Diners Club International Ltd. v. Value-Domain Com a/k/a Privacy Proxy a/k/a Value Domain
Claim Number: FA0902001249120
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 <dinersclub-card.net>, registered with Key-Systems Gmbh.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 26, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <dinersclub-card.net> domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <dinersclub-card.net> domain name.
3. Respondent registered and used the <dinersclub-card.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club International Ltd., conducts most
of its business in the credit card and financial industry, having over 8
million individual cardholders.
Complainant holds many registrations around the world in its DINERS CLUB
mark. The United States Patent and
Trademark Office (“USPTO”) issued Complainant a registration for the DINERS
CLUB mark on
Respondent registered the disputed domain name on July 2, 2008. The <dinersclub-card.net> domain name resolves to a website offering credit cards, including Complainant’s credit cards and those of Complainant’s direct competitors, to Internet users without Complainant’s authorization.
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
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 established rights in
the DINERS CLUB mark under Policy ¶
4(a)(i) through registration of the marks with the USPTO. See Intel
Corp. v. Macare, FA 660685 (Nat. Arb. Forum
The <dinersclub-card.net> domain name contains
Complainant’s DINERS CLUB mark, omitting the space between the words, a hyphen,
the word “card,” and the generic top-level domain (“gTLD”) “.net.” The Panel finds that the word “card” has an
obvious relationship to Complainant’s credit card business and so does not
sufficiently distinguish the <dinersclub-card.net> domain name
from the DINERS CLUB mark. Further, omitting a space and adding a hyphen and
gTLD are irrelevant to an analysis of confusing similarity. Therefore, the Panel finds that the <dinersclub-card.net>
domain name is confusingly similar to the DINERS CLUB mark pursuant to Policy ¶
4(a)(i). See Bond & Co. Jewelers, Inc. v.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain
name. If the Panel finds that
Complainant’s allegations establish such a prima facie case, the burden
shifts to Respondent to show that it does indeed have rights or legitimate
interests in the disputed domain name pursuant to the guidelines in Policy ¶
4(c). The Panel finds that
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate
interests in the <dinersclub-card.net> domain name pursuant to
Policy ¶ 4(a)(ii). Since no response was submitted in this
case, the Panel may presume that Respondent has no rights or legitimate
interests in the disputed domain name.
However, the Panel will still examine the record in consideration of the
factors listed in Policy ¶ 4(c). See
Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <dinersclub-card.net> domain
name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the DINERS CLUB mark, and the WHOIS information identifies Respondent as
“Value-Domain Com a/k/a Privacy Proxy a/k/a Value Domain.” Thus, the Panel finds that Respondent has not
established rights or legitimate interests in any of the disputed domain name
under Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
According to Complainant, the <dinersclub-card.net>
domain name is being used in association with a website that promotes and
offers Complainant’s credit cards to Internet users without authorization. The Panel finds that this does not constitute
a bona fide offering of goods or
services under Policy ¶ 4(c)(i).
Furthermore, Respondent’s use of the DINERS CLUB mark in the domain name
to operate a website for profit is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
The website resolving from the <dinersclub-card.net>
domain name also offers Internet users credit cards that directly compete with
Complainant. The Panel finds that
Respondent’s use of Complainant’s mark to promote Complainant’s direct
competitors is additional evidence that Respondent has failed to make a bona fide offering of goods or services
under ¶ 4(c)(i) or a legitimate noncommercial or fair use under ¶
4(c)(iii). See Nike,
Inc. v. Dias, FA 135016 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of Complainant’s DINERS CLUB mark in the <dinersclub-card.net>
domain name to offer Complainant’s credit cards without authorization and
credit cards of Complainant’s direct competitors suggests that Respondent
registered the disputed domain name intending to disrupt Complainant’s
business. The Panel finds that this is
evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum
Additionally, The Panel finds that Respondent is using the <dinersclub-card.net>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent is
using Complainant’s DINERS CLUB mark to attract Internet users to a website
that offers Complainant’s products. This
is evidence that Respondent is attempting to profit by creating a likelihood of
confusion between Complainant’s mark and Respondent’s competing website. See Kmart v. Khan, FA
127708 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <dinersclub-card.net> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: April 9, 2009
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