Diners Club International Ltd. v. Maho Jakotyc
Claim Number: FA1005001322445
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 <dinersclubusl.com>, registered with ABOVE.com PTY LTD.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2010.
On May 3, 2010, ABOVE.com PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <dinersclubusl.com> domain name is registered with ABOVE.com PTY LTD. and that Respondent is the current registrant of the name. ABOVE.com PTY LTD. has verified that Respondent is bound by the ABOVE.com PTY LTD. 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 May 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2010 by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on May 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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" through submission of a Written Notice, as defined in Rule 1. 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 <dinersclubusl.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <dinersclubusl.com> domain name.
3. Respondent registered and used the <dinersclubusl.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club International Ltd., is a provider of financial services, including credit card services, to individuals, small businesses, and large corporations around the world. Complainant owns trademark registrations for the DINERS CLUB marks in countries around the world, including with the Albanian Patents and Trademarks Office (“ALPTO”) (e.g., Reg. No. 8,507 registered June 28, 2001), IP Australia (e.g., Reg. No. 820,822 registered February 21, 2001), and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 828,013 issued April 25, 1967).
Respondent, Maho Jakotyc, registered the <dinersclubusl.com> domain name on February 12, 2010. The disputed domain name resolves to a website offering competing financial services in the form of third-party hyperlinks.
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.
Complainant owns trademark
registrations for the DINERS CLUB marks in countries around the world,
including with the ALPTO (e.g., Reg.
No. 8,507 registered June 28, 2001), IP Australia (e.g., Reg. No. 820,822 registered February 21, 2001), and the USPTO
(e.g., Reg. No. 828,013 issued April
25, 1967). Having provided evidence of
such trademark registrations in the
Complainant alleges that Respondent’s <dinersclubusl.com> domain name is
confusingly similar to Complainant’s DINERS CLUB mark. Respondent’s disputed domain name
appropriates Complainant’s full mark, making only minor alterations: it adds
the geographic abbreviation “us” and the letter “l,” deletes the space between
the terms, and attaches the generic top-level domain (“gTLD”) “.com.” The Panel finds that merely adding an
abbreviation of a geographic term fails to result in a domain name distinct
from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Gannett
Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that
a domain name consisting of a well-known mark, combined with a geographically
descriptive term or phrase, is confusingly similar to the mark.”); see also Dollar Fin. Group, Inc. v. Jewald
& Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6,
2001) (“The addition of ‘US’ or ‘
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. In accordance with Policy ¶ 4(a)(i), Complainant has presented a sufficient prima facie case against Respondent to subsequently transfer the burden to Respondent to demonstrate its rights and legitimate interests. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). As a result of Respondent’s failure to respond to the Complaint, however, the Panel may infer that Complainant’s allegations are true and that Respondent possesses no rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”). In the interest of making a complete determination on Respondent’s rights and legitimate interests, however, the Panel elects to consider the evidence presented according to the Policy ¶ 4(c) factors.
Complainant asserts that Respondent is neither authorized to use Complainant’s mark in the <dinersclubusl.com> disputed domain name nor is commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists the registrant as “Maho Jakotyc.” On a facial examination, the Panel concludes that there is no association between the disputed domain and Respondent that grants Respondent rights or legitimate interests in the disputed domain name according 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges that Respondent’s <dinersclubusl.com> disputed domain name resolves to a website with a primary function of redirecting Complainant’s customers to competitors through advertised third-party links. As it is presumed that these links generate pay-per-click revenue for Respondent, the Panel finds that such appropriation of Complainant’s mark for Respondent’s own commercial gain is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent’s <dinersclubusl.com> disputed domain name redirects Internet users seeking Complainant to Complainant’s competitors. The Panel finds that Respondent’s resolving webpage advertising links for competing financial services indicates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii) as the competing links displayed by Respondent are intended to disrupt Complainant’s business. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent uses Complainant’s DINERS CLUB mark in the disputed domain name and features links to competing products and services on the website resolving from the disputed domain name in an effort to confuse Internet users as to the affiliation between Complainant and Respondent and subsequently profit from that confusion. Complainant argues that Respondent intends to attract increased traffic to its website by using Complainant’s famous mark and benefit from higher profits when the pay-per-click links displayed on Respondent’s page are clicked. The Panel finds that Respondent’s activities in trading off Complainant’s fame to attract Internet users for commercial gain represent bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds 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 <dinersclubusl.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 11, 2010
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