Diners Club International Ltd. v. Justin Zwick
Claim Number: FA0801001140649
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul
D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Justin Zwick (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ocdinerscard.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 28, 2008; the National Arbitration Forum received a hard copy of the Complaint January 29, 2008.
On January 28, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ocdinerscard.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 1, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 21, 2008, 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@ocdinerscard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 27, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <ocdinerscard.com>, is confusingly similar to Complainant’s DINERS mark.
2. Respondent has no rights to or legitimate interests in the <ocdinerscard.com> domain name.
3. Respondent registered and used the <ocdinerscard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club International Ltd., provides financial services to individuals and businesses. These financial services include, but are not limited to, credit card services. Complainant holds a registration for its DINERS mark with the United States Patent and Trademark Office (“USPTO”) on October 20, 1987 (Reg. No. 1,462,209).
Respondent registered the <ocdinerscard.com> domain name August 19, 2007. The disputed domain name resolves to a page containing links to third-party websites offering various goods and services. Most of these links contain language offering discounts for Internet users who possess a “Local Value Card.”
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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’s DINERS mark is registered with the USPTO. The Panel finds this registration is adequate
to establish Complainant’s right in the DINERS mark pursuant to Policy ¶ 4(a)(i). See 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."); see also
The Panel finds Respondent’s <ocdinerscard.com> domain name is confusingly similar to Complainant’s DINERS mark because it merely adds the geographical abbreviation “oc,” a common designation for Orange County, California and the descriptive term “card” to Complainant’s mark. In addition, the addition of the generic top-level domain (“gTLD”) “.com” is not relevant when considering whether a disputed domain name is confusingly similar to Complainant’s mark. See 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); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); 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 Complainant satisfied Policy ¶ 4(a)(i).
Complainant alleged that Respondent has no rights to or legitimate interests in the <ocdinerscard.com> domain name. Once Complainant has presented a prima facie case in support of its allegations, the burden shifts to Respondent to establish it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant established a prima facie case to support its allegations. The Respondent failed to submit a response to the proceedings. Therefore, the Panel may assume that Respondent does not have rights to or legitimate interests in the dispute domain name.
This Panel, however, examines the record to determine whether evidence before the Panel suggests that Respondent has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also 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 is 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.”).
Respondent’s <ocdinerscard.com>
domain name resolves to a website that displays links to third-party websites
that offer discounts on goods and services to Internet users who possess a
credit card that directly competes with Complainant. The Panel finds this use constitutes
diversion and is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), and it is not a noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Golden
Bear Int’l, Inc. v. Kangdeock-ho, FA
190644 (Nat. Arb. Forum Oct. 17, 2003)
(“Respondent's use of a domain name confusingly similar to Complainant’s mark
to divert Internet users to websites unrelated to Complainant's business does
not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii).”); see also DLJ Long
Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr.
9, 2002) (“Respondent is not using the disputed domain name in connection with
a bona fide offering of goods and services because Respondent is using the
domain name to divert Internet users to <visual.com>, where services that
compete with Complainant are advertised.”).
Additionally, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(ii) because Respondent is not commonly known by the <ocdinerscard.com> domain name. The WHOIS information indicates Respondent is known by the name “Justin Zwick.” Nothing in the record indicates Respondent is known by the disputed domain name or that Respondent has been authorized by Complainant to use the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); 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).
The Panel finds Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is using the disputed domain name to display links for websites that offer discounts to Internet users in possession of a credit card that directly competes with Complainant. The Panel finds this use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also 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).
Additionally, Respondent’s disputed domain name resolves to a
website providing links to third-party websites which offer discounts on their
goods and services to Internet users who possess a credit card that directly
competes with Complainant’s. Respondent
presumably receives click-through fees for displaying these links. The Panel finds this is an attempt by
Respondent to profit from the goodwill associated with Complainant’s DINERS
mark and constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that
Complainant 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 <ocdinerscard.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 11. 2008.
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