national arbitration forum

 

DECISION

 

Diners Club International Ltd. v. Daina Trading Company Limited

Claim Number: FA1012001362620

 

PARTIES

Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Daina Trading Company Limited (“Respondent”), Seychelles.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dinerclub.com>, registered with DOTREGISTRAR.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 8, 2010; the National Arbitration Forum received payment on December 9, 2010.

 

On December 9, 2010, DOTREGISTRAR confirmed by e-mail to the National Arbitration Forum that the <dinerclub.com> domain name is registered with DOTREGISTRAR and that Respondent is the current registrant of the name.  DOTREGISTRAR has verified that Respondent is bound by the DOTREGISTRAR 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 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@dinerclub.com.  Also on December 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 January 5, 2011, 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.

 

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

 

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

 

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

 

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

 

FINDINGS

Complainant, Diners Club International Ltd., is a global provider of financial services including credit card services.  Complainant owns the DINERS CLUB mark and uses its mark in connection with its financial services offered.  Complainant holds a number of trademark registrations for its DINERS CLUB mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 828,013 issued April 25, 1967). 

 

Respondent, Daina Trading Company Limited, registered the <dinerclub.com> domain name on December 7, 1998.  Respondent uses the disputed domain name to operate a directory website which offers third-party links to credit card and financial services, some of which directly compete with Complainant.

 

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 maintains that it has established rights in its DINERS CLUB mark.  In Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), the panel decided that complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”  Complainant is not required to register its mark within the country of Respondent.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  Here, Complainant holds trademark registration for its DINERS CLUB mark with the USPTO (e.g., Reg. No. 828,013 issued April 25, 1967).  Therefore, the Panel finds that Complainant has established rights in the DINERS CLUB mark through its trademark registration according to Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <dinerclub.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark.  The disputed domain name differs from Complainant’s mark only through the deletion of the letter “s”, the deletion of the space between words of the mark, and the addition of a generic top-level domain (“gTLD”) “.com.”  The Panel finds the deletion of a single letter fails to properly distinguish the disputed domain name from Complainant’s mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).  The Panel also finds that the deletion of the space between words of a mark and the addition of a gTLD does not sufficiently distinguish the disputed domain name.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).  The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s DINERS CLUB mark under Policy ¶ 4(a)(i).

 

The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the <dinerclub.com> domain name.  In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel stated 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.  Here, Complainant has established a prima facie case that Respondent lacks rights and legitimate interests.  Given Respondent’s failure to provide any response to the Complaint, the Panel is free to assume that Respondent does not have rights and legitimate interests under Policy ¶ 4(a)(ii).  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).  However, the Panel will still look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant argues that Respondent is not commonly known by the <dinerclub.com> domain name.  The WHOIS information identifies Respondent as “Daina Trading Company Limited,” which is not similar to the disputed domain name.  Complainant also asserts that it has not granted Respondent any license, permission, or authorization to use its DINERS CLUB mark.  The Panel finds no additional evidence in the record that would indicate Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the <dinerclub.com> domain name pursuant to Policy ¶ 4(c)(ii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was 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).

 

The <dinerclub.com> domain name resolves to a directory website featuring links to third-party financial services which compete with Complainant.  Respondent likely receives click-through fees from these links.  The Panel finds that Respondent’s use of the confusingly similar disputed domain name to host a website promoting the services of Complainant’s competitors is 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s use of the <dinerclub.com> domain name disrupts its business.  Internet users planning to utilize Complainant’s financial or credit card services may be redirected to Respondent’s website due to Respondent’s use of the disputed domain name and users may purchase similar services from one of Complainant’s competitors instead.  The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business, which constitutes bad faith use and registration under Policy ¶ 4(b)(iv).   See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).

 

Respondent uses the <dinerclub.com> domain name to resolve to a website with third-party links to Complainant’s competitors in the financial services and credit card industry.  The Panel infers that Respondent receives click-through fees from these links.  Internet users looking for Complainant’s website may find Respondent’s website instead because of the confusingly similar disputed domain name.  This may lead to user confusion regarding Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving website, and third-party links.  Respondent attempts to profit from this confusion through the receipt of third-party links.  The Panel finds that Respondents use of the disputed domain name is evidence of bad faith use and registration under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); 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 the Policy ¶ 4(a)(iii) has been met.

 

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 <dinerclub.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  January 7, 2011

 

 

 

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