Diners Club International Ltd. v. AA7 GROUP LTD / Charlie Kalopungi
Claim Number: FA1010001353407
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is AA7 GROUP LTD / Charlie Kalopungi (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dinersclucus.com>, <dinersclib.com>, and <dinerscardusa.com>, registered with Moniker Online Services, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2010; the National Arbitration Forum received payment on October 21, 2010.
On October 21, 2010 Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <dinersclucus.com> and <dinersclib.com> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. On October 27, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <dinerscardusa.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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 postmaster@dinersclucus.com, postmaster@dinersclib.com, and postmaster@dinerscardusa.com. Also on November 3, 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 November 29, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dinersclucus.com>, <dinersclib.com>, and <dinerscardusa.com> domain names are confusingly similar to Complainant’s DINERS mark.
2. Respondent does not have any rights or legitimate interests in the <dinersclucus.com>, <dinersclib.com>, and <dinerscardusa.com> domain names.
3. Respondent registered and used the <dinersclucus.com>, <dinersclib.com>, and <dinerscardusa.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club International Ltd., is a provider of financial services to individuals, small businesses, and large corporations through many channels of trade, including credit card services. Complainant owns a United States Patent and Trademark Office (“USPTO”) trademark registration for the DINERS mark (Reg. No. 1,462,209 issued October 20, 1987).
Respondent, AA7 GROUP LTD / Charlie Kalopungi, registered the <dinerscardusa.com> domain name on May 29, 2010, the <dinersclucus.com> domain name on June 6, 2010, and the <dinersclib.com> domain name on May 15, 2010. The disputed domain names resolve to a website promoting competing advertising services.
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 argues that it has rights in the DINERS mark by virtue of its trademark registration with the USPTO (Reg. No. 1,462,209 issued October 20, 1987). The Panel finds that registration of a trademark with the USPTO sufficiently establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i), even when Respondent lives or operates in a different country. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that Respondent’s <dinerscardusa.com>, <dinersclucus.com>, and <dinersclib.com> domain names are confusingly similar to Complainant’s DINERS mark. Respondent’s disputed domain names all begin with Complainant’s DINERS mark and then add one or more of the following descriptive or geographic (and sometimes misspelled) terms: “card,” “usa,” “cluc, ” “us,” and “clib.” “Cluc” and “clib” are both misspelled versions of the word “club,” which is part of Complainant’s name. Additionally, the disputed domain names attach the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of one or more descriptive or geographic terms, including misspelled versions of such terms, is insufficient to prevent a finding of confusing similarity. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part). The Panel also finds that the presence of a gTLD does not affect a confusingly similar analysis. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds that Respondent’s <dinerscardusa.com>, <dinersclucus.com>, and <dinersclib.com> domain names are confusingly similar to Complainant’s DINERS mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), in order to shift the burden to Respondent to show rights and legitimate interests in the disputed domain names, Complainant must present a prima facie case in support of its allegations against Respondent. In the instant proceedings, the Panel finds that Complainant has adequately put forth such a case. Respondent, by failing to respond however, has failed to meet its burden, and thus has not shown rights and legitimate interests in the disputed domain names according to Policy ¶ 4(a)(ii). The Panel thus concludes that it may accept Complainant’s allegations as true. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “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 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.”). The Panel elects to consider all the evidence in record, however, in order to determine whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the <dinerscardusa.com>, <dinersclucus.com>, and <dinersclib.com> domain names. Complainant also asserts that it has not given Respondent any license, permission or authorization to register Complainant’s mark in the disputed domain names. The WHOIS information for the disputed domain names lists the registrant as “AA7 GROUP LTD / Charlie Kalopungi,” which the Panel finds has no association with the disputed domain names. The Panel thus concludes that Respondent is not commonly known by the disputed domain names and consequently lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent plans to use the <dinerscardusa.com>, <dinersclucus.com>, and <dinersclib.com> domain names to direct Internet users to a website promoting competing advertising services. Complainant argues, and the Panel agrees, that such use is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See 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).”); see also Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent has used Complainant’s DINERS mark in the registration of three different domain names. Complainant argues that registration of multiple domain names which infringe on Complainant’s mark constitutes a pattern of registration intended to prevent Complainant from reflecting its mark in corresponding domain names and therefore represents bad faith registration and use under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).
Complainant alleges that Respondent’s <dinerscardusa.com>, <dinersclucus.com>, and <dinersclib.com> domain names are intended to resolve to a website promoting competing advertising services. The Panel finds that using domain names appropriating Complainant’s mark to facilitate competition with Complainant is disruptive to Complainant’s business and demonstrates bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant contends that the website resolving from the <dinerscardusa.com>, <dinersclucus.com>, and <dinersclib.com> domain names offers competing advertising services. As a result, the resolving website likely generates commercial gain for Respondent. Complainant argues that Respondent registered these disputed domain names and specifically included Complainant’s mark in order to attract Internet users and create a likelihood of confusion between Complainant and Respondent. The Panel thus finds that Respondent’s activities indicate bad faith registration and use according to 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to 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 <dinersclucus.com>, <dinersclib.com>, and <dinerscardusa.com> domain names be TRANSFERRED.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret)
Dated: December 1, 2010
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