Diners Club International Ltd. v. GDC Enterprises
Claim Number: FA0908001280221
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 <austindinersclub.com>, registered with Wild West Domains, Inc.
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.
Joel M. Grossman, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received and determined to be complete on
On September 15, 2009 Complainant timely filed an Additional Submission.
On September 14, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant first asserts that it has multiple trademark registrations
in the “Diners Club” mark, which is a famous mark recognized worldwide for
financial services including credit cards. Complainant further claims that the
domain name at issue is confusingly similar to its mark as it wholly
incorporates the mark, adding only the geographic descriptive term “
Complainant next contends that Respondent has no rights or legitimate interests in the domain name, noting (a) that Respondent is not commonly known by the name; (b) Respondent has not operated a bona fide or legitimate business using the name; (c) that Respondent is using the domain name for an improper purpose, diverting users to its website which competes with Complainant’s advertising services; and (d) that Complainant has not granted permission or any license to Respondent to use Complainant’s mark.
Finally, Complainant contends that Respondent registered the domain name and used the domain name in bad faith. Complainant asserts that at a minimum Respondent had constructive knowledge of Complainant’s very famous mark, as a search of trademarks would easily have revealed the mark. In addition, the domain name has been used to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source of the domain name. Specifically, Complainant alleges that Respondent is using the domain name to sell restaurant advertising services in competition with Complainant. Further, Complainant has registered forty other similar domain names, each with a geographic location and Complainant’s “Diners Club” mark, in an obvious attempt to preclude Complainant from having websites with the specific geographic references selected by Respondent.
On the issue of confusingly similar domain name, Respondent contends
that the domain name is not confusingly similar to Complainant’s mark, noting
that two generic English words—diners and club—are part of the domain name, and
the domain name connotes a club for private dining in
Second, Respondent contends that it is using the name for a bona fide offering
of goods and services, namely for its dining club, through which Austin
residents-who pay a fee to join the club-- can enjoy fine dining at a discount.
On its website Respondent includes a section called “About us,” which states
that its mission is to “experience and explore fine dining in many wonderful
restaurants in and around
Apart from defending itself from Complainant’s assertions, Respondent alleges that Complainant is engaged in reverse domain name hijacking.
C. Additional Submissions
In Complainant’s Additional Submission it seeks to rebut points made by Respondent in the Response and reinforce points made in the Complaint. Once again Complainant asserts that Respondent’s advertising on its website directly competes with Complainant’s advertising business. Complainant also asserts that its mark is not generic, given the fact that it has been registered by the USPTO. Complainant also restates its position that Respondent is not engaged in the bona fide offering of goods or services since it is using a domain name for an infringing purpose, specifically diverting Internet users to Respondent’s website which competes with Complainant’s advertising services.
The Panel finds that (a) the domain name is identical to or confusingly similar to a mark in which Complainant has rights; (b) Respondent has rights or legitimate interests in the name; and (c) that the name was not registered and is not being used in bad faith.
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 does have rights or legitimate interests in respect of the domain name; and
(3) the domain name has not been registered and is not being used in bad faith.
First, the Panel finds that Complainant’s
registered federal trademarks amply demonstrate its rights in the “Diners Club”
mark, and that it is a famous mark. The Panel further finds that the domain
name—which incorporates the entirety of the mark, adding only a geographic
location—is confusingly similar to the mark, and Internet Users searching for
Complainant’s products could be confused as to the source of the domain name,
or whether Complainant is in any manner affiliated with Respondent’s business.
For example, users could come to believe that the term “Austin Diners Club”
could be affiliated with Complainant, and could provide a list of restaurants
or other services in
It is first noted that Complainant has the
burden of making a prima facie case
that Respondent lacks rights and legitimate interests in the domain name. Only
if Complainant can make such a case does the burden shift to Respondent. See Hanna-Barbera Prods., Inc. v. Entm’t
Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). In arguing this
point, Complainant asserts that Respondent is not commonly known by the Diners
Club mark. Of course, however, that is not the test; the test is whether
Respondent is commonly known by the domain name, <austindinersclub.com>. Respondent points out that it is
indeed commonly known by the name, and cites both news articles and its
founder’s appearance on a local radio program to promote the business, all
using the name Austin Diners Club. The
Panel concludes that Respondent has provided evidence that it is commonly known
by the domain name. See Creative Software
Specialists v. Printers Plus, FA 1251542 (Nat. Arb. Forum April 29, 2009).
Complainant also points out that the domain name leads to a website which
contains advertising for various
Respondent argues, and the Panel agrees, that it cannot be acting in bad faith because it has rights and legitimate interests in the domain name. The Panel has determined that Respondent has rights and legitimate interests in the name and therefore concludes that the name was not registered and is not being used in bad faith. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith was moot once the panel had determined that the respondent had rights and legitimate interests in the name). The Panel concludes that given the legitimate uses of the domain name for the bona fide offering of goods and services, Respondent did not register or use the domain name in bad faith.
Reverse Domain Name Hijacking
Respondent asserts that Complainant is engaged in reverse domain name hijacking. While the Panel has not ruled in favor of Complainant, it does not see any evidence of bad faith or impropriety in Complainant’s zealous protection of its trademark. Moreover, the Panel has found in favor of Complainant on one of the three elements of the Policy. The Panel therefore rejects a claim of reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (rejecting claim of reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” element, as Complainant has in the instant matter).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED
Accordingly, it is Ordered that the <austindinersclub.com> domain name not be transferred from Respondent to Complainant.
Joel M. Grossman, Esq., Panelist
Dated: September 25, 2009
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