national arbitration forum

 

DECISION

 

Diners Club International Ltd. v. Kirti N. & Rohit N. Patel / for information

Claim Number: FA1105001390700

 

PARTIES

Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Kirti N. & Rohit N. Patel / for information (“Respondent”), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <getdinerscard.com>, registered with ENOM, 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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2011; the National Arbitration Forum received payment on May 26, 2011.

 

On May 26, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <getdinerscard.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name.  ENOM, INC. has verified that Respondent is bound by the ENOM, 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 May 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 2011 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@getdinerscard.com.  Also on May 27, 2011, 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 20, 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 <getdinerscard.com> domain name is confusingly similar to Complainant’s DINERS mark.

 

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

 

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

 

B.  Respondent failed to timely submit a Response in this proceeding and a belated letter received by the Forum from the Respondent was deemed by the Panel to be insufficient to constitute a Response.

 

FINDINGS

Complainant, Diners Club International Ltd., is the owner of the DINERS mark which it uses to provide financial services to individuals, small business, and large corporations through credit card services and other services. Complainant own a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,462,209 issued October 20, 1987) and with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,208,424 issued September 10, 1999).

 

Respondent, Kirti N. & Rohit N. Patel / for information, registered the disputed domain name on November 13, 2010. The disputed domain name resolves to a webpage which, prior to Complainant’s contact to the registrar, promoted Complainant’s competitors’ credit cards, and has since been used for pay-per-click advertisements of a general nature.

 

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 contends that it has established rights in the DINERS mark by way of trademark registration with the USTPO (Reg. No. 1,462,209 issued October 20, 1987) and UKIPO (Reg. No. 2,208,424 issued September 10, 1999). The Panel finds that Complainant has provided evidence of USPTO and UKIPO trademark registrations and has therefore established rights in the DINERS mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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 next contends that the <getdinerscard.com> domain name is confusingly similar to its DINERS mark. The addition of the generic top-level domain (“gTLD”) “.com” does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark”). The full-incorporation of Complainant’s mark with the addition of the generic term “get” and the descriptive term “card” is likewise insufficient to distinguish the disputed domain name. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks.  Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business”). The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s DINERS mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the <getdinerscard.com> domain name. After Complainant’s allegations are supported by a prima facie case being made, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names”). The Panel is authorized to determine that Respondent lacks rights and legitimate interests in the disputed domain name as a result of Respondent’s failure to respond to the Complaint. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel will, however, review the record to determine if Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant argues that Respondent is not commonly known by the disputed domain name. Previous panels have held that a respondent is not commonly known by a disputed domain name if there is no evidence in the record, including the WHOIS information, that would demonstrate that the respondent is commonly known by a disputed domain name. See 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); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The WHOIS information for the <getdinerscard.com> domain name identifies the registrant as “Kirti N. & Rohit N. Patel / for information.” There is nothing to suggest from this or the remaining WHOIS information and record that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <getdinerscard.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Respondent used to use the disputed domain name to promote Complainant’s competitors’ credit cards and now uses it for pay-per-click advertisements of a general nature. Respondent likely profited from the competing hyperlinks and currently profits from the general hyperlinks found on the disputed domain name. The use of a confusingly similar domain name to profit from this has traditionally been held to not constitute 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). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name 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 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)). The Panel finds that Respondent’s use of a confusingly similar domain name in order to profit from promotions of Complainant’s competitors’ web pages and pay-per-click advertisements is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

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

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s registration and former use of the disputed domain name is in direct competition with Complainant and thus disrupts Complainant’s business. Respondent’s use of the disputed domain name to promote Complainant’s competitors’ websites served to divert Internet users trying to reach Complainant, thus making Respondent a competitor. Previous panels have found that the registration and use of a domain name to disrupt another’s business constitutes bad faith. See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)). As such, the Panel finds that Respondent’s registration and former use of the disputed domain name constituted bad faith under Policy ¶ 4(b)(iii).

 

Respondent’s <getdinerscard.com> domain name used to resolve to promotions for Complainant’s competitors and currently resolves to general pay-per-click advertisements. Presumably, Respondent has profited from both uses of the webpage. Previous panels have found that the registration and use of a confusingly similar domain name for commercial gain is evidence of Policy ¶ 4(b)(iv) bad faith. 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 thus finds that Respondent’s use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iv).

 

The Panel finds that Policy ¶ 4(a)(iii) is 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 <getdinerscard.com> domain name be TRANSFERRED from Respondent to Complainant.

 

James A. Carmody, Esq., Panelist

Dated:  June 21, 2011

 

 

 

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