Diners Club International Ltd. v. Miguel Valenzuela
Claim Number: FA1107001399767
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady, Jr. of Greenberg Traurig, LLP, Illinois, USA. Respondent is Miguel Valenzuela (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citydinerscard.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2011; the National Arbitration Forum received payment on July 21, 2011.
On July 21, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <citydinerscard.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 July 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@citydinerscard.com. Also on July 22, 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 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citydinerscard.com> domain name is confusingly similar to Complainant’s DINERS mark.
2. Respondent does not have any rights or legitimate interests in the <citydinerscard.com> domain name.
3. Respondent registered and used the <citydinerscard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club International Ltd., provides financial services, including credit card services, to individuals, small businesses, and large corporations. Complainant holds registrations for its DINERS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,462,209 registered October 20, 1987).
Respondent, Miguel Valenzuela, registered the <citydinerscard.com> domain name on December 18, 2010. The disputed domain name resolves to a website stating that a competing loyalty program is “coming soon.”
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 also contends that Respondent’s <citydinerscard.com> domain name is confusingly similar to its DINERS mark for the purposes of Policy ¶ 4(a)(i). Respondent alters Complainant’s mark through the addition of the terms “city” and “card,” as well as the addition of the generic top-level domain (“gTLD") “.com.” The Panel finds both the terms “city” and “card” to be generic terms relating to Complainant’s business, as “city” is a misspelling of Complainant’s former parent, “CitiGroup,” and the term “card” is merely a generic term relevant to the credit card industry. Past panels have found that such generic terms describing Complainant’s business cannot distinguish a disputed domain name under Policy ¶ 4(a)(i). 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)). Furthermore, the addition of the “.com” gTLD cannot defeat a finding of confusing similarity under Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). In light of these findings, the Panel holds Respondent’s <citydinerscard.com> domain name is confusingly similar to Complainant’s DINERS mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Previous panels have established the principle that Complainant carries the initial burden of presenting a prima facie case. Once this has been done, as is the case here, the burden shifts to Respondent, who then shoulders the burden of refuting Complainant’s allegations. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Respondent in this case has failed to produce a Response and has thus failed to meet its burden. Some panels have construed this as strong evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). This Panel will continue, however, to examine the record to determine whether such rights or legitimate interests do in fact exist.
Complainant alleges that Respondent is not commonly known by the <citydinerscard.com> domain name for the purposes of Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain name identifies the registrant as “Miguel Valenzuela,” which the Panel finds to bear no resemblance to the disputed domain name. Additionally, Complainant asserts that it neither licensed nor authorized Respondent to register the disputed domain name. Respondent’s failure to produce a Response in the immediate case renders Complainant’s claims undisputed, and absent any contrary evidence in the record, the Panel must hold that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a 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).
Respondent’s inactive holding of the disputed domain name further evidences its lack of rights or legitimate interests in the domain name. The disputed domain name currently resolves to a website stating that a competing loyalty program is “coming soon.” Upon being confronted by Complainant, Respondent conceded that it had no plans to actually use the disputed domain name in connection with the provision of any type of services. The Panel finds that this type of inactive holding cannot be used to demonstrate rights or legitimate interests in the disputed domain name as a bona fide use under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).
Moreover, the Panel construes Respondent’s offer to sell the disputed domain name to Complainant as evidence of Respondent’s lack of rights or legitimate interests in the <citydinerscard.com> domain name. In its April 21, 2011 email to Complainant, Respondent indicates that if Complainant is interested in the domain name at issue it is “more than welcome to purchase it”. The Panel holds that this sort of offer for sale further demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel also finds that Respondent’s offer to sell the <citydinerscard.com> domain name to Complainant constitutes registration and use in bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Finally, the Panel finds that Respondent’s inactive holding of the <citydinerscard.com> domain name further demonstrates Respondent’s registration and use of the domain name in bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citydinerscard.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 26, 2011
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