Diners Club International Ltd. v. O P Monga
Claim Number: FA0603000670049
PARTIES
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady and Christopher K. Marlow, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is O P Monga (“Respondent”), 5/2 Starsway Society, Near Hotel Sea Princes, Juhu, Mumbai, Maharashtra 400049, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwdinersclubus.com>,
registered with Lead Networks Domains
Pvt. Ltd.
PANEL
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.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 29, 2006; the National Arbitration Forum received a
hard copy of the Complaint on March 30, 2006.
On April 10, 2006, Lead Networks Domains Pvt. Ltd. confirmed by e-mail
to the National Arbitration Forum that the <wwwdinersclubus.com>
domain name is registered with Lead Networks Domains Pvt. Ltd. and that the
Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is
bound by the Lead Networks Domains Pvt. Ltd. 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 April 12, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 2, 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@wwwdinersclubus.com by e-mail.
A timely Response was received and determined to be complete on May 2,
2006.
On May 5, 2006 the Forum received an Additional Submission from
Complainant. Under The Forum’s
Supplemental Rule # 7 this submission was timely. Respondent did not submit any reply to Complainant’s Additional
Submission.
On May 9, 2006, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Roberto A. Bianchi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In its Complaint Complainant contends the following:
-
The offending
domain name is nearly identical and confusingly similar to the DINERS CLUB
family of marks. The domain name
contains this mark in its entirety, adding only an extra “www” and the
geographic descriptor “US.” Complainant
also owns the <dinersclubus.com> domain name. Respondent’s minor additions and omissions do not distinguish the
disputed domain name from Complainant’s marks.
-
Respondent
lacks rights or legitimate interest in the offending domain. O P Monga has never been commonly known as
“wwwdinersclubus.com,” and has never used any mark similar to the domain name
by which it may have come to be known.
Respondent has never operated any bona fide or legitimate
business under the domain name, and is not making a protected non-commercial or
fair use of the domain name. Respondent
receives click-through fees through the use of the domain name by diverting Internet
users to Complainant’s competitors.
Respondent was aware of Complainant’s marks prior to the registration of
the domain name. Complainant has not
granted Respondent any license of permission to own or use the domain name.
-
Respondent
registered and is using the domain name in bad faith. Respondent knew or should have known Complainant’s marks at all
relevant times. Internet users are
likely to be induced to believe that the domain name connects to websites
associated with or sponsored by Complainant.
B. Respondent
In her response Respondent states the following:
-
She is not
aware of the various trademarks held by Complainant. There is a vast difference in the trademarks of Complainant and
the disputed domain name. “The
complainant cannot make a claim to as it contains other works [sic] which are
there and hence not similar to the domains of the complainant.” People who connect to the website under the
disputed domain are skilled, and they are not confused as to the web sites they
wish to connect to.
-
Respondent has
a legitimate interest in the domain name since she is in the business of
selling domains, and has developed a business around it. Complainant is now trying to grab
Respondent’s business.
-
There is no bad
faith in registering the domain name since Respondent never offered to sell the
domain name to anybody. It has been
held that generating ad revenue from a search engine does not constitute bad
faith.
C. Additional Submissions
In its Additional Submission of May 5, 2006 Complainant contends as
follows:
-
Notwithstanding
Respondent’s denial of Complainant’s rights in the DINERS CLUB mark, the
obvious truth is that Respondent knew precisely about Complainant’s rights and
the identity of corresponding domain names reflecting those marks.
-
Respondent sets
forth no evidence, authority, or arguments to substantiate its claims of rights
or legitimate interests in the domain name.
-
Respondent’s
assertion regarding the alleged sophistication of Internet users is brazen
since her actions are those of a typo-squatter whose business plan depends upon
common typographical mistakes made by Internet users. Respondent’s interest in the domain name is its value as
typographical error in relation to the domain names associated with
Complainant’s marks and websites.
Respondent claims that her activities constitute a legitimate
business. However Respondent’s use of
domain names that are confusingly similar to Complainant’s mark to redirect
Internet to Respondent’s websites is not a use in connection with a bona
fide offering of goods or services, or a legitimate noncommercial or fair
use.
-
Respondent
asserts that because she has not offered to sell the domain name to Complainant
or otherwise demanded money from Complainant that no bad faith is extant. However, a demand for payment alone is not
the only possible bad faith use to which a domain name can be put. Respondent’s use of domain names confusingly
similar to Complainant’s mark to attract Internet users to Respondent’s website
for commercial gain by creating a likelihood of confusion with Complainant’s
mark is evidence of bad faith registration and use.
FINDINGS
Complainant, a leading provider of financial
services including credit card services, is the owner of the mark DINERS CLUB
and of numerous trademark and service mark registrations incorporating the
words DINERS CLUB. U.S. mark DINERS
CLUB (Reg. No. 828,013 registered on April 25, 1967) covers “extension of
credit to customers who purchase at subscribing retail establishments and
making collections of such customers through a central billing system.”
Respondent registered the disputed domain
name on November 4, 2005.
The domain name is confusingly similar to
Complainant’s mark DINERS CLUB.
Complainant made a prima facie case that Respondent lack rights
to or legitimate interests in the domain name, while Respondent merely
contended that she has a legitimate interest in the domain name because she is
in the business of selling domain names.
Although selling domain names may be a legitimate business, it does not
in itself give rights or legitimate interest in a particular domain name. Respondent failed to present the Panel with
any arguments supporting her allegation.
Because Respondent registered the domain name
knowing Complainant’s mark, and is using it to attract Internet users to her
website for commercial gain, the Panel finds that the domain name was
registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
With the submission of registration number 828,013 of April 25, 1967, issued by the U.S.P.T.O. for the DINERS CLUB mark, and the list of DINERS and composite marks registered worldwide (Exhibit “E” to the Complaint), Complainant proved that it has rights in the DINERS CLUB mark, and generally in the DINERS CLUB family of marks, many of which fully incorporate the words DINERS CLUB. Such rights pre-date the registration of the domain name at issue. Respondent contends that there can be no confusion between Complainant’s mark and the disputed domain name because the domain name contains “other works” - presumably meaning “additional words”- apart from the DINERS CLUB mark itself. The <wwwdinersclubus.com> domain name fully incorporates the DINERS CLUB mark, adding the particles “www” (the acronym for World Wide Web), “us” (the acronym for United States of America) and “.com” (the gTLD for commercial entities). None of these additions, or the suppression of the space between the words, is sufficient to distinguish the domain name from the DINERS CLUB famous mark. See Hilton Group Plc v. Grand Slam Co., D2003-0136 (WIPO Apr. 16, 2003) (The domain names <wwwladbrokes.com> and <wwwladbrokescasino.com> were found to be confusingly similar to the trademarks LADBROKES and LADBROKES CASINO of the Complainant); see also Unilever Supply Chain, Inc. v. Kal Kuchora, D2005-1347 (WIPO Feb. 15, 2006) (the addition of “www” and removal of the hyphen are insufficient to distinguish the disputed domain name from the trademark and there is still a clear likelihood of confusion between the two). As to the addition of a geographical descriptor, see Broadcom Corp. v. Myers, FA 100136 (Nat. Arb. Forum Oct. 25, 2001) (the addition of a geographical location like "usa" does not properly distinguish the respondent’s domain name from the complainant’s mark); see also MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom).
Complainant has proved that the domain name
at issue is confusingly similar to a mark in which Complainant has rights.
In denying that Respondent has used or is preparing to use the domain name in connection with a bona fide offering of products or services, or that she is known by the domain name, even if she has acquired no trademark or service mark rights, or that she is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, Complainant has established a prima facie case. This shifts the burden to Respondent to show rights or legitimate interests. See Mattel, Inc. v. Yesbarbie, FA 114754 (Nat Arb. Forum Sept. 12, 2002).
Respondent merely asserts that she has a legitimate interest in the domain name because she “is in the business of selling domains, and has developed a business around it.” While generally speaking selling domain names may become a legitimate business, Respondent’s mere allegation cannot give her any rights or legitimate interests in the domain name at issue, absent any evidence that one of the circumstances of Policy, paragraph 4(b) be present, or that any other circumstance in her favor may apply. Respondent’s use of the domain name at issue with the aim of re-directing Internet users to a website offering services in competition with Complainant is not a use in connection with 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 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); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
Complainant has proved the
second element of the Policy.
In her Response, Respondent asserts that there is no confusion between Complainant’s mark and her domain name. However Respondent does not deny that at the moment of registering the domain name she knew Complainant’s mark. Given that DINERS CLUB is a registered and widely promoted mark in most countries of the world, including India, Respondent knew or should have known such mark, and that she precisely aimed at that mark at the moment of registering the disputed domain name. The Panel believes that Respondent’s intent in registering the domain name was to obtain benefit from typographical errors usually made by Internet users when attempting to connect with an intended web address. See Ameridebt, Inc. v. Polanski, FA 102163 (Nat. Arb. Forum, Dec. 28, 2001) (the obvious similarity between the complainant's mark and the disputed domain name tends to indicate that the respondent's bad faith intent was to prey on Internet users' occasional typographical mistake in order to attract consumers to its own website).
According to a
printout submitted by Complainant, Respondent’s web page under the domain name
at issue was provided free by Sedo’s “domain parking” service. Exhibit G to the Complaint. Numerous links to commercial websites appear
on the web page, featuring goods and services not sponsored by or affiliated
with Complainant. The fact that such
links were provided by Sedo does not excuse Respondent. It was Respondent herself who caused the
links to appear, since she freely decided to “park” the disputed domain name
with Sedo, and to obtain revenue per click.
According to information from Sedo’s website, Sedo provides hosting for
sites and inserts “targeted links” on such sites. Thus the registrants of
domain names can obtain revenues up to US $ 1.50 per click without having to
develop their websites. See
http://www.sedo.com/services/parking.php3?language=us&tracked=1&partnerid=20295&tracked=&dummy2=20295&dummy=es.
In the Panel’s
opinion, after agreeing to Sedo’s “parking” policy and not having “un-parked”
the domain name, Respondent is using the domain name to intentionally attract,
for commercial gain, Internet users to her website or other on-line location
belonging to third parties, by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of her web site or location or of a product or service on her web site or
location. This constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Allen-Edmonds
Shoe Corp. v. joseph FA
624511 (Nat. Arb. Forum Feb. 28, 2006), citing, inter alia, 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); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
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 <wwwdinersclubus.com>
domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: May 22, 2006
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