Diners Club International Ltd. v. Self
Claim Number: FA0806001211181
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dinerss.com> and <dinerreward.com> (the “Disputed Domain Names,” in the plural, or the “Disputed Domain Name,” in the singular, as required by context), registered with Intercosmos Media Group, Inc. d/b/a Directnic.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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 20, 2008.
On June 20, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <dinerss.com> and <dinerreward.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that the Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 June 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 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 email@example.com and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 14, 2008.
An Additional Submission was received from Complainant on July 15, 2008 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on July 17, 2008 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On July 29, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.
Complainant requests that the Disputed Domain Names be transferred from Respondent to Complainant.
Complainant is the owner of a number of trademark registrations and
applications in the
The DINERS CLUB FAMILY
represents to the worldwide consuming public the goods and services offered by
Complainant and its licensees.
Complainant has made extensive use of the DINERS CLUB FAMILY by
providing Complainant’s Core Services and an affinity marketing program
Due to the extensive use and registration of the DINERS CLUB FAMILY,
the marks in the DINERS CLUB FAMILY have become famous under the laws of the
Many decades after use of
the DINERS CLUB FAMILY throughout the
Complainant is a leading provider of financial services to individuals, small businesses, and large corporations through many channels of trade, including but not limited to, credit card services. The credit cards issued by Complainant are accepted in over 200 countries and at over 7.6 million locations around the world. Complaint offers to its card holders one of the most acclaimed loyalty rewards programs.
Complainant is a wholly owned subsidiary of Citigroup, a leading global financial services organization. The credit cards issued by Complainant are accepted at 800,000 ATMs and are issued in 64 local currencies. Complainant has over 8 million individual cardholders. Over half of the Fortune 500 companies hold corporate cards issued by Complainant. The principal customers of Complainant include, frequent business travelers, corporations, service establishments, travel managers, state and local governments, travel agents, colleges and universities, and affluent individuals.
Respondent uses the Disputed Domain Names to resolve to websites promoting third-party financial services. Once Complainant brought Respondent’s activities related to <dinerss.com> to light through a formal demand through local counsel, Respondent, for a time, ceased use of the <dinerss.com> domain name in conjunction with the promotion of third-party financial services. However, Respondent has once again resumed such use, presumably believing that Complainant was no longer monitoring Respondent’s activities. In the process of preparing this Complaint, Complainant also became aware of Respondent’s registration and use of <dinerreward.com>, which he is using to promote competing credit card services.
Complainant has not given Respondent any license, permission, or authorization by which Respondent could make any use of any of its marks.
Further, the Disputed Domain Names are confusingly similar to Complainant’s DINERS mark since the difference between the mark and the domain names are minor. In the case of <dinerss.com>: an extra “s.” In the case of <dinerreward.com>, the deletion of an “s” and the inclusion of the industry generic term “reward.”
Respondent lacks rights or legitimate interests in the Disputed Domain Names. Respondent, who refers to itself in the WHOIS database as “self” has never been commonly known by any of Complainant's DINERS, DINERS CLUB or DINERS CLUB INTERNATIONAL marks nor any variations thereof, and has never used any trademark or service mark similar to the Disputed Domain Names by which it may have come to be known, other than the infringing use noted herein.
Respondent has never operated any bona fide or legitimate business under the Disputed Domain Names, and is not making a protected noncommercial or fair use of the Disputed Domain Names. As noted above, Respondent uses the Disputed Domain Names to direct Internet users to websites which consist of pay-per-click advertisements which promote third party financial services. Such a use is not a bona fide offerings of goods or services or a legitimate noncommercial or fair use.
As noted above, the Disputed Domain Names are confusingly similar to Complainant’s marks. In addition, Respondent was undoubtedly aware of the DINERS CLUB FAMILY prior to the registration of the Disputed Domain Names, given the considerable registration and/or use, as set forth in detail above. The content which Respondent has posted or allowed to be posted on the website to which the Disputed Domain Names resolve provides further evidence of Respondent’s knowledge of the DINERS CLUB FAMILY. Because Respondent had notice of Complainant’s trademark rights when registering domain names nearly identical and/or confusingly similar to those marks, Respondent has no rights or legitimate interest in the Offending Domains.
Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks.
Bad Faith Registration. At the time of registration of each of the
Disputed Domain Names, Respondent, a resident of the
Respondent had actual knowledge of Complainant’s marks due to the obvious connection between the additional elements such as “s” and “reward” as well as the content featured on Respondent’s websites which promotes third-party financial services.
Even if Respondent were able to claim lack of knowledge, bad faith can exist when a search of the trademarks registry would reveal the registration rights of a Complainant.
Bad Faith Use. The Disputed Domain Names have been put to use to intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Specifically, Respondent has associated these domain names to a website promoting various goods and services, including third-party financial services.
Further, Respondent’s activities result in Complainant’s inability to reflect its mark in these domain names and Respondent has a history of such activity. Respondent is or was the registrant of the following domain names which contain the well-known marks of others:
Respondent recognizes the relevance and protection of Complainant’s Service and Trademarks and was fully cognizant of these marks at the time of the registration of the two domains. Respondent maintains that the marks of Complainant specifically address the words “Diners Club International” with rights primarily pertaining to financial/credit card services and travel expense management utilizing the aforementioned. The Disputed Domain Names, <dinerss.com> and <dinerrewards.com>, have zero ability to confuse the public with regard to the brand and rights of Complainant’s own website, which is <dinersclub.com>. Instead, they were acquired and are currently under development to address the restaurant, food and dining industries with regard to better informing the public of local restaurant and food service dining options. They have never been utilized nor do we ever plan to deploy websites based on these domains that address any financial services as stated by the Claimant. They are in fact in Phase Two of development at this date meaning their designs are being optimized and serving food and restaurant related ads as part of their Phase Two status. This is customary and by design in our business model.
Respondent respectfully maintains that it has unequivocal rights and legitimate interests in the Disputed Domain Names and has no intention of encroaching on the rights of Complainant. The Disputed Domain Names have always been used by Respondent in connection with a bona fide offering of goods and services that do not encroach on the rights of Complainant. Respondent has always been commonly known by the Disputed Domain Names and indeed in fact provides for e-mail contact information directly to Respondent in the left header of the sites. Respondent has made no effort to misleadingly divert consumers or to tarnish the trademark or service mark of Complainant.
The Disputed Domain Names have not been registered or used in bad faith by Respondent. They have been registered to build an online system serving the restaurant industry and dining public. There have been no specific circumstances whatsoever that indicate that Respondent has acquired the Disputed Domain Names for the purpose of selling, renting or otherwise transferring said domains for a profit to Complainant. Respondent does not recognize Complainant’s claim as to trademark encroachment but to further clarify, Respondent has not registered the domain names to prevent Complainant from purchasing them themselves. Indeed, Complainant had decades to register the aforementioned domain names and made no effort to do so. Respondent has not registered the Disputed Domain Names with the primary purpose of disrupting the business of Complainant, primarily because Respondent is in the food industry, not the financial services industry as Complainant has stated and trademarked. Specifically, there has been zero attempt by Respondent to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
C. Complainant’s Additional Submission
Respondent’s Response fails to refute the allegations in the Complaint. Much of what Respondent states are mere assertions without reference to law or facts, and some of which are clearly ludicrous. For example, Respondent’s claim that he is commonly known as <dinerreward.com> and <dinerss.com>, when his name apparently is “Mark Milburn” is ridiculous on its face. Given the nature of such assertions, most are not addressed in these Additional Submissions. Suffice it to say that Complainant disagrees with any of Respondent’s assertions which are contrary to the claims in the Complaint.
However, Complainant draws the Panel’s attention to a few items of note.
Respondent admits that he was aware of Complainant’s DINERS mark and chose to register the Disputed Domain Names anyway. Respondent’s statement that, in his opinion, Complainant’s rights are limited to the DINERS CLUB INTERNATIONAL mark are inconsistent with reality and U.S. Reg. No. 1462209 for the mark DINERS. Respondent’s admission that he knew of Complainant’s rights is further evidence of bad faith disregard for Complainant’s intellectual property rights.
Respondent attempts to mislead the Panel by stating “[t]hey [the Disputed Domain Names] have never been utilized nor do we ever plan to deploy websites on these domains that address any financial services as stated by Complainant.” This is not correct. Respondent has used <dinerss.com> to offer links to travel insurance services and through <dinerreward.com>, Respondent has offered links to credit card services and other financial services content (in fact, Respondent’s website featured a picture of a credit card). It is not clear why Respondent would choose to destroy his credibility with the Panel when with reality of the abusive use of these domain names is such an easily verifiable matter.
Respondent attaches exhibits to its response which appear to show pay-per-click advertising pages related to food. These screenshots are undated and the content associated with each domain name was posted after the filing of the Complaint in an apparent attempt to create a “cover story” for Respondent’s acts of cybersquatting. Further, Respondent’s mere assertion that he is in the restaurant business and the domain names are going to be used for some other purpose is insufficient to evidence a bona fide use prior to notice of the dispute. Past panels have rejected such pretextual uses as insufficient to show demonstrable preparation to use a domain name.
Respondent does not deny that the Disputed Domain Names are confusingly similar to Complainant’s marks.
Respondent does not deny that he is the registrant of the domain names listed above which contain the famous marks of others.
D. Respondent’s Additional Submission
The Disputed Domain Names are not identical or confusingly similar to a trademark or service mark in which Complainant has rights. Respondent does have rights and legitimate interests in respect to the Disputed Domain Names. The Disputed Domain Names have most certainly not been registered and used in bad faith.
Furthermore, although behind in development, virtually no effort has been expended to drive traffic to the Disputed Domain Names while they await development by Respondent. The traffic and income statistics for the Disputed Domain Names are as follows: <dinerss.com> = 58 visitors, 1 click, total revenue for 365 days is $0.10; <dinerreward.com>: 16 visitors, 1 click, total revenue for 365 days is $0.10.
Complainant is the owner of the following
DINERS CLUB, registration number 828,013;
DINERS CLUB INTERNATIONAL, registration number 1,127,084;
DINERS CLUB INTERNATIONAL, registration number 2,658,706;
DINERS CLUB PRORATION, registration number 2,293,109;
DINERS CLUB ON THE GO, registration number 2,812,306; and
DINERS, registration number 1,462,209.
Each of these trademark registrations were initially issued before Respondent registered the Disputed Domain Names.
Each of these trademark registrations is now incontestable.
These trademarks are also registered or subject to application in a large number of countries around the world.
The <dinerss.com> Disputed Domain Name was directed at some point earlier this year to a website that offered a click-though capacity to a number of third-party websites on which were offered various goods and services, one of which was “Travel Insurance.”
The <dinerreward.com> Disputed Domain Name was directed at some point earlier this year to a website that offered click-through capacity to a number of third-party websites on which were offered a variety of services, several of which were credit card services.
The <dinerss.com> Disputed Domain Name currently directs to a website that concerns food and food services.
The <dinerss.com> Disputed Domain Name is confusingly similar to Complainant’s DINERS mark.
The <dinerreward.com> is not identical or confusingly similar to any of Complainant’s marks.
Respondent is not commonly known by the Disputed Domain Names or any name similar thereto.
Respondent is not licensed to use any of Complainant’s trademarks.
Respondent is not making a non-commercial or fair use of the Disputed Domain Names.
Respondent has legitimate interests in <dinerss.com> Disputed Domain Name.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
This element of the Policy has two parts. Firstly, Complainant must have rights in one or more trademarks, and secondly, the subject disputed domain name(s) must be identical and/or confusingly similar thereto.
Trademark registration with a national trademark office, such as the United States Patent and Trademark Office, prior to the date on which the disputed domain name was first registered is sufficient to establish trademark rights for purposes of the Policy. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority).
For purposes of determining identicality and/or confusing similarity, Complainant’s marks are compared to the Disputed Domain Names. Minor variations are not generally sufficient to create a meaningful distinction. See W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the <barnesandnobles.info> and <barnesandnobles.biz> domain names are confusingly similar to the complainant’s BARNESANDNOBLE.COM mark because the additions of the letter “s” and generic top-level domains to the dominant features of the complainant’s mark do not negate the confusingly similar aspects of the domain names pursuant to Policy ¶ 4(a)(i)).
At the same time, some degree of similarity is permissible in the Internet context. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.").
A factor that is important to the analysis of confusing similarity is a mark’s strength. A strong mark creates a dominant feature within a disputed domain name that and be recognizable even when combined with a number of other characters and/or words. See Federated Western Pro., Inc. v. Chan, D2003-0472 (WIPO Sept. 17, 2003)(finding disputed domain names “macysflowerclub.com” and “macysvisa.com” confusingly similar to Complainant’s trademark in MACY’S, even where Complaint was not found to have rights in the terms “flower club” or “Visa”); see also Citigroup Inc. v. Acme Mail, FA 0402000241987 (Nat. Arb. Forum Apr. 12, 2004)(finding the domain name “citiban.com” confusingly similar to Complainant’s CITI mark because the “domain name incorporates in its entirety Complaint’s CITI mark and the CITI mark is the dominant element in Respondent’s domain name”); see also Apple Computer, Inc. v. Apple-Computer c/o Marcus Grey, FA 535416 (Nat. Arb. Forum September 22, 2005)(ordering transfer of <apple-computers.us> in part because the domain name fully incorporated the complainant’s mark).
A weak mark, in contrast, can lose its recognizable nature with relatively fewer changes, whether by way of additions or deletions.
In the present case, the Complainant has
trademark registrations in the
DINERS CLUB PRORATION
DINERS CLUB ON THE GO, and
All of these marks were initially registered prior to the date on which the Disputed Domain Names were registered, and are incontestable.
Further, Respondent acknowledges these trademark registrations.
As such, Complainant has rights in the listed marks for purposes of the Policy.
The Disputed Domain Names are: <dinerss.com> and <dinerrewards.com>.
This Panel has no difficulty finding that the <dinerss.com> Disputed Domain Name is confusingly similar to Complainant’s DINERS trademark. The only two differences are the gTLD, “.com,” and the addition of a single letter “s.”
As such, and as to the <dinerss.com> Disputed Domain Name, Complainant has established the first required element of the Policy.
However, the matter is otherwise with respect to the <dinerreward.com> Disputed Domain Name.
The Panel believes that Complainant’s mark DINERS is a weak mark because in addition to being a registered trademark, it is a word of common usage. In this it is different from the marks in the above-noted cases, MACY’S, CITI, and VISA. In this, it is also different from Complainant’s strong mark DINERS CLUB.
The Disputed Domain Name <dinerreward> is not a close match to Complainant’s mark DINERS. The differences are the deletion of the letter “s” and addition of the word “reward.” The overall impression is different, and the mark is not a dominant feature of the Disputed Domain Name.
The Disputed Domain Name <dinerreward> is even less of a match to Complainant’s other listed marks, all of which include the words “diners club.”
Complainant points out that its mark DINERS is incontestable under U.S. trademark law, and presumably this is for the purpose of pointing out that its mark cannot be contested on the basis of distinctiveness. See 15 U.S.C. 1115(b). However, 15 U.S.C. 1115(b) provides a degree of protection from an attack on the mark. Here, the issue is whether in the Internet context a domain name is identical and/or confusingly similar to the relevant mark; no attack on the mark is involved in the present case.
Complainant cites to a previous
administrative proceeding pursuant to the Policy that addressed the <dinerreward.com> Disputed Domain
Name. That previous case is Diners Club International Ltd., v. Standard
Tactics LLC, FA 820358 (Nat. Arb. Forum Nov. 30, 2006) in which that panel
found the Disputed Domain Name <dinerreward.com>
to be confusingly similar to Complainant’s marks DINERS and DINERS CLUB. The panel in that previous case found that
the deletion of the single letter “s” did not “…distinguish the disputed domain
name from Complainant’s marks,” and further stated, “…the addition of a term
[“reward”] descriptive of Complainant’s business does nothing to overcome the
confusing similarity between Complaint’s marks and the disputed domain name.”
The Panel in the present case respectfully disagrees with the conclusion of that prior case on this issue. In that prior case, the respondent (an entity different from the Respondent in the present case) did not file a response, and the award notes that “…the panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations….” This is not the situation in the present case in which Respondent has filed a response.
Additionally, in finding confusing similarity, that prior Diners Club case focused on the word “reward,” believing it to be merely descriptive of one of Complainant’s activities, which is to reward customers who use its financial services, and as such, it could be disregarded for purpose of making the required comparison. However, this Panel believes that the word “reward,” whether or not descriptive of Complainant’s activities, does create a different overall impression for this Disputed Domain Name.
As such and with respect to the Disputed Domain Name <dinerreward.com>, Complainant has not established the first required element of the Policy, and as such, this Disputed Domain Name will not be analyzed further. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In the present case, Complainant asserts, and the Panel agrees, that Respondent is not commonly known by the Disputed Domain Name and that Respondent is not making a noncommercial or fair use of the Disputed Domain Name.
Respondent argues that it is commonly known by the Disputed Domain Name because the Disputed Domain Name is used as an e-mail address for Respondent, which e-mail address is clearly visible on Respondent’s web page. The Panel does not locate this e-mail address on any of the screenshots provided by the parties showing Respondent’s websites, but even if the Panel had located the e-mail address, this argument proves too much. If using a disputed domain name as an e-mail address was sufficient to establish “being commonly known by the domain name,” then all respondents could do the same and thereby always avoid an adverse finding under the Policy.
Complainant argues that respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services. Further, Complainant asserts that any use by Respondent of the Disputed Domain Name that might be found to be in connection with a bona fide offering of goods or services is merely a pretext that should not be allowed.
Complainant argues that Respondent uses the Disputed Domain Name to direct to a website that is a click-through website, and Complainant has attached a screenshot of this website as an exhibit to its Complaint (“Respondent’s Initial Website”). According to Complainant, Respondent’s Initial Website includes links to third-parties websites where Internet users can purchase services competitive with those of Complainant, and as such this use cannot constitute a bona fide offering of goods or services. See MSNBC Cable, LLC v. Tyssy.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainants market by redirecting Internet traffic to its own website); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (ordering transfer of <metropolitanlife.us> based in part upon a finding that using the domain name in conjunction with pay per click advertising scheme “is diverting Internet users for commercial gain and that such use does not represent a bona fide offering of goods or services under policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under policy ¶ 4(c)(iv).”).
The Panel agrees that Respondent’s Initial Website does include a click-through heading (option) entitled “Travel Insurance,” which directs to a third-party website where travel insurance can be purchased. This is directly competitive with Complainant’s services as evidenced by Complainant’s trademark DINERS CLUB INTERNATIONAL, registration number 2,658,706. This registration specifically includes “travel insurance” among the recited services. This issue is further discussed below, but at this point Complainant’s showing is sufficient to support Complaint’s obligation to make a prima facie case.
As such, Complainant has met its burden of establishing a prima facie case that Respondent does not have rights or legitimate interests in the Disputed Domain Name.
Respondent argues that its current use of the Disputed Domain Name is in connection with a bona fide offering of goods and services. Respondent attaches to its response screenshots of the website to which the Disputed Domain Name currently directs (“Respondent’s Current Website”). Respondent’s Current Website concerns food, food products, and food services. Respondent describes the purpose of Respondent’s Current Website as: “… to address the restaurant, food and dining industries with regard to better informing the public of local restaurant and food service dining options.”
Respondent asserts that this has been its purpose at all times, including the time of registration.
The Panel believes that Respondent’s Current Website constitutes a bona fide offering of goods and services, and further that this use is noncompetitive as to Complainant’s services under its trademarks listed above.
As noted, Complainant argues that Respondent’s current use of the Disputed Domain Name is a pretext. The Panel notes that Respondent’s prior use of the Disputed Domain Name is not inconsistent with Complainant’s argument, but nevertheless, the Panel believes that Respondent’s current use is not a pretext and that Respondent’s current use of the Disputed Domain Name was always its intention.
Respondent’s prior use is troubling, but this prior usage was competitive only to the one noted point of “travel insurance,” and that service was only one among many items on Respondent’s Initial Website. None of the others items on that website were competitive. The Panel is not convinced that this one point of competition is sufficient in itself to justify a finding against Respondent on this second element of the Policy given the evidence provided by Respondent as to its current use of the Disputed Domain Name.
With respect to Respondent’s intention prior to the time it received notice of the dispute, the timeline of events is not altogether clear from the documents provided, but given the Panel’s finding that Respondent’s intention has always been to use the Disputed Domain Name as it is being used with respect to Respondent’s Current Website, this necessarily leads to the further conclusion that Respondent’s intention was appropriate prior to its receipt of notice of the dispute.
As such, Respondent has satisfied its burden to demonstrate to the satisfaction of the Panel that it has legitimate interests in the Disputed Domain Name.
As such, Complainant has failed to establish the second required element of the Policy.
This being the case, the Panel need not consider the third required element of the Policy.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED as to both of the Disputed Domain Names, <dinerss.com> and <dinerreward.com>.
Kendall C. Reed, Panelist
Dated: August 14, 2008
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