Diners Club International Ltd. v. Value-Domain Com a/k/a Privacy Proxy a/k/a Value Domain
Claim Number: FA0911001296220
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 <dinersclubcard.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 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@dinersclubcard.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <dinersclubcard.net> domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <dinersclubcard.net> domain name.
3. Respondent registered and used the <dinersclubcard.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club
International Ltd., holds numerous trademark registrations with the United
States Patent and Trademark Office (“USPTO”)
for the DINERS CLUB mark (e.g.,
Reg. No. 828,013 issued April 25, 1967), the European Union Office of
Harmonization for the Internal Market (“OHIM”) for the DINERS CLUB mark (e.g., Reg. No. 2,903,045 issued May 25,
2005), and with the Japanese Trademark Office (e.g., Reg. No. 497,321 issued March 5, 1957) in connection with
credit card services.
Respondent, Value-Domain Com
a/k/a Privacy Proxy a/k/a Value Domain, registered the <dinersclubcard.net>
domain name on
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 July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Respondent, Value-Domain Com
a/k/a Privacy Proxy a/k/a Value Domain, registered the <dinersclubcard.net>
domain name on
Complainant argues that Respondent’s <dinersclubcard.net> domain name is confusingly
similar to Complainant’s DINERS CLUB mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is
confusingly similar to Complainant’s DINERS CLUB mark because Respondent’s
disputed domain name incorporates the entirety of Complainant’s mark, deletes
the space between the words, adds the generic term “card,” and the generic
top-level domain (“gTLD”) “.net.” The
Panel finds that the deletion of a space between the words in Complainant’s
mark does not distinguish the disputed domain name from a mark. See
George
Weston Bakeries Inc. v. McBroom, FA
933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space
between terms of a mark still rendered the <gwbakeries.mobi> domain name
identical to the complainant’s GW BAKERIES mark); see also Bond & Co.
Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat.
Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Value-Domain Com a/k/a Privacy Proxy a/k/a Value Domain.” Complainant has not given Respondent any license, permission, or authorization for Respondent to use Complainant’s mark. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <dinersclubcard.net>
domain name
was registered on
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of
the <dinersclubcard.net> to operate a click-through
website in competition with Complainant constitutes a disruption of
Complainant’s business and constitutes bad faith registration and use pursuant
to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum
Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also
Respondent’s use of the confusingly similar disputed domain
name in order to intentionally attract Internet users to its website by
creating a strong likelihood of confusion with Complainant’s DINERS CLUB mark
is further evidence of bad faith. The
Panel presumes Respondent is profiting through the receipt of click-through
fees for the competitive links published on the website resolving from the
disputed domain name. Therefore, the
Panel finds this use of the disputed domain names constitutes bad faith
registration and use under Policy ¶ 4(b)(iv). See
Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that
the respondent’s use of the <arizonashuttle.net> domain name, which
contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic
to the respondent’s website offering competing travel services violated Policy
¶ 4(b)(iv)); see also
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dinersclubcard.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 18, 2010
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