHOIS information regarding the disputed domain name lists “Hanif Saddiq” as registrant. See Compl., at Attached Ex. 2. Complainant also notes that it has not granted Respondent any license, permission, or authorization to use the DINERS CLUB mark in domain names. The Panel also notes that Respondent failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel finds that there is no basis to find Respondent commonly known by the disputed domain names. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(f) Complainant further argues that Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the disputed domain names. Rather, Complainant contends that Respondent is passively holding pages, since each website says “website coming soon!” See Compl., at Attached Ex. 4. Past Panels have found the passive holding of domain names not to evidence a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out). The Panel finds that Respondent’s domain names constitute neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has a pattern of domain name misuse as evidenced by a prior UDRP case between Complainant and Respondent that was decided in Complainant’s favor. Six months after the UDRP proceeding was decided, Respondent registered the current nine domain names that include Complainant’s DINERS CLUB mark. Past panels have found past UDRP proceedings and the registration of multiple domain names containing a complainant’s mark to be evidence of a pattern of bad faith registration and use. See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”). The Panel agrees with Complainant and holds that a prior UDRP decision ordering the transfer of domain names and the registration of multiple domain names using the same mark shows a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).
Secondly, Complainant further argues that Respondent’s inactive holding of the domain name web sites evidences bad faith registration and use of the domain names. Past Panels have found failure to make an active use of a domain name to be evidence of bad faith. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). The Panel agrees that Respondent’s inactive holding of the disputed domain names shows bad faith registration and use.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <dinersclubcard.me>,<dinerscluboffers.me>,<dinersclubuae.me>, <dinersclubvip.me>,<dinersclubme.net>,<dinersclubvip.net>, <dinerscluboffers.net>, <dinersclubuae.info> and <dinersclubuae.org> domain names using the DINERS CLUB mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dinersclubcard.me>, <dinerscluboffers.me>, <dinersclubuae.me>, <dinersclubvip.me>, <dinersclubme.net>, <dinersclubvip.net>, <dinerscluboffers.net>, <dinersclubuae.info>, and <dinersclubuae.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 10, 2016
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