Diners Club International Ltd. v. Charles Black
Claim Number: FA0810001227703
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 <dinnerclubsofamerica.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 6, 2008.
On October 8, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <dinnerclubsofamerica.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 October
13, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
November 3, 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@dinnerclubsofamerica.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <dinnerclubsofamerica.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <dinnerclubsofamerica.com> domain name.
3. Respondent registered and used the <dinnerclubsofamerica.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a large provider of credit cards and other financial services to individuals, small businesses, and large corporations. Complainant uses its DINERS CLUB mark in conjunction with these services (Reg. No. 828,013 issued April 25, 1967 by the United States Patent and Trademark Office (“USPTO”)).
Respondent registered the <dinnerclubsofamerica.com> domain name on January 19, 2008, and uses it to display a list of hyperlinks advertising services in competition with Complainant’s business.
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 asserts rights to the DINERS CLUB mark by evidencing numerous trademark registrations with the USPTO. Many previous panels have found, and this Panel so finds, that Complainant’s trademark registrations confer rights in the DINERS CLUB mark to Complainant pursuant to Policy ¶ 4(a)(i). See Diners Club Int’l Ltd. v. O P Monga, FA 670049 (Nat. Arb. Forum May 22, 2006) (“With the submission of registration number 828,013 of April 25, 1967, issued by the U.S.P.T.O. for the DINERS CLUB mark, and the list of DINERS and composite marks registered worldwide … Complainant proved that it has rights in the DINERS CLUB mark, and generally in the DINERS CLUB family of marks, many of which fully incorporate the words DINERS CLUB.”); see also Diners Club Int’l Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007) (conferring rights in the DINERS mark to the complainant based upon its USPTO trademark registration).
Respondent’s <dinnerclubsofamerica.com>
domain name contains Complainant’s DINERS CLUB mark with the additions of an
extra “n” in “diners” and an “s” after “club,” and the removal of the “s” in
“diners.” The disputed domain name also
adds the phrase “of
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <dinnerclubsofamerica.com> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See 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.”); see also 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).
Complainant contends that it has not granted Respondent any
license, permission, or authorization to register a domain name containing
Complainant’s DINERS CLUB mark or any variation thereof. Pursuant to Complainant’s contention,
combined with the fact that the WHOIS information identifies Respondent as
“Charles Black,” the Panel concludes that Respondent is not commonly known by
the <dinnerclubsofamerica.com>
domain name in accordance with Policy ¶ 4(c)(ii). See Reese
v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the
respondent was not commonly known by the <lilpunk.com> domain name as
there was no evidence in the record showing that the respondent was commonly
known by that domain name, including the WHOIS information as well as the
complainant’s assertion that it did not authorize or license the respondent’s
use of its mark in a domain name); see
also
Respondent is using the <dinnerclubsofamerica.com>
domain name to display hyperlinks advertising services in competition with
Complainant. The Panel presumes that
Respondent earns click-through fees for each Internet user that clicks on one
of these links and is redirected to another website. The Panel therefore finds that Respondent’s
use of the disputed domain name fails to constitute 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Servs., FA 877982 (Nat.
Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the
<tesco-finance.com> domain name in connection with a bona fide offering
of goods or services or a legitimate noncommercial or fair use by maintaining a
web page with misleading links to the complainant’s competitors in the
financial services industry); see also Jerry Damson, Inc. v.
The Panel find that Policy ¶
4(a)(ii) has been satisfied.
Respondent’s promotion of competing third-party websites evidences
an intent to disrupt Complainant’s business.
This signifies bad faith registration and use pursuant to Policy ¶
4(b)(iii). See David Hall Rare Coins v.
Respondent’s use of the disputed domain name is also likely to confuse Internet users for Respondent’s own commercial gain. Respondent presumably expects to profit off of the goodwill associated with Complainant’s well-known DINERS CLUB mark, and this evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
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 <dinnerclubsofamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 18, 2008
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