Diners Club International Ltd. v. Daniel Giacopelli
Claim Number: FA1011001360612
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Daniel Giacopelli (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <foodiedinersclub.com>, <foodiedinersclub.mobi>, <foodiesdinersclub.com>, and <foodiesdinersclub.mobi>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2010; the National Arbitration Forum received payment on November 30, 2010.
On November 30, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <foodiedinersclub.com>, <foodiedinersclub.mobi>, <foodiesdinersclub.com>, and <foodiesdinersclub.mobi> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 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@foodiedinersclub.com, postmaster@foodiedinersclub.mobi, postmaster@foodiesdinersclub.com, and postmaster@foodiesdinersclub.mobi. Also on December 2, 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 December 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 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 <foodiedinersclub.com>, <foodiedinersclub.mobi>, <foodiesdinersclub.com>, and <foodiesdinersclub.mobi> domain names are confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <foodiedinersclub.com>, <foodiedinersclub.mobi>, <foodiesdinersclub.com>, and <foodiesdinersclub.mobi> domain names.
3. Respondent registered and used the <foodiedinersclub.com>, <foodiedinersclub.mobi>, <foodiesdinersclub.com>, and <foodiesdinersclub.mobi> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club International Ltd., provides financial and credit card services to individuals, small businesses, and large corporations. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DINERS CLUB mark (e.g., 828,013 issued April 25, 1967).
Respondent, Daniel Giacopelli, registered the <foodiedinersclub.com>, <foodiedinersclub.mobi>, <foodiesdinersclub.com>, and <foodiesdinersclub.mobi> domain names on October 1, 2010. The disputed domain names resolve websites that display hyperlinks to third-party websites, some of which compete with Complainant’s business.
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 claims rights in the DINERS CLUB mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 828,013 issued April 25, 1967). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the DINERS CLUB mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant contends Respondent’s <foodiedinersclub.com>, <foodiedinersclub.mobi>, <foodiesdinersclub.com>, and <foodiesdinersclub.mobi> domain names are confusingly similar to its DINERS CLUB mark. Respondent fully incorporates Complainant’s mark in each of the disputed domain names and then merely omits the space between the words in the mark. Respondent also attaches the generic term “foodie” or “foodies” to Complainant’s mark in the disputed domain names. Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the <foodiedinersclub.com> and <foodiesdinersclub.com> domain names and the gTLD “.mobi” to Complainant’s mark in the <foodiedinersclub.mobi> and <foodiesdinersclub.mobi> domain names. The Panel finds that these slight alterations do not sufficiently distinguish Respondent’s domain names from Complainant’s mark. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also 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); see also Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”). Therefore, the Panel determines that the disputed domain names are confusingly similar to Complainant’s DINERS CLUB mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <foodiedinersclub.com>, <foodiedinersclub.mobi>, <foodiesdinersclub.com>, and <foodiesdinersclub.mobi> domain names under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. 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 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.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant asserts it has not granted Respondent any license, permission, or authorization to use its DINERS CLUB mark. Additionally, the WHOIS registrant information lists “Daniel Giacopelli” as the registrant of the disputed domain names, which the Panel finds is not similar to the <foodiedinersclub.com>, <foodiedinersclub.mobi>, <foodiesdinersclub.com>, and <foodiesdinersclub.mobi> domain names. Without evidence to the contrary, the Panel finds that Complainant’s assertion combined with the WHOIS information indicate that Respondent is not commonly known by the disputed domain names under 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 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 claims the disputed domain names resolve to pay-per-click website. Complainant submits screen shots of the resolving websites. These images show sites that display hyperlinks with titles like “American Express Pass,” “Credit Card Partnerships,” “Download Music for Free,” “Personal Executive Chef,” and “Indianapolis at 90% Off.” The Panel finds that Respondent’s domain names resolve to sites that list hyperlinks to third-party websites, some of which provide credit card services that compete with Complainant’s business. Moreover, the Panel presumes that Respondent profits from its use of the disputed domain names through the receipt of pay-per-click fees. Therefore, the Panel finds Respondent does not use the disputed domain names to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that the disputed domain names redirect Internet users to Respondent’s websites and that some of these sites display hyperlinks to Complainant’s competitors. Accordingly, the Panel determines that this behavior disrupts Complainant’s business, which constitutes registration and use in bad faith under 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant argues that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. As previously discussed, the <foodiedinersclub.com>, <foodiedinersclub.mobi>, <foodiesdinersclub.com>, and <foodiesdinersclub.mobi> domain names are confusingly similar to the DINERS CLUB mark. In addition, Respondent likely profits from its use of the disputed domain names through the receipt of pay-per-click fees. Therefore, the Panel agrees with Complainant’s argument and finds that Respondent has engaged in registration and use in bad faith under Policy ¶ 4(b)(iv). See 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)); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <foodiedinersclub.com>, <foodiedinersclub.mobi>, <foodiesdinersclub.com>, and <foodiesdinersclub.mobi> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 30, 2010
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