national arbitration forum

 

DECISION

 

Diners Club International Ltd. v. Alex Mascola

Claim Number: FA1107001400858

 

PARTIES

Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Alex Mascola (“Respondent”), California, USA, acting Pro Se.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <casualdinersclub.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.

 

Richard DiSalle as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 28, 2011; the National Arbitration Forum received payment on July 29, 2011.

 

On July 30, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <casualdinersclub.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 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@casualdinersclub.com.  Also on August 3, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

 

On July 28, 2011, Complainant’s  Additional Submission was received.

 

A timely Response was received and determined to be complete on August 22, 2011.

 

On August 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.

 

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Diners Club is a leading provider of financial services to individuals, small businesses, and large corporations through many channels of trade, including but not limited to, credit card services.  The credit cards issued by Diners Club are accepted in over 200 countries and at over 7.6 million locations around the world.  The credit cards issued by Complainant are accepted at 800,000 ATMs and are issued in 64 local currencies. Complainant has over 8 million individual cardholders. Over half of the Fortune 500 companies hold corporate cards issued by Complainant.  Following receipt of Complainant’s demand letter, Respondent posted a “coming soon” website  indicating that it would shortly be launching a site which competes directly with Complainant, whose card issuers promote the dining services to others as part of the Diners Club reward program. Complainant has not given Respondent any license, permission, or authorization by which Respondent could make any use of any of its marks.  The Offending Domain is identical and confusingly similar to Complainant’s marks because it fully incorporates Complainant’s DINERS CLUB FAMILY marks.  Further, the Offending Domain is confusingly similar to Complainant’s DINERS CLUB FAMILY mark since the only difference is the addition of the generic term “casual.”  Respondent lacks rights or legitimate interest in the Offending Domain.  Respondent, who refers itself in the WHOIS database as “Domains by Proxy, Inc.”, has never been commonly known as “casualdinersclub.com” and has never used any trademark or service mark similar to the Offending Domain by which it may have come to be known, other than the infringing use noted herein.  Respondent has never operated any bona fide or legitimate business under the Offending Domain, and is not making a protected non-commercial or fair use of the Offending Domain.  Respondent registered and used the Offending Domain in bad faith.  At the time of registration of the domain name Respondent had at least constructive knowledge of the Complainant’s marks because of Complainant’s registration of its marks with the USPTO.  Respondent had actual knowledge of the Complainant’s marks as evidenced by Respondent’s use of the domain name in conjunction with a website that indicates that directly competing services are forthcoming.

 

B. Respondent

Respondent does not dispute that the Respondent registered the domain before receipt of Complainant 's letter (less than two months before). However, Respondent disputes that it was used as a pay-per-click advertising "scheme ". The landing page for the domain was GoDaddy's default landing page; assigned by GoDaddy. If that is considered a pay-per-click advertising "scheme ", there was no intent to do so by the Respondent.  The Complainant argues that the domain name in question is identical and confusingly similar to the Complainant's marks.  All of the terms in the domain name "casual", "diners", and "club" are generic. They are neither identical or confusingly similar.  The intent for the domain name is for a bona-fide service; as a public restaurant review blog. The premise for the site and service provided, is to give individuals a voice on their experiences associated with dining at casual restaurants and diners. The blog site is to be edited by a group of regular reviewers known as, The Casual DinersThis domain was not registered for purpose of selling, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of Respondent's documented out-of pocket costs directly related to the domain name.  By using the domain name, the Respondent has never intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark.

 

C. Complainant’s Additional Submissions

Respondent claims in various places that the content associated with this domain name consisting of pay-per-click ads, along with a link offering the domain name for sale, both published prior to receipt of Complainant’s demand letter were all published without “intent.” Respondent, who at the time that such content was published was hiding his identity behind a so-called “privacy service”, offers no evidence to support this claim.   Respondent’s next defense asks that the Examiner split the DINERS CLUB mark into its constituent elements and then re-examine the mark on that basis in an attempt to avoid a finding of confusing similarity. However, it is well settled that UDRP panelists do not re-examine trademarks issued by the USPTO.  Respondent then claims that his website will be used to allow third parties to blog about their restaurant experiences. Respondent provides no concrete evidence of any such intended use.

 

FINDINGS

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(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.

 

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."

 

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:

 

(4)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(5)  Respondent has no rights or legitimate interests in respect of the domain name; and

(6)  the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

The Panel finds that Complainant has established its rights in the DINERS CLUB mark under Policy ¶ 4(a)(i) by registering that mark with the USPTO.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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). 

 

Complainant also contends that Respondent’s <casualdinersclub.com> domain name is confusingly similar to its DINERS CLUB mark.  The Panel finds that the changes insufficiently differentiate the disputed domain name from Complainant’s mark, thereby making the two confusingly similar under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007). 

 

While Respondent contends that the <casualdinersclub.com> domain name is comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i).  This portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007).

 

Rights or Legitimate Interests

Complainant argues that Respondent is not commonly known by the disputed domain name.  Complainant submits the WHOIS information in support of its argument because it identifies the registrant of the disputed domain name as “Alex Mascola.”  Also, Respondent does not claim to be commonly known by the disputed domain name in its submissions.  Based upon this evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006).

 

 Complainant also argues that Respondent is not making a bona-fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  Complainant claims that Respondent’s disputed domain name initially resolved to a pay-per-click website offering links to third party businesses unrelated to Complainant’s business.  Therefore, the Panel concludes that Respondent is not engaging in a bona-fide offering of goods or services under Policy ¶ 4(a)(i) or making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(a)(iii). The Panel also finds that offering a competitive service or product from the disputed domain name does not qualify as a bona-fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.  See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005).

 

Registration and Use in Bad Faith

According to Complainant, the disputed domain name resolves to a website that offers gift cards and certificates which compete with its own product offerings which are targeted, in some respects, toward restaurants.  The Panel finds that Respondent’s current use is competitive and disrupts Complainant’s business, providing affirmative evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005).

 

Complainant asserts that Respondent gained commercially from its initial use of the disputed domain name, further indicating bad faith registration and use.  According to Complainant, and corroborated by Respondent, the disputed domain name resolved to a parked website which offered links to third parties unrelated to Complainant.  Complainant contends that whether Respondent actually collects that revenue from the linked sites or not is irrelevant to the bad faith analysis.  The Panel finds that Respondent’s actions support a finding of bad faith registration and use under Policy ¶ 4(b)(iv).

 

DECISION

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

 

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

 

Richard DiSalle, Panelist

Dated:  September 12, 2011

 

 

 

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