Diners Club International Ltd. v. PrivacyProtect.org a/k/a Domain Admin
Claim Number: FA1107001396775
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is PrivacyProtect.org a/k/a Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dinersclublounges.com>, registered with Bargin Register, 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 Yachniin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2011; the National Arbitration Forum received payment on July 5, 2011.
After numerous requests, the Registrar, Bargin Register, Inc., has not confirmed to the National Arbitration Forum that the <dinersclublounges.com> domain name is registered with Bargin Register, Inc. or that Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On August 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@dinersclublounges.com. Also on August 3, 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 August 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dinersclublounges.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <dinersclublounges.com> domain name.
3. Respondent registered and used the <dinersclublounges.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club International Ltd., owns the DINERS CLUB mark that it registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 828,013 registered April 25, 1967). Complainant uses the DINERS CLUB mark in connection with credit card services, credit card user loyalty programs, assistance to travelers in the form of providing medical and legal referrals, recovery or replacement of lost or stolen travel documents, travelers checks, and credit cards.
Respondent, PrivacyProtect.org a/k/a Domain Admin, registered the <dinersclublounges.com> domain name on June 3, 2011. Respondent uses the disputed domain name to promote competing credit card services through a listing of pay-per-click links.
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 registered its DINERS CLUB mark with the USPTO (Reg. No. 828,013 registered April 25, 1967). As panels have repeatedly found a USPTO trademark registration to be conclusive evidence of rights in a mark, the Panel here determines that Complainant has proven that it owns the rights to the DINERS CLUB mark under Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <dinersclublounges.com> domain name begins with Complainant’s DINERS CLUB mark without the space between terms. Respondent then adds the term “lounges” and the generic top-level domain (“gTLD”) “.com.” In Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), a past panel determined that as spaces are impermissible in domain names and gTLDs are required, those two changes do not distinguish a disputed domain name from a mark. In Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005), and Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001), previous panels held that terms like “advisors” or “casino” added to a mark did not affect the confusingly similar analysis. Based on these precedential cases, the current Panel concludes that Respondent’s <dinersclublounges.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark pursuant to Policy ¶ 4(a)(ii), as none of the changes remove the disputed domain name from the realm of confusing similarity.
The Panel determines Policy ¶ 4(a)(i) is met.
According to the requirements of Policy ¶ 4(a)(ii), Complainant has the burden of presenting a prima facie case against Respondent in these proceedings. After such a prima facie case has been established, Respondent must bear the burden of proving its rights and legitimate interests in the disputed domain name. Complainant has satisfied this burden in these proceedings; Respondent, however, failed to respond. Respondent’s silence allows the Panel to make inferences that Complainant’s allegations are true and that Respondent accordingly lacks rights and legitimate interests in the disputed domain name. See 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.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel, however, elects to consider the record fully to determine whether Respondent possesses any rights and legitimate interests in the disputed domain name.
Complainant argues that there is no evidence in the record indicating that Respondent is commonly known by the <dinersclublounges.com> domain name. Complainant contends that Respondent has never used any trademark or service mark similar to the disputed domain name. In addition, Complainant has not granted Respondent any license, permission, or authorization to use the DINERS CLUB mark in any way, and the WHOIS information fails to reflect any connection between Respondent and the disputed domain name. Based on this evidence and Respondent’s failure to rebut it, the Panel holds that Respondent is not commonly known by the disputed domain name and does not possess rights and legitimate interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Complainant contends that when Internet users enter the <dinersclublounges.com> domain name, they are directed to a website unaffiliated with Complainant that offers competing credit card services. In Citigroup Inc. v. Horoshiy, Inc., FA 290633 (Nat. Arb. Forum August 11, 2004), the Panel stated, “Respondent’s use of domain names that are confusingly similar to Complainant’s CITIBANK marks to redirect Internet users interested in Complainant’s products to a commercial website that offers a search engine and products and services that compare with those offered by Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).” Similarly, the panel in Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) found that using a complainant’s mark to divert Internet users to a competing website did not establish rights and legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii). In line with these two cases, this Panel finds Respondent’s use of the <dinersclublounges.com> domain name to offer competing credit card services does not comport with the Policy ¶¶ 4(c)(i) and (iii) requirements for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel determines Policy ¶ 4(a)(ii) is met.
In displaying numerous links for “Mastercard,” “Business Credit Card,” “American Express,” “Apply for a Credit Card” and other related and unrelated topics/services, Respondent’s website at the <dinersclublounges.com> domain name provides a directory of competing credit card services and companies from which consumers—originally seeking Complainant—can choose. Although Complainant does not make the argument itself, the Panel finds that hosting these competing links under Complainant’s mark facilitates competition with Complainant and disrupts Complainant’s business, showing bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent registered the <dinersclublounges.com> domain name to intentionally attract consumers to its pay-per-click directory website that would create a likelihood of confusion as to the source, sponsorship, or affiliation of the resolving website. Complainant argues that Respondent designed the website in this way in hopes of commercially profiting from the diverted consumers and the pay-per-click fees they would generate. The Panel agrees with Complainant and previous panels in T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), and holds that such behavior is a clear example of bad faith registration and use as outlined in Policy ¶ 4(b)(iv).
Complainant also contends that at the time Respondent registered the <dinersclublounges.com> domain name, Respondent had both constructive and actual notice of Complainant’s mark. While Complainant bases its constructive notice argument on its USPTO trademark registration for the DINERS CLUB mark, panels have found that constructive notice is not sufficient to establish bad faith under Policy ¶ 4(a)(iii). Complainant additionally argues, however, that as Respondent incorporated Complainant’s entire DINERS CLUB mark in the disputed domain name and used the resolving website to display clearly related and competing services, Respondent had actual notice of Complainant’s mark and registered the disputed domain name intentionally because of the mark’s fame. The Panel agrees that the evidence supports a finding of actual notice on Respondent’s part and therefore determines that Respondent registered and is using the <dinersclublounges.com> domain name in bad faith under Policy ¶ 4(a)(iii) because of its knowledge of the mark. See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).
The Panel determines Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dinersclublounges.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 24, 2011
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