national arbitration forum

 

DECISION

 

Diners Club International Ltd. v. John Henry Carlson

Claim Number: FA0711001105823

 

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 John Henry Carlson (“Respondent”), PO Box 1186, Ceres, CA 95307.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <dinnercardclub.net> and <dinnercardclub.biz>, registered with GoDaddy.com, 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.

 

Honorable Paul A. Dorf, (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 2, 2007.

 

On November 2, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dinnercardclub.net> and <dinnercardclub.biz> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 November 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 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@dinnercardclub.net and postmaster@dinnercardclub.biz by e-mail.

 

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

 

On December 5, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf, (Ret.) as Panelist.

 

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 <dinnercardclub.net> and <dinnercardclub.biz> domain names are confusingly similar to Complainant’s DINERS CLUB mark.

 

2.      Respondent does not have any rights or legitimate interests in the <dinnercardclub.net> and <dinnercardclub.biz> domain names.

 

3.      Respondent registered and used the <dinnercardclub.net> and <dinnercardclub.biz> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Diners Club International Ltd., is a leading provider of financial services to individuals, small businesses, and large corporations throughout the world.  Among other services, Complainant issues credit cards that are accepted at over 7.6 million locations worldwide.  Complainant has offered its services under the DINERS CLUB mark for more than forty years and currently holds a trademark registration for the DINERS CLUB mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 828,013 issued April 25, 1967).

 

Respondent registered the <dinnercardclub.net> and <dinnercardclub.biz> domain names on September 2, 2007.  Respondent’s disputed domain names both resolve to websites featuring links to various third-party websites, some of which offer financial services in direct competition with Complainant.

 

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 asserts rights in the DINERS CLUB mark by virtue of its registration of the mark with the USPTO.  The Panel finds that this registration sufficiently establishes Complainant’s rights in the mark pursuant to 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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

 

Complainant contends that Respondent’s <dinnercardclub.net> and <dinnercardclub.biz> domain names are confusingly similar to Complainant’s DINERS CLUB mark, and the Panel agrees.  The disputed domain names merely add an extra letter “n” and omit the letter “s” in the word “diners,” and also insert the generic term “card” into the mark, which is descriptive of Complainant’s credit card services.  Previous UDRP panels have found, and this Panel so finds, that neither the addition nor deletion of letters in a mark, nor the addition of descriptive terms to a mark, render a disputed domain name distinct from a corresponding mark.  Moreover, Respondent’s addition of the generic top-level domains “.net” and “.biz” to the disputed domain names is irrelevant for the purposes of Policy ¶ 4(a)(i), as top-level domains are required of all domain names.  Thus, the Panel concludes that the <dinnercardclub.net> and <dinnercardclub.biz> domain names are confusingly similar to Complainant’s DINERS CLUB mark pursuant to Policy ¶ 4(a)(i).  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

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

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), once Complainant makes a prima facie case to show that Respondent lacks rights and legitimate interests in the disputed domain names, the burden shifts to Respondent to show that it does have rights and legitimate interests.  The Panel finds that, in the instant case, Complainant has established a prima facie case under the Policy.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the 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 certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

Based on Respondent’s failure to answer the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the disputed domain names.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”).  Nevertheless, the Panel will now examine the record to determine if Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).

 

Respondent’s WHOIS information, which indicates that Respondent is “John Henry Carlson,” does not indicate that Respondent is commonly known by the <dinnercardclub.net> and <dinnercardclub.biz> domain names, nor is there any other evidence in the record to support this assertion.  In addition, Complainant has never authorized or licensed Respondent to use its DINERS CLUB mark for any purpose.  Therefore, the Panel finds that Respondent is not commonly known by the <dinnercardclub.net> and <dinnercardclub.biz> domain names, and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Furthermore, Respondent’s disputed domain names both resolve to websites featuring links to third-party websites, some of which offer financial services in direct competition with Complainant.  The Panel presumes that Respondent profits from these websites through the accrual of click-through fees.  Such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), and further indicates Respondent’s lack of rights and legitimate interests in the <dinnercardclub.net> and <dinnercardclub.biz> domain names pursuant to Policy ¶ 4(a)(ii).  See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

 

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

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent registered and is using the <dinnercardclub.net> and <dinnercardclub.biz> domain names in bad faith pursuant to Policy ¶ 4(a)(iii), and the Panel agrees.  First, as Respondent’s disputed domain names resolve to websites featuring links in competition with Complainant, the Panel finds that this constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

In addition, the Panel presumes that Respondent benefits commercially when Internet users click on the links featured on the websites that resolve from the <dinnercardclub.net> and <dinnercardclub.biz> domain names.  Respondent is thus capitalizing on the likelihood that Internet users, presumably seeking Complainant’s business, will be confused as to Complainant’s affiliation with the disputed domain names.  The Panel finds that this is further evidence of Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iv).  See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

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 <dinnercardclub.net> and <dinnercardclub.biz> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf, (Ret.), Panelist

Dated:  December 17, 2007

 

 

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