Diners Club International Ltd. v. Domain Park Limited
Claim Number: FA0806001211556
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 <dinersperu.com>, registered with Moniker Online Services, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 24, 2008.
On June 25, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <dinersperu.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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").
On July 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 23, 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@dinersperu.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 30, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <dinersperu.com> domain name is confusingly similar to Complainant’s DINERS mark.
2. Respondent does not have any rights or legitimate interests in the <dinersperu.com> domain name.
3. Respondent registered and used the <dinersperu.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an international provider of financial services to individuals, small businesses and large corporations through multiples channels of trade: chiefly credit card services. It has registered the DINERS mark in numerous jurisdictions worldwide, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,462,209 issued October 20, 1987) and the Peruvian Patent Office (“PPO”) (Reg. No. 17,530 issued May 16, 1979) for credit card services.
The <dinersperu.com> domain name was registered on August 21, 2007 and currently resolves to a website displaying a variety of links, advertisements, and a commercial search engine, all of which resolve to numerous third-parties, many of whom who offer competing financial services. Additionally, the <dinersperu.com> domain name displays the phrase “This domain may be for sale by its owner.”
Furthermore, Respondent has been the subject of numerous UDRP proceedings in which Respondent was found to have registered disputed domain names in bad faith. See Baylor Uni. v. Domain Park Ltd., FA 1142634 (Nat. Arb. Forum Mar. 24, 2008); see also Enter. Rent-A-Car Co. v. Domain Park Ltd., FA 1152005 (Nat. Arb. Forum Apr. 3, 2008); see also Citizens Fin. Group, Inc. v. Domain Park Ltd., FA 1142126 (Nat. Arb. Forum Apr. 8, 2008).
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 sufficiently
established rights under Policy ¶ 4(a)(i) in the DINERS mark through
registration with the USPTO and PPO. See
Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004)
(finding that the complainant had established rights in the GOOGLE mark through
its holding of numerous trademark registrations around the world); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb.
Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD
mark with the United States Patent and Trademark Office establishes the
complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
The <dinersperu.com> domain name incorporates
Complainant’s DINERS mark in its entirety followed by the geographic locator “
The Panel concludes that Complainant has satisfactorily established Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must meet its burden of
establishing a prima facie case that
Respondent lacks rights and legitimate interests in the <dinersperu.com>
domain name before the obligation shifts to Respondent to prove its own rights
or legitimate interests in the disputed domain name. 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 Policy ¶ 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 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 interest in the subject domain names.”).
The Panel finds that Complainant has demonstrated a prima facie case against Respondent and
that since Respondent has failed to reply to the Complaint, the Panel may
accordingly presume that Respondent lacks rights and legitimate interests in the
disputed domain name. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence); see also Wild West Domains, Inc. v. Jung,
D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting
Respondent showed nothing else but an absolute lack of interest in the Domain
Name . . . . It is incumbent on Respondent to contribute to the fact-finding and
if contrary to that, it rather incurs in default, there is nothing that the
Panel could do to discuss in its benefit.”).
Nonetheless, the Panel will still examine the record in consideration of
the elements listed under Policy ¶ 4(c).
Complainant alleges that there is nothing in the record that
indicates that Respondent is or ever was commonly known by the <dinersperu.com>
domain name. Complainant additionally
asserts that it has not granted Respondent any license, permission, or
authorization to use the DINERS mark in any way. Absent any additional information in the
record, the Panel finds that Respondent is not commonly known by the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum
Dec. 7, 2006) (finding that the respondent failed to establish rights and
legitimate interests in the <emitmortgage.com> domain name as the
respondent was not authorized to register domain names featuring the
complainant’s mark and failed to submit evidence of that it is commonly known
by the disputed domain name); see also
Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding
that the respondent was not commonly known by the disputed domain names where
it maintained the domain name registrations on the complainant’s behalf and
then appropriated the disputed domain names for itself, without permission from
the complainant).
The disputed domain name is being utilized to direct Internet users to websites promoting competing financial services. In a similar situation, the panel in Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001), found no rights or legitimate interests in a disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark. Likewise, other panels, such as that in Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003), have held that a respondent’s use of a disputed domain name to post links to commercial websites and subject Internet users to pop-up advertisements cannot be a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Consequently, the Panel finds that Respondent is not using the <dinersperu.com> domain name in connection with either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ (c)(iii). See also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Additionally, the disputed domain name displays a phrase
indicated that the domain may be for sale.
This Panel finds this general offer to sell the disputed domain name to
be further evidence that Respondent lacks rights and legitimate interests in
the <dinersperu.com> domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704
(Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to
sell a domain name suggests that a respondent has no rights or legitimate
interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin,
FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances,
the respondent’s apparent willingness to dispose of its rights in the disputed
domain name suggested that it lacked rights or legitimate interests in the
domain name).
The Panel concludes that Complainant has satisfactorily established Policy ¶ 4(a)(ii).
The disputed domain name additional displays the phrase
“This domain may be for sale by its owner.”
The Panel finds this willingness to sell and accordingly dispose of the
disputed domain name to sufficiently establish Respondent’s bad faith
registration and use of the disputed domain name pursuant to Policy ¶
4(b)(i). See Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed
domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”).
Respondent has also already been ordered to transfer
infringing domain names that it had owned to the respective complainants in its
prior UDRP proceedings. See Baylor Uni. v. Domain Park Ltd., FA
1142634 (Nat. Arb. Forum Mar. 24, 2008); see
also Enter. Rent-A-Car Co. v. Domain Park Ltd., FA 1152005 (Nat. Arb. Forum
Apr. 3, 2008); see also Citizens Fin.
Group, Inc. v. Domain Park Ltd., FA 1142126 (Nat. Arb. Forum Apr. 8,
2008). The Panel finds this sufficient to establish
the presumption that Respondent registered and is using the <dinersperu.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v.
Furthermore, the disputed domain name contains a variety of
links for and advertisements of third-parties who compete with
Complainant. The Panel finds this to be
additional evidence of Respondent’s bad faith registration and use of the <dinersperu.com>
domain name pursuant to Policy ¶ 4(b)(iii).
See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA
724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent
registered and used the <classicmetalroofing.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the
respondent’s competing website); see also
Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (concluding that the use of a confusingly similar domain name to attract
Internet users to a directory website containing commercial links to the
websites of a complainant’s competitors represents bad faith registration and
use under Policy ¶ 4(b)(iii)).
And finally, Complainant alleges that the disputed domain
name is being used to “intentionally attempt to attract, for commercial gain,
Internet users to Respondent’s website … by creating a likelihood of confusion
with the complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of Respondent’s website … or of a product or service on
Respondent’s website....” The sponsored
advertisements, commercial search engine, and links to competitors are presumed
to financially benefit Respondent.
Therefore, the Panel finds this to be further evidence of Respondent’s
bad faith registration and use of the <dinersperu.com> domain name
pursuant to Policy ¶ 4(b)(iv). See BPI
Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are
in the music and entertainment business.
The links associated with <billboard.tv> and <boogie.tv>
appear to be in competition for the same Internet users, which Complainants are
trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion
between <billboard.tv> and BILLBOARD as to the source, sponsorship,
affiliation, or endorsement of the web site or of a product or service on the
web site.”); see also Red Hat, Inc. v. Haecke, FA
726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in
bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the
disputed domain names to operate a commercial search engine with links to the
products of the complainant and to complainant’s competitors, as well as by
diverting Internet users to several other domain names).
The Panel concludes that Complainant has satisfactorily established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dinersperu.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 7, 2008
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