Diners Club International Ltd. v. Keyword Marketing, Inc.
Claim Number: FA0803001160158
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dinerscreditcard.com>, registered with Belgiumdomains, LLC.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dinerscreditcard.com> domain name is confusingly similar to Complainant’s DINERS mark.
2. Respondent does not have any rights or legitimate interests in the <dinerscreditcard.com> domain name.
3. Respondent registered and used the <dinerscreditcard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club International Ltd., provides
financial services, including credit card services; credit card user loyalty
programs; and assistance to travelers in the form of medical and legal
referrals, recovery or replacement of lost or stolen travel documents, travelers’
checks and credit cards. These services
are marketed under the DINERS mark.
Complainant registered the DINERS mark with the United States Patent and
Trademark Office (“USPTO”) on
Respondent registered the <dinerscreditcard.com>
domain name 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.
By registering the DINERS mark with the USPTO, Complainant has established rights to the mark under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); 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 <dinerscreditcard.com> domain name is confusingly similar to Complainant’s DINERS mark because it incorporates the entire mark and adds the generics term “credit” and “card.” Previous panels have held that the addition of generic terms does not sufficiently distinguish the disputed domain from the complainant’s mark under Policy ¶ 4(a)(i). Thus, Respondent’s addition of the generic terms “credit” and “card” does not distinguish the disputed domain name from the DINERS mark. Moreover, because all domain names are required to have a top-level domain, the inclusion of the generic top-level domain (“gTLD”) “.com” is irrelevant for the purposes of determining confusing similarity. Therefore, the Panel finds that the <dinerscreditcard.com> domain name is confusingly similar to Complainant’s DINERS mark under 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), the complainant has the initial
burden of showing that the respondent lacks all rights and legitimate interests
in the disputed domain name, thus establishing a prima facie case.
Complainant has asserted that Respondent has neither rights nor
legitimate interests in the <dinerscreditcard.com>
domain name. The Panel concludes that
Complainant has made a prima facie
case under Policy ¶ 4(a)(ii). In Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Based on Respondent’s failure to respond to the Complaint,
the Panel may presume that Respondent lacks all rights and legitimate interests
in the disputed domain name. The panel
in American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
The WHOIS information indicates that the registrant of the
disputed domain name is “Keyword Marketing, Inc.” This information does not suggest that
Respondent is commonly known by the disputed domain name. Moreover, Complainant asserts that it has not
granted Respondent any license, authorization, or permission to use the DINERS
mark. The Panel, therefore, concludes
that Respondent is not commonly known by the disputed domain name under Policy
¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent is using the disputed domain name to advertise
links to financial services websites in competition with the services provided
by Complainant. In 24 Hour Fitness
USA, Inc. v. 24HourNames.com-Quality Domains For
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
By using the <dinerscreditcard.com> domain name to advertise financial services in competition with Complainant’s business, Respondent is benefiting from the goodwill associated with the DINERS mark. Furthermore, Respondent’s use of the disputed domain name is capable of creating confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name. The Panel finds that Respondent’s commercial use of the disputed domain name is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); 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.’”).
Moreover, because Respondent is
using the disputed domain name to advertise links to websites that offer
competing financial services, there is evidence that Respondent’s use of the
disputed domain name is disruptive to Complainant’s business. The Panel concludes that such use is evidence
of registration and use in bad faith under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA
198805 (Nat. Arb. Forum
In addition, Respondent has been
the respondent in several other UDRP decisions, in which panels order the
transfer of the disputed domain names. See SkinMedica, Inc. v. Keyword Mktg., Inc.,
FA 1112121 (Nat. Arb. Forum
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 <dinerscreditcard.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 16, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum