Diners Club International Ltd. v. Paul Hughes / Business Diners Club
Claim Number: FA1609001695666
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Paul Hughes / Business Diners Club (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <businessdinersclub.com>, registered with WEBFUSION LIMITED.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 27, 2016; the Forum received payment on September 28, 2016.
On September 28, 2016, WEBFUSION LIMITED confirmed by e-mail to the Forum that the <businessdinersclub.com> domain name is registered with WEBFUSION LIMITED and that Respondent is the current registrant of the name. WEBFUSION LIMITED has verified that Respondent is bound by the WEBFUSION LIMITED 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 September 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@businessdinersclub.com. Also on September 28, 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.
A timely Response was received and determined to be complete on October 18, 2016.
Complainant’s Additional Submission was received on October 24, 2016 and determined to be in compliance with Forum’s Supplemental Rule 7 on October 25, 2016.
On October 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <businessdinersclub.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <businessdinersclub.com> domain name.
3. Respondent registered and uses the <businessdinersclub.com> domain name in bad faith.
B. Respondent
1. Complainant’s rights in the DINERS CLUB mark are only for credit services.
2. Respondent has plans to make a legitimate use of the <businessdinersclub.com> domain name.
3. Respondent did not register and use the <businessdinersclub.com> domain name in bad faith because he is not responsible for the current use of the disputed domain name.
C. Complainant’s Additional Submission
1. Respondent has not offered any reliable evidence of future plans to use the <businessdinersclub.com> domain name legitimately.
2. Respondent continues to allow the competing use of the <businessdinersclub.com> domain name in bad faith.
Complainant registered the DINERS CLUB mark with the United States Patent and Trademark Office (“USPTO”) in 1967 (Reg. No. 828,013) as well as the United Kingdom Intellectual Property Office (“UKIPO”) in 1973 (Reg. No. B1014220).
Respondent registered the <businessdinersclub.com> domain name on February 16, 2016, and uses it to resolve to pay-per-clink links to competitors of 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."
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 holds registrations for its DINERS CLUB mark with both the USPTO and the UKIPO, establishing rights in the mark for purposes of Policy ¶ 4(a)(i). See Citigroup Inc. v. Kevin Goodman, FA 1623939 (Forum July 11, 2015) (holding, “Complainant’s ownership of UKIPO trademark registrations for the CITI trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Respondent’s <businessdinersclub.com> domain name simply adds the generic term “business,” and the gTLD “.com” to Complainant’s mark. The addition of generic terms and “.com” do not distinguish the disputed domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel finds that Respondent’s <businessdinersclub.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 (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.”).
Complainant argues that Respondent lacks rights or legitimate interests in the <businessdinersclub.com> domain name. Complainant points out that the WHOIS information lists “Paul Hughes” as the registrant of record for the disputed domain name, and that Respondent does not claim to be commonly known by the <businessdinersclub.com>domain name. The Panel finds that Respondent is not commonly known by <businessdinersclub.com>. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant demonstrates that Respondent uses the <businessdinersclub.com> domain name in connection with a web site containing pay-per-click advertisements that link to competitors of Complainant. Despite Respondent’s claim that he did not personally place the ads at his domain name, this use is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Therefore, the Panel finds that Respondent has not made a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The unsworn, unsigned statement of a third party regarding possible future uses of the disputed domain name was unconvincing. See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Forum Nov. 7, 2000) (holding that the respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant urges that Respondent registered and is using the <businessdinersclub.com> domain name in bad faith by diverting Internet users to competing pay-per-click hyperlinks, and did not change the competing hyperlinks after notice of this dispute was given to him. This disrupts Complainant’s business and is an indication of bad faith. See H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
While Respondent argues that it had no control over the hyperlinks, Complainant counters that the registrant is ultimately responsible for the content associated with the domain name. The Panel agrees and finds bad faith under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).
Complainant also argues that Respondent registered and used the <businessdinersclub.com> domain name with actual knowledge because of the fame and longstanding use associated with the DINERS CLUB mark, and due to Respondent’s competitive use of <businessdinersclub.com>. The Panel notes that Respondent admits that he had “heard the ‘Diners Club’ name before.” Respondent could have chosen other words for a domain name that did not include a well-known mark, if there were in fact plans for a legitimate business. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the DINERS CLUB mark when it registered the <businessdinersclub.com> domain name, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum, Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”).
The Panel finds 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 <businessdinersclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 30, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page