national arbitration forum

 

DECISION

 

Diners Club International Ltd. v. Asa Jessee

Claim Number: FA1011001360897

 

PARTIES

 

Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady, Jr. of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Asa Jessee (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <texomadinersclub.com>, registered with GoDaddy.com, Inc.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2010; the National Arbitration Forum received payment on December 1, 2010.

 

On November 30, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <texomadinersclub.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  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 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@texomadinersclub.com.  Also on December 1, 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 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <texomadinersclub.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark.

 

2.      Respondent does not have any rights or legitimate interests in the <texomadinersclub.com> domain name.

 

3.      Respondent registered and used the <texomadinersclub.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

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 cards.  The credit cards issued by Complainant are accepted in over 200 countries and at over 7.6 million locations, including rental car agencies, restaurants, museums and attractions, ticketing services, cruise lines and tour operators, etc.  Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the DINERS CLUB mark (Reg. No. 828,013 issued April 25, 1967).

 

Respondent, Asa Jessee, registered the <texomasdinersclub.com> domain name on January 12, 2010.  The disputed domain name resolves to a website promoting competing financial services and other unrelated products and services through pay-per-click links.

 

DISCUSSION

 

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.

 

Identical and/or Confusingly Similar

 

Complainant owns a trademark registration with the USPTO for the DINERS CLUB mark (Reg. No. 828,013 issued April 25, 1967).  The Panel finds that Complainant’s evidence of its USPTO registered trademark sufficiently proves Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).  See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”); see also Metropolitan Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority).

 

Complainant argues that Respondent’s <texamodinersclub.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark because the disputed domain name only modifies the mark with the deletion of the space between terms and the addition of the geographic term “texamo” (referring to the region along the Texas-Oklahoma border) and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the presence of a geographic term added to Complainant’s mark does not remove the disputed domain name from the realm of confusing similarity.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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.”).  The Panel also finds that the deletion of the space and the addition of the gTLD has no effect on a Policy ¶ 4(a)(i) analysis.  See American Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  Therefore, the Panel finds that Respondent’s <texamodinersclub.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark according to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name.  In accordance with Policy ¶ 4(a)(ii), 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 Dotmar, 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 American 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 alleges that Respondent has not been granted any license, permission or authorization to use Complainant’s DINERS CLUB mark in a domain name.  The WHOIS information for the <texamodinersclub.com> domain name lists the registrant as “Asa Jessee,” which has no apparent connection to the disputed domain name.  The Panel thus concludes that Respondent is not commonly known by the <texamodinersclub.com> domain name and consequently lacks rights and legitimate interests under 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 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 contends that Respondent’s <texamodinersclub.com> domain name resolves to a website which redirects Internet users to Complainant’s competitors and other unrelated websites through advertised pay-per-click 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see Bank of Am. Corp. v. Northwest 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.

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent’s <texamodinersclub.com> domain name redirects Internet users seeking Complainant to Complainant’s competitors.  The Panel finds that Respondent’s resolving website advertising pay-per-click 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 Prod. 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 <texamodinersclub.com> 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.

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <texomadinersclub.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  December 31, 2010

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page