Diners Club International Ltd. v. Kahir Abdul
Claim Number: FA0803001163635
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 <mkdinersclub.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.
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 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 7, 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 <mkdinersclub.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <mkdinersclub.com> domain name.
3. Respondent registered and used the <mkdinersclub.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diner’s Club International Ltd., a provider of financial services to individuals and businesses, currently has over 8 million individual cardholders around the world. Complainant operates under numerous marks, including the DINERS CLUB (Reg. No. 828,013 issued April 25, 1967), DINERS CLUB INTERNATIONAL (Reg. No. 1,127,054 issued November 27, 1979), and DINERS (Reg. No. 1,462,209 issued October 20, 1987) marks; all registered with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <mkdinersclub.com> domain name November 1, 2007, and is currently using the disputed domain name to resolve to a website advertising various goods and services, including financial and insurance services in competition with Complainant’s products.
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 alleges right the DINERS CLUB mark based on its
USPTO trademark registration. Under the
Policy, registration of a mark with an appropriate government authority, such
as the USPTO, confers rights in the mark to a complainant. Therefore, the Panel concludes Complainant
has successfully established rights to the DINERS CLUB mark for purposes of
Policy ¶ 4(a)(i).
See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Complainant also alleges Respondent’s <mkdinersclub.com> domain name is confusingly similar to
Complainant’s DINERS CLUB mark. The
disputed domain name contains Complainant’s mark in its entirety but removes
the space between words, adds the letters “mk” to the beginning of
Complainant’s mark, and adds the generic top-level domain name (“gLTD”) “.com.” The Panel finds neither the addition of a
gLTD or spacing between words distinguish a domain
name from complainant’s mark. Further,
the minor alteration of Complainant’s mark by the addition of “mk” does not
negate the confusingly similar character of Respondent’s domain name with
Complainant’s mark. Therefore, the Panel
finds that Respondent’s <mkdinersclub.com>
domain name is confusingly similar to Complainant’s DINERS CLUB mark pursuant
to Policy ¶ 4(a)(i).
See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to the complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also 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 Nintendo of Am., Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or
legitimate interests in the <mkdinersclub.com>
domain name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to show it does have rights or
legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant has
established a prima facie case. Due to Respondent’s failure to respond to the
Complaint, the Panel may assume Respondent does not have rights or legitimate
interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
In addition, Complainant alleges
Respondent is not commonly known by the <mkdinersclub.com>
domain name. Based on the WHOIS
information, Respondent is identified as “Kahir
Abdul.” The Panel finds no other
evidence in the record suggesting Respondent is known by the disputed domain
name. Therefore, the Panel concludes
that Respondent lacks rights or legitimate interests in the <mkdinersclub.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Complainant also alleges Respondent lacks rights and
legitimate interests in the disputed domain name because Respondent does not
show a bona fide offering of goods
and services, or a legitimate noncommercial or fair use of the <mkdinersclub.com> domain
name. Because Respondent is using the
disputed domain name to direct Internet users to a website promoting
Complainant’s competitors, the Panel assumes Respondent is earning
click-through fees for each redirected Internet user. Therefore, the Panel concludes Respondent’s
use of the <mkdinersclub.com>
domain name is not in connection with 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 24 Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As previously stated, Respondent is using the <mkdinersclub.com> domain name to redirect Internet users to a website that displays links to Complainant’s competitors. This use of the disputed domain name likely disrupts Complainant’s business by diverting potential customers to websites of Complainant’s competitors, which is in violation of Policy ¶ 4(b)(iii). See 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)); see also Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where the respondent, a company financially linked to the complainant’s main competitor, registered and used the domain name in question to disrupt the complainant’s business).
Additionally, the Panel presumes that Respondent is earning referral fees from advertisers because Respondent’s use of the <mkdinersclub.com> name features links to Complainant’s competitors. Respondent is also using Complainant’s entire DINERS CLUB mark within its domain name, creating a likelihood of confusion as to the affiliation and endorsement of the <mkdinersclub.com> domain name and corresponding websites. The Panel concludes that Respondent has engaged in bad faith use and registration of the <mkdinersclub.com> domain name pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); 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.’”).
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 <mkdinersclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 25, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum