Diners Club International Ltd. v. Mark Jenkins
Claim Number: FA0906001266752
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul
D. McGrady, Jr., of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <contactdiners.com>, registered with Godaddy.com, Inc.
The undersigned certifies that 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.
Paul M. DeCicco as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 5, 2009.
On June 5, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <contactdiners.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. 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 June 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 2, 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 by e-mail.
A timely Response was received and determined to be complete on July 1, 2009.
Complainant submitted an Additional Submission to the National Arbitration Forum on July 8, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7.
On July 13, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
owns trademark Registration No. 1,462,209 issued by the USPTO for the DINERS
mark covering "credit card services" and having a registration date
of October 20, 1987. The DINERS mark has obtained incontestable status. The
DINERS mark represents to the worldwide consuming public the goods and services
offered by Complainant and its licensees. Due to the extensive use and
longstanding registration of the DINERS mark, the mark has become famous under
the laws of the
Respondent uses the at-issue domain name to promote competing and non-competing goods and services, including but not limited to, financial services. Complainant has not given Respondent any license, permission, or authorization by which Respondent could make any use of any of its marks. The at-issue domain name is confusingly similar to the DINERS mark because it fully incorporates Complainant's DINERS mark and adds the generic term "contact".
Respondent lacks rights or legitimate interest in the at-issue domain name. Respondent has never been commonly known by Complainant's DINERS mark nor any variations thereof, and has never used any trademark or service mark similar to the at-issue domain name by which it may have come to be known, other than the infringing use noted herein.
Respondent has never operated any bona fide or legitimate business under the at-issue domain name, and is not making a protected non-commercial or fair use of the at-issue domain name.
Respondent is using the at-issue domain name to direct Internet users to a website promoting competing financial services. Such a use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Past panels have found that a respondent's use of a domain name that is confusingly similar to Complainant's mark to divert Internet users for Respondent's own commercial gain does not constitute 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).
As noted, Respondent's domain name is confusingly similar to the Complainant's marks. In addition, Respondent was undoubtedly aware of the mark prior to the registration of the at-issue domain name, given the registration and use, as set forth in detail above. Because Respondent had notice of the Complainant's trademark rights when registering domain names nearly identical and/or confusingly similar to those marks, Respondent has no rights or legitimate interest in the at-issue domain name.
Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations, which are confusingly similar to any of Complainant's marks.
registered and is used the at-issue domain name in bad faith. At the time of
registration of the domain name, Respondent, who has a
The mere fact that the Respondent has registered a domain name that incorporates the famous trademarks of a well-known company is alone sufficient to give rise to an inference of bad faith.
The at-issue domain name has been put to use to intentionally attract, for commercial gain, Internet users to Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source) sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location. Specifically, Respondent is using the domain name to promote credit cards without Complainant's authorization, using Complainant's own marks.
It is clear from the record that (1) Complainant has legitimate trademark rights to the Offending Domain; (2) the Offending Domain is confusingly similar and/or nearly identical to Complainant's marks; (3) Respondent has no legitimate interests in the Offending Domain; (4) the Offending Domain was registered in bad faith; and (5) the Offending Domain has been used in bad faith.
Respondent contends as follows:
The main premise of the dispute centers around Complainant’s print-out of a Go-Daddy "Sponsored Listing" page that appears when one types the URL in question into a browser. This is a page that Go-Daddy.com, not Respondent, placed there. Respondent replied to Complainant’s inquiry, on March 30, 2009, notifying Complainant of such, in which Respondent offered to call GoDaddy. When Respondent contacted Go-Daddy regarding the complaint, Respondent was told the sponsored listings were legitimate and they would not be removed. Respondent emailed with this information. The sponsored listings page still exists and is beyond Respondent’s control.
Respondent does not engage or promote any financial services, nor has he placed any content of such on this URL address. Respondent placed absolutely no content on this URL.
Respondent has done nothing except to reserve a domain name. There have been no efforts made to "direct" anyone to this web address by myself to date. Any and all content currently on it has been placed there by GoDaddy, and is beyond my control.
Respondent also owns the URL's <ContactShoppers.com>, ContactTourists, and ContactGolfers, to name a few, for which he is developing websites. Respondent also owns the URL <ContactArkansas.com>, among others, all of which I am developing to support an electronic newsletter service for merchants. There is nothing "generic" about the term "Contact" as it relates to my business.
Respondent reserved <contactdiners.com> specifically to market newsletters to restaurants to offer them a means of staying in touch with their customers. Respondent is very familiar with the restaurant and dining market, having several years of operational dining experience; thus it is a natural market for Respondent to target.
Respond had no desire, or reason, to reserve a URL name to try to lure or "confuse" searchers onto a GoDaddy sponsored listing page that is temporary in nature, and for which Diners Club has made the main basis for its complaint.
Further, if one were to conduct a search using the word "diners" on any given day, they would find results for <Diners.com>, <DinerMite.com>, <DinerCity.com>, <NJDiners.com>, and <DinersJournal.blogs.nytimes.com>, etc.
C. Additional Submissions
In its Additional Submission Complainant contends as follows:
The Response consists of an email addressed to the NAF case manager. The deficient Response does not contain the certification required under UDRP Rule 5(b)(viii) and fails to rebut Complainant's prima facie case. The record remains clear that (1) Complainant has legitimate trademark rights to the disputed domain, <contactdiners.com>; (2) the disputed domain, is confusingly similar to Complainant's incontestable DINERS mark; (3) Respondent has no legitimate interests in the disputed domain; and (4) the disputed domain was both registered in bad faith and has been used in bad faith.
Respondent does not deny: (1) that the Complainant has legitimate trademark rights to the disputed domain; (2) the accuracy of Complainant's asserted trademark registration rights in the United States; (3) that Respondent had at least constructive notice of Complainant's registration rights in the United States; (4) that the disputed Domain is confusingly similar to Complainant's incontestable mark; and (5) that the disputed Domain name was used to draw traffic to the website associated with the domain name which promotes Complainant's competitors for commercial gain.
The Response consists of three "defenses": (1) "My registrar did it"; (2) "I have a vague, but unsubstantiated business plan"; (3) "Complainant does not enjoy an exclusive monopoly on the term". Taking each in turn: A Respondent is responsible for the content to which its domain name resolves. The registrant of the domain name is responsible for the content to which the domain name resolves and must accept the consequences and any and all inferences to be drawn from such content. Following confrontation by Complainant's counsel, Respondent would have needed only to log in to his account with GoDaddy and update the DNS servers and the website containing the financial services advertisement content would have ceased to resolve to the disputed domain name. Respondent has registered <contactdisney.com> along with other domain names consisting of the marks of others, all in conjunction with a GoDaddy PPC ads pages.
Respondent's vague assertion of a business plan is insufficient and misleading. Respondent claims, without providing details, that he intends to the use disputed domain name "to market newsletters to restaurants to offer them a means of staying in touch with their customers.” Yet, after five months, no such use has occurred and Respondent has failed to produce any business plan or other documentation evidencing preparations to begin such use. A Respondent must show demonstrable preparations to use the domain name in conjunction with a bona fide offering of goods and services; that any such demonstrable preparations were undertaken before notice of the dispute; and that merely asserting a plan in the absence of evidence is inadequate.
Respondent has registered many other domain names that contain the trademarks of others. Respondent has engaged in a pattern of abusive registration and use through registration of well-known brands and associating them with GoDaddy PPC revenue generating web pages. There is no demonstrable evidence of any good faith preparations to use the disputed domain name or any plausible excuse why he did not disable the PPC content upon receipt of Complainant's demand that he do so. The reality is that terminating the content would have been contrary to his obvious and unoriginal bad faith business plan of squatting on the marks of others and associating them with PPC content.
Respondent argues that Complainant's rights arc insufficient because third parties use the term "diners." A complainant need only show rights to a mark which is confusingly similar to the disputed domain name, not that it has exclusive rights as the Respondent suggests.
virtue of its incontestable federal registration for the mark DINERS covering
"credit card services", Complainant does have exclusive rights to use
that term in conjunction with the marketing and sale of credit card services in
is the owner of a
Complainant’s registration issued before Respondent registered the at-issue domain name.
The <contactdiners.com> domain name resolves to a website originated by and hosted by the domain name registrar. The Pay Per Click (PPC) advertisements and other advertisements reference third-party websites that offer a variety of services, one or more of which may compete with Complainant’s business.
The <contactdiners.com> domain name is not identical or confusingly similar to Complainant’s trademark.
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.
As preliminary matter, the Panel will consider all papers presented by the parties to the extent relevant to it decision.
Complainant asserts its rights in the DINERS mark covering "credit card services" through its registration of the mark with the USPTO on October 20, 1987 (Reg. No. 1,462,209). Such rights need not be exclusive rights in the mark under Policy ¶ 4(a)(i) and Complainant demonstrates sufficient rights in the mark under Policy ¶ 4(a)(i) to warrant further consideration of its complaint. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place).
Complainant contends that the <contactdiners.com> domain name is confusingly similar to Complainant’s DINERS mark despite: (1) the addition of the word “contact;” and (2) the addition of the generic top-level domain “.com,” arguing only that confusingly similarity arises because the at-issue domain name fully incorporates Complainant's DINERS mark and adds the generic term "contact". The Panel disagrees with Complainant’s conclusion.
To determine whether or not an at-issue domain name is “confusingly similar” to a complainant’s trademark in the absence of empirical evidence of actual confusion such as here, panels ultimately compare the impression given by the second level domain name to that of the Complainant’s trademark. The goal of this exercise is to determine whether there is objective confusing similarity between an at-issue domain name and a complainant’s trademark, not to determine whether or not the panel subjectively considers the domain name and the trademark to be confusingly similar. In the absence of evidence showing actual confusion such as a survey or Internet user testimony, the Panel must make such determination from its own comparison of the at-issue second level domain name and Complainant’s mark.
The sight, sound and meaning of the compared marks contribute to the ultimate impression the mark or domain name presents to the public. Additionally the context in which the domain name is used or not used may affect the ultimate impression given by the domain name and thereby degree of similarity to a complainant’s trademark. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) (“Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter”); see also Google, Inc. v. Wolfe, FA 275419 (Nat. Arb. Forum July 18, 2004) (“The <froogles.com> domain name is not confusingly similar to Complainant's GOOGLE mark. The dissimilar letters in the domain name are sufficiently different to make it distinguishable from Complainant's mark because the domain name creates an entirely new word and conveys an entirely singular meaning from the mark.”). There may be no initial confusion between a domain name and a complainant’s mark. Nevertheless when viewed against the context of a referenced website, the confusing similarity of the domain name and the mark may become apparent. On the other hand, there is no relevance in considering the motives, behavior or history of the respondent.
In Diners Club International
Ltd. v. Self (Nat. Arb Forum
At least one panel has found that adding a short generic word, “consulting,” to even a
facially strong trademark, “Novell,” may defeat confusing similarity between a
domain name and a trademark. See Novell, Inc v. Novell Consulting FA099758 (Nat Arb.
Simply noting that a generic term was added to a trademark is thus insufficient to show that the at-issue domain name and trademark are confusingly similar under the Policy. In the instant case, Complainant’s trademark is part of the at-issue domain name. But it is unclear at first look that the <contactdiners.com> domain name is likely confused the public such that the public will more likely than not believe or suspect that the Complainant is either the source of the at-issue domain name, its sponsor, affiliated with Complainant, connected to or identified by the at-issue domain name or Respondent’s website or with the links contained thereon.
There is no litmus test from which the Panel may divine “confusing similarity” between the second-level domain name and the at-issue trademark (the “top-level”, here “.com,” is irrelevant under 4(a)(i) ) therefore absent guidance in the form of extrinsic evidence of confusion this Panel engages to review and weigh several fundamental points of comparison between the at-issue domain name and Complainant’s mark. The net weight of these factors, as well as others factors not articulated herein form the basis of the Panel’s conclusion regarding whether or not the at-issue domain name is more likely than not to give an impression in the mind of the public rendering the domain name “confusingly similar” to Complainant’s trademark pursuant to Policy ¶4(a)(i). To wit the Panel, inter alia considers:
· Trademark strength. The strength of Complainant’s mark;
· Congruence. Whether or not the at-issue domain name contains all or a portion of the trademark and whether; (1) the visual overlap, and/or 2) the verbal overlap between the two, is substantial or slight. But note that the addition of a generic term or arbitrary text to a trademark, cannot be a touchstone for confusing similarity, more is required. For instance, one would have little trouble acknowledging that a hypothetical second level domain name, DINNER, would not be confusingly similar the Complainant’s mark while the second level domain DINERSS would be. In the later case, the association of the mark with the trademark is relatively intact notwithstanding the addition of a single S. But in the former case the insertion of a single N not only changes the look and sound of the mark but also its meaning. Likewise, adding “BLUE” to the trademark SKY (automobile), does not lead to the conclusion that BLUESKY is confusingly similar to the SKY mark rather than just being a generic descriptor. As a rule, all else being equal, the more the domain name and trademark are alike visually and in sound when spoken, the more likely they may be confusingly similar.
· Spelling. Whether or not the at-issue domain name is a common or predicable misspelling of the at-issue trademark or whether or not the domain name contains a common or predicable misspelling of the at-issue mark; this factor considers that a misspelling might be recognized as referencing the trademark.
· Similarity of meaning. Whether and to what extent the Respondent’s addition to the trademark is vestigial and to what extent it alters the overall meaning of the trademark. Vestigial terms do little or nothing to alter the trademark’s meaning. An example might be XEROX12 or XXEROXX where although the mark is visually different and different in sound from the XEROX mark, the domain name nevertheless unambiguously conveys the XEROX mark. On the other hand, MYNEWXEROXPRINTER would be less likely to be to confused with the trademark XEROX, while XEROXSUPPORT might be more confusing.
· Suggestive reference. Whether or not and to what extent the differentiating text apart from its use in the domain name suggests or describes the services or goods covered by the trademark, or the trademark holder.
· Alternative reference. Whether or not the domain name predominantly appears to reference something other than the trademark.
· Context. Whether or not the domain name appears to be used in a trademark sense or in a descriptive sense in light of the domain names linking to material which may or may not suggest or describe the services or products covered by Complainant’s trademark.
Strength of the trademark. Although incontestable notable, DINERS is a technically a weak trademark as it is wholly comprised of a common dictionary term having descriptive value apart from its trademark usage. While the mark is not descriptive of Complainant’s credit card services covered by the mark, it is obliquely suggestive of those services. The DINERS mark is not exclusive to Complainant. There are many benign uses of the word DINERS that do not conflict with Complainant’s trademark rights. Because of the generic nature of the term DINERS the public is likely to understand the <contactdiners.com> outside of any reference to the credit card services of the Complainant.
Congruency. Panels generally hold that a slight modification to a trademark by the addition of a short term or a few letters is inconsequential for differentiating a mark from an at-issue domain name. As noted elsewhere the addition of short generic terms may fail to sufficiently differentiate a domain name from a trademark for the purposes of Policy 4(a)(i), but do not fail to do so in every case. Here, the trademark, a short common dictionary word is prefixed with another short dictionary word to form the domain name. The change is not insignificant as it doubles the length of the trademark string and changes the trademark's dictionary meaning.
Spelling. There are no spelling issues since Complainant’s trademark is undeniably contained in the domain name.
Similarity of meaning. The at-issue second level domain name may be described or understood in several ways such as: 1) CONTACTDINERS --a string of letter marks; 2) a concatenation of the dictionary word CONTACT and the dictionary word DINERS together creating the string CONTACTDINERS and the phrase CONTACT DINERS meaning to contact those who dine; 3) the concatenation of the dictionary word CONTACT and the trademark DINERS to make the phrase CONTACT DINERS meaning to contact DINERS (Complainants); 4) to contact diner style restaurants, as well as other meanings and understandings. Since there are several possible understanding of the domain name given the several dictionary definitions of “diner” and usages of “contact”, as illustrated above, this factor cuts against confusing similarity.
Suggestive reference. The prefix CONTACT is neither does not describe nor is it directly suggestive of credit card services. However, one might possibly read the domain name as a means to contact Complainant and thereby the domain name maybe understood to reference Complainant.
Alternative reference. As noted above, the domain name may understood to reference DINERS, people who dine, or DINERS, which are prefabricated restaurant building characteristic of North America or a restaurant serving the cuisine typically served in such diner building.
Context. The at-issue domain name links to a website
which apparently autonomously keys its third party advertising content based on
meaningful terms found therein. See http://contactdiners.com/
(accessed July 27, 2009). Upon
reviewing the website further, there is no indication that its changing content
predominantly relates to Complainant’s credit card services, although
understandably because of the generic nature of the trademark we might expect
to find references to the Complainant as DINERS CLUB or the DINERS club
appearing from time to time just as one might after entering the terms CONTACT
DINERS into a search engine.
After considering and weighing the factors discussed above, the Panel concludes that the at-issue domain name is not “confusingly similar” to the Complainant’s mark for the purposes of Policy ¶4(a)(i). That some people may be confused and that there is some degree of similarity between the <contactdiners.com> domain name and the DINERS trademark does not rise to the domain name’s being sufficiently confusingly similar to the mark to carry Complainant’s burden under the Policy.
Since Complainant has not satisfied Policy ¶ 4(a)(i) the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Paul M. DeCicco, Panelist
Dated: July 27, 2009
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