Diners Club International
Ltd. v. Mark Jenkins
Claim Number: FA0906001266752
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@contactdiners.com 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends as follows:
Complainant
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.
Respondent
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.
B. Respondent
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.
By
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
the
FINDINGS
Complainant
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.
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.
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.
Forum
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)).
DECISION
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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