Diners Club International Ltd. v. Mott Street Group Inc.
Claim Number: FA0902001245864
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@dinersclub24-7.com and postmaster@24-7dinersclub.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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.”
DISCUSSION
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).
DECISION
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
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum