Diners Club International Ltd. v. Mott Street Group Inc.
Claim Number: FA0902001245864
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 <dinersclub24-7.com> and <24-7dinersclub.com>, registered with Godaddy.com, 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.
Robert T. Pfeuffer, Senior District Judge as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 3, 2009.
On February 3, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dinersclub24-7.com> and <24-7dinersclub.com> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 February 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 26, 2009 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 and email@example.com by e-mail.
A timely Response was received and determined to be complete on February 25, 2009.
An Additional Submission was received from the Complainant and was fully considered by the Panel.
On March 3, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Complainant contends that the Respondent has violated ICANN Policy ¶ 4(a)(i) alleging that the disputed domain names are identical or confusingly similar to its DINERS CLUB mark as registered with the United States Patent and Trademark office on April 25, 1967. Additionally, Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii) and additionally that Respondent has registered such disputed domain names and is using them in bad faith as set out in Policy ¶ 4(b)(iv).
Additionally, in Complainant's Additional Submissions it points out that Respondent’s business plan highlights the Policy’s certification requirement in view of Respondent’s many other domain name registrations, utilizing the 24-7 mark coupled with numerous other national and international marks.
Respondent on the other hand alleges that the <dinersclub24-7.com> and <24-7dinersclub.com> domain names are comprised of generic terms that cannot be monopolized by Complainant. Respondent further urges the Panel to find that Complainant has not established prima facie case in support of its arguments, but Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii) and that it registered the domain names with other intentions. Specifically, Respondent contends that it registered the disputed domain names with the intent of establishing an online community to share information and reviews of restaurants and other dining establishments that are open 24 hours per day, 7 days per week. Respondent says it is in the process of establishing a database whereby traveler can input over-the-road travel plans and access information about businesses open 24 hours a day, 7 days per week along the route. It further contends that it has a planned website to be launched 9 – 18 months for the purpose of carrying out its business plan. Respondent further contends that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
C. Additional Submissions
The Additional Submissions received from the Complainant have been addressed above and contain numerous exhibits indicating that Respondent engaged in cypersquatting.
The Panel finds that a careful review of the evidence supports the contentions of the Complainant and its position that the Respondent has violated ICANN Policy ¶ 4(a)(i) “Identical and/or Confusingly Similar”; Policy ¶ 4(a)(ii) “No rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use.”
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.
The Panel finds that the Complainant has in fact used the DINERS CLUB mark in connection with its credit card and travelers’ assistance business for over 40 years and is internationally known by such mark. The Panel also finds that the Complainant has established rights in the DINERS CLUB mark through its registration of the mark with the United States Patent and Trademark Office which was issued April 25, 1967. Accordingly, the Complainant’s rights in the mark under Policy ¶ 4(a)(i) are established. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the Complainant’s mark is registered with the USPTO, the complainant has met the requirements of Policy ¶ 4(a)(i); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007, finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant additionally alleges that the <dinersclub24-7.com> and <24-7dinersclub.com> domain names are confusingly similar because the domain names in dispute consists of Complainant’s mark and the numbers “24-7,” and the generic top-level domain (“gTLD”) “.com.” The Panel is so persuaded. The Panel concludes that the addition of a gTLD is irrelevant to an analysis under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The numbers “24-7” are commonly used to abbreviate “24 hours a day, 7 days per week.” The Panel further finds that the addition of the numbers “24-7” are insufficient to distinguish Respondent’s <dinersclub24-7.com> and <24-7dinersclub.com> domain names from Complainant’s DINERS CLUB mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also New York City Police Found., Inc. v. Chris Hoffman, FA 286046 (Nat. Arb. Forum July 29, 2004) (finding the <nypd24-7.com> and <nypd247.com> domain names confusingly similar to the complainant’s NYPD mark).
While Respondent contends that the disputed domain names are comprised of common, descriptive terms and as such cannot be found to be confusingly similar to the Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii), and the Panel is cognizant of the requirement that 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). If it does, then 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.”.
Complainant asserts it has not granted any license or permission to Respondent to use its DINERS CLUB mark. It also contends that Respondent is not commonly known by either of the disputed domain names. The WHOIS information associated with the disputed domain names lists Respondent as “Mott Street Group Inc.” No evidence has been submitted by Respondent to show that it is commonly known by any of the disputed domain names. Therefore, the Panel finds that the Respondent has not established any rights or legitimate interests in the disputed domain names, the Panel being satisfied that the burden has shifted to Respondent to so establish its rights under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the Respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a Respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
It is further alleged by the Complainant that Respondent is using the disputed domain names to redirect Internet users to its <24-7.com> domain name, which resolves to a generic search engine website. By so doing, Complainant alleges Respondent makes money from the resolving website, presumably through click-through fees. The Panel finds the evidence that supports the Complainants contentions in this respect and further finds that Respondent’s use is not 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute 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 ¶ 4(c)(iii)).
Respondent claims that it has plans to develop a website, relating to dining and other establishments open 24 hours per day, 7 days per week, but Respondent has not submitted any evidence of this plan other than its assertions. The Panel therefore finds that Respondent has not shown demonstrable preparations to use the disputed domain names in connection with its alleged bona fide offering of goods or services and as such, the Panel finds that this constitutes further evidence that Respondent has not established any rights or legitimate interests in the <dinersclub24-7.com> and <24-7dinersclub.com> domain names under Policy ¶ 4(c)(i). See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (finding that the respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish rights and legitimate interests in the domain name where the respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim).
Complainant has asserted that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). It asserts that Respondent is intentionally attracting, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The Panel so finds from the evidence that these facts are established and that these actions constitute bad faith registration and use by Respondent under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dinersclub24-7.com> and <24-7dinersclub.com> domain names be TRANSFERRED from Respondent to Complainant.
Robert T. Pfeuffer,
Senior District Judge, Panelist
Dated: March 17, 2009
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