Diners Club International Ltd. v. Sinclare Vabalon, BHG
Claim Number: FA0805001183206
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dinersclb.com>, registered with Basic Fusion, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 2, 2008.
On May 7, 2008, Basic Fusion, Inc. confirmed by e-mail to the National Arbitration Forum that the <dinersclb.com> domain name is registered with Basic Fusion, Inc. and that Respondent is the current registrant of the name. Basic Fusion, Inc. has verified that Respondent is bound by the Basic Fusion, Inc. 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").
7, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 27, 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.
On June 2, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
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 <dinersclb.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <dinersclb.com> domain name.
3. Respondent registered and used the <dinersclb.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a provider of financial services, including credit card services, to individuals, small businesses, and large corporations. Complainant registered the DINERS CLUB mark with the United States Patent and Trademark Office (“USPTO”) on April 25, 1967 (Reg. No. 828, 013). The credit cards issued by Complainant are accepted in over 200 countries and at over 7.6 million locations around the world.
Responded registered the <dinersclb.com> domain name on April 1, 2008. The disputed domain name resolves to a website that features links to third-party websites offering the financial services of Complainant’s competitors.
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.
The Panel finds that Complainant has established rights in the DINERS CLUB mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
Complainant contends that Respondent’s <dinersclb.com> domain name is confusingly similar to its DINERS CLUB mark. The <dinersclb.com> domain name differs from Complainant’s mark in three ways: (1) the space between the words has been removed; (2) the letter “U” has been removed from the term “club”; and (3) the generic top-level domain (“gTLD”) “.com” has been added. The deliberate introduction of a generic typo, such as removal of just one letter, does not sufficiently distinguish a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i), nor does the removal of the space between words. The addition of a gTLD also does not reduce the likelihood of confusion between the domain name and the mark, because every domain name must contain a gTLD. Therefore, the Panel finds that these changes do not minimize or eliminate the resulting likelihood of confusion, and so Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <dinersclb.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
Complainant contends that Respondent is not commonly known by the <dinersclb.com> domain name nor has it ever been the owner or licensee of the DINERS CLUB mark. The WHOIS record for the disputed domain name lists Respondent as “Sinclare Vabalon, BHG.” This evidence, along with the fact that Respondent has failed to show any evidence contrary to Complainant’s contentions, compels the Panel to find that Respondent is not commonly known as <dinersclb.com> pursuant to Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that the respondent was not “commonly known by” the name “girls gon wild” or <girlsgonwild.com>).
Respondent maintains a website at the <dinersclb.com> domain name that features links to websites offering the financial services of Complainant’s competitors. The Panel finds that this use of the <dinersclb.com> domain name 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain name to divert Internet customers from Complainant’s website to
Respondent’s website that resolves from the disputed domain name, through the
confusion caused by the similarity between the DINERS CLUB mark and the <dinersclb.com>
domain name. Complainant also contends
that Respondent intended to disrupt Complainant’s business by diverting
confused customers to Complainant’s competitors. The Panel finds that Respondent’s use of the
disputed domain name disrupts Complainant’s business, and is evidence of
registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is gaining commercially through this diversion, both through click-through fees and through the competing services that Respondent is offering. The Panel finds that this is an intentional use of the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use in bad faith. See 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.’”); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
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 <dinersclb.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 5, 2008
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