Diners Club International Ltd. v. David Moore
Claim Number: FA0803001169319
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 <dinersdirect.info>, registered with Godaddy.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 24, 2008.
On March 24, 2008, Godaddy.com confirmed by e-mail to the National Arbitration Forum that the <dinersdirect.info> domain name is registered with Godaddy.com and that Respondent is the current registrant of the name. Godaddy.com has verified that Respondent is bound by the Godaddy.com 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 March 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 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@dinersdirect.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 23, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant, 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 service mark DINERS, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,462,209, issued October 20, 1987).
Respondent registered the <dinersdirect.info> domain name August 30, 2007 and is currently using the disputed domain name to resolve to a website advertising various good and services, including financial and insurance services in direct competition with Complainant’s services.
Respondent’s <dinersdirect.info> domain name is confusingly similar to Complainant’s DINERS mark.
Respondent is not commonly known by the <dinersdirect.info> domain name.
Respondent lacks rights to and legitimate interests in the disputed domain name because Respondent is not engaged in a bona fide offering of goods and services or a legitimate noncommercial or fair use of the <dinersdirect.info> domain name.
Respondent does not have any rights to or legitimate interests in the <dinersdirect.info> domain name.
Respondent registered and uses the <dinersdirect.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant alleges rights to the DINERS mark based on its USPTO service mark 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, Complainant has successfully established rights to the DINERS mark for purposes 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.”
Complainant also alleges that Respondent’s <dinersdirect.info> domain name is confusingly
similar to Complainant’s DINERS mark. We
agree, in that the disputed domain name contains Complainant’s mark in its
entirety, and merely adds the generic word “direct” and the generic top-level
domain name (“gTLD”) “.info.”
See State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb. Forum Apr. 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to a complainant’s registered mark); see also Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term “direct” to a complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by that complainant, so that a respondent’s domain names are confusingly similar).
Likewise, the addition of the gTLD (“.info”) is irrelevant in distinguishing the disputed domain name from Complainant’s mark. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It
has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.
The Panel therefore finds that Respondent’s <dinersdirect.info> domain name is confusingly similar to Complainant’s DINERS mark so that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights to and legitimate interests in the <dinersdirect.info> domain name. Once Complainant establishes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights to or legitimate interests in its domain under Policy ¶ 4(a)(ii). Complainant has established such a prima facie case. And, because Respondent has failed to respond to the Complaint, we may presume that Respodent does not have rights to or legitimate interests in the disputed domain name. 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent fails to respond); further see Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondents’ failure to respond can be construed as an admission that it has no legitimate interest in its domain names).
However, we will nonetheless examine the record to determine if there is any basis for concluding that Respondent has such rights or interests pursuant to Policy ¶ 4(c).
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <dinersdirect.info> domain name. Indeed the pertinent WHOIS information identifies Respondent as “David Moore,” and no other information is provided suggesting that Respondent may be commonly known by the disputed domain name. Therefore, we conclude that Respondent lacks rights to and legitimate interests in the <dinersdirect.info> domain name pursuant to Policy ¶ (c)(ii). See, for example, Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”
Complainant also alleges, and Respondent does not deny, that
Respondent lacks rights to 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 <dinersdirect.info> domain
name. Because there is no dispute that Respondent
is using the disputed domain name to direct Internet users to a website
promoting Complainant’s competitors, we may presume that Respondent receives
click-through fees for each redirected Internet user. Therefore, we conclude that Respondent’s use
of the <dinersdirect.info> 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 Or. State Bar v. A Special Day, Inc.,
FA 99657 (Nat. Arb. Forum Dec. 4, 2001): “Respondent's advertising of legal
services and sale of law-related books under Complainant's name is not a bona
fide offering of goods and services because Respondent is using a mark
confusingly similar to the Complainant's to sell competing goods.” See also Glaxo Group Ltd. v. WWW Zban,
FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not
using a domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because
that respondent used the domain name to take advantage of a complainant's mark
by diverting Internet users to a competing commercial site). Further see 24 Hour Fitness
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that Respondent is using the <dinersdirect.info> domain name to display links to Complainant’s competitors, and that we presume that Respondent receives click-through fees for each redirected Internet user and is therefore attempting to gain commercially and profit illicitly from the goodwill associated with Complainant’s DINERS mark. We therefore conclude that Respondent has registered and is using the <dinersdirect.info> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent’s use of the <saflock.com> domain name to offer goods competing with a complainant’s business illustrates that respondent’s bad faith registration and use of the domain name, within the meaning of Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where a respondent used a domain name, for commercial gain, to attract Internet users to a direct competitor of a complainant).
In addition, it appears that Respondent registered the <dinersdirect.info> domain name with at least constructive knowledge of
Complainant’s rights in the DINERS service mark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <dinersdirect.info> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 29, 2008
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