Diners Club International Ltd v.
Claim Number: FA0711001106503
Complainant is Diners Club International Ltd (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <dinershelp.com>, <dinerservices.com>, <dinersservice.com>, <dinersservice.info>, <dinersservice.mobi>, <dinerassist.com>, <dinerassistance.com>, <dinerbusiness.com>, <dinerdis.mobi>, <dinerhelp.com>, <dinersassistance.com> and <dinersbusiness.com>, registered with Godaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 6, 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@dinershelp.com, postmaster@dinerservices.com, postmaster@dinersservice.com, postmaster@dinersservice.info, postmaster@dinersservice.mobi, postmaster@dinerassist.com, postmaster@dinerassistance.com, postmaster@dinerbusiness.com, postmaster@dinerdis.mobi, postmaster@dinerhelp.com, postmaster@dinersassistance.com and postmaster@dinersbusiness.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dinershelp.com>, <dinerservices.com>, <dinersservice.com>, <dinersservice.info>, <dinersservice.mobi>, <dinerassist.com>, <dinerassistance.com>, <dinerbusiness.com>, <dinerdis.mobi>, <dinerhelp.com>, <dinersassistance.com> and <dinersbusiness.com> domain names are confusingly similar to Complainant’s DINERS mark.
2. Respondent does not have any rights or legitimate interests in the <dinershelp.com>, <dinerservices.com>, <dinersservice.com>, <dinersservice.info>, <dinersservice.mobi>, <dinerassist.com>, <dinerassistance.com>, <dinerbusiness.com>, <dinerdis.mobi>, <dinerhelp.com>, <dinersassistance.com> and <dinersbusiness.com> domain names.
3. Respondent registered and used the <dinershelp.com>, <dinerservices.com>, <dinersservice.com>, <dinersservice.info>, <dinersservice.mobi>, <dinerassist.com>, <dinerassistance.com>, <dinerbusiness.com>, <dinerdis.mobi>, <dinerhelp.com>, <dinersassistance.com> and <dinersbusiness.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club International Ltd, is a leading provider of financial services, including credit card services. Complainant provides services for individuals as well as small and large businesses, and its credit cards are accepted in over 200 countries. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for various marks used in connection with its business, including for the DINERS mark (Reg. No. 1,462,209 issued October 20, 1987).
Respondent registered the <dinershelp.com>, <dinerservices.com>, <dinersservice.com>,
<dinersservice.mobi>, <dinerassist.com>, <dinerassistance.com>,
<dinerbusiness.com>, <dinerhelp.com>, <dinersassistance.com>
and <dinersbusiness.com> domain names on
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.
Complainant has registered its DINERS mark with the USPTO,
and thus has established rights in the mark sufficient to satisfy the
requirements of Policy ¶ 4(a)(i). See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb.
Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive.").
The Panel finds that the <dinershelp.com>, <dinerservices.com>,
<dinersservice.com>, <dinersservice.info>, <dinersservice.mobi>,
<dinerassist.com>, <dinerassistance.com>, <dinerbusiness.com>,
<dinerhelp.com>, <dinersassistance.com> and <dinersbusiness.com>
domain names are confusingly similar to Complainant’s DINERS mark as
each of the disputed domain names contain Complainant’s mark, either in its
entirety or with the omission of the letter “s” from the end of the mark, and a
generic term that has an obvious relationship to Complainant’s business, as
well as a generic top-level domain (“gTLD”).
Such modifications are not adequate to distinguish any of the disputed
domain names from Complainant’s mark under the requirements of Policy ¶
4(a)(i). See 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 Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that
deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did
not change the overall impression of the mark and thus made the disputed domain
name confusingly similar to it); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
Additionally, the <dinerdis.mobi> domain name is
confusingly similar to Complainant’s DINERS mark as it takes Complainant’s mark
and adds the letters “d” and “i” in-between letters of Complainant’s mark, as
well as adding a gTLD. The Panel finds
that the disputed domain name remains confusingly similar to Complainant’s mark
under Policy ¶ 4(a)(i) despite these modifications. See Kelson Physician Partners, Inc. v. Mason,
CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or
confusingly similar to the complainant’s federally registered service mark,
KELSON); see also Starkey v. Bradley, FA
874575 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant is required to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant has made such a showing, then, under Policy ¶ 4(a)(ii), the burden of proof shifts to Respondent to set forth evidence demonstrating that it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has adequately established its case, and, despite Respondent’s failure to respond to the Complaint, the Panel will examine all the evidence in the record under Policy ¶ 4(c), although it is not required to do so. 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 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.”).
An examination of the evidence in the record indicates that Respondent is neither commonly known by any of the disputed domain names, nor authorized by Complainant to use its DINERS mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under the requirements of Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent is using the disputed domain names to display websites that host a variety of third-party hyperlinks, some of which compete with Complainant’s business, presumably for Respondent’s own commercial benefit through the accrual of click-through fees. The Panel finds that such use of the <dinershelp.com>, <dinerservices.com>, <dinersservice.com>, <dinersservice.info>, <dinersservice.mobi>, <dinerassist.com>, <dinerassistance.com>, <dinerbusiness.com>, <dinerdis.mobi>, <dinerhelp.com>, <dinersassistance.com> and <dinersbusiness.com> domain names 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). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain names to display websites that host hyperlinks to various third-party websites, some of which are in direct competition with Complainant, constitute a disruption of Complainant’s business and indicate bad faith registration and use under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); 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)).
Moreover, Respondent is presumably attempting to
commercially benefit from Internet users who become confused as to
Complainant’s source, sponsorship, affiliation or endorsement of the disputed
domain names and resulting websites. The
Panel accordingly finds bad faith registration and use under Policy ¶
4(b)(iv). See TM Acquisition
Corp. v. Warren, FA 204147 (Nat. Arb.
Forum Dec. 8, 2003) (“Although Complainant’s principal website is
<century21.com>, many Internet users are likely to use search engines to
find Complainant’s website, only to be mislead to Respondent’s website at the
<century21realty.biz> domain name, which features links for competing real
estate websites. Therefore, it is likely
that Internet users seeking Complainant’s website, but who end up at
Respondent’s website, will be confused as to the source, sponsorship,
affiliation or endorsement of Respondent’s website.”); see also 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).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dinershelp.com>, <dinerservices.com>, <dinersservice.com>, <dinersservice.info>, <dinersservice.mobi>, <dinerassist.com>, <dinerassistance.com>, <dinerbusiness.com>, <dinerdis.mobi>, <dinerhelp.com>, <dinersassistance.com> and <dinersbusiness.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 17, 2007
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