Diners Club International Ltd. v. Al
Powell
Claim
Number: FA0303000148166
Complainant is
Diners Club International, Chicago, IL (“Complainant”) represented
by Paul D. McGrady of Ladas & Parry, Digital Brands Practice.
Respondent is Al Powell, Laguna Hills, CA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dinersclubdiningguide.com> registered
with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 7, 2003; the Forum received a hard copy of the
Complaint on March 10, 2003.
On
March 10, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the Forum that the domain name <dinersclubdiningguide.com>
is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a
Internet Names Worldwide has verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
March 11, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 31, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@dinersclubdiningguide.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 8, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <dinersclubdiningguide.com>
domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or
legitimate interests in the <dinersclubdiningguide.com> domain
name.
3. Respondent registered and used the <dinersclubdiningguide.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a trademark registration with the United States Patent and Trademark Office
(“USPTO”) for the DINERS CLUB mark (Reg. No. 828,013 registered on April 25,
1967) related to the extension of credit to customers who purchase at
subscribing retail establishments. Complainant also holds numerous trademark
registrations that incorporate the DINERS CLUB mark in relation to various
services, including a program of restaurant discounts and dining guides.
Complainant
operates a website at <dinersclub.com> where Complainant’s customers can
access restaurant reviews or “dining guides” through this website.
Respondent
registered the <dinersclubdiningguide.com> domain name on July 7,
2000. Respondent is not using the domain name to resolve to a website.
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.
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 has
established its rights in the DINERS CLUB mark through registration with the
USPTO and continuous use in commerce for over 35 years.
Respondent’s <dinersclubdiningguide.com>
domain name is confusingly similar to Complainant’s DINERS CLUB mark because
the disputed domain name appropriates Complainant’s entire mark, adds the
generic term “dining guide” and adds the generic top-level domain (“gTLD”)
“.com” to the end of the mark. The addition of the generic term “dining guide”
to the end of Complainant’s registered mark creates a confusing similarity to
the mark because the term “dining guide” has an obvious relationship with
Complainant’s services. See Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity). Moreover, the
addition of a gTLD such as “.com” is not relevant to the confusingly similar
analysis pursuant to Policy ¶ 4(a)(i). See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO
Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical
to Complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants").
The Panel finds
that Policy ¶ 4(a)(i) has been established.
Respondent has
not presented the Panel with a Response in this proceeding. Thus, the Panel may
accept all reasonable inferences and allegations in the Complainant as true. See
Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June
17, 2002) (finding that in the absence of a Response the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence).
Furthermore, the
Panel may presume Respondent lacks any rights to or legitimate interests in the
disputed domain name when Respondent refuses to answer the Complainant’s
assertions that Respondent lacks any such rights or interests. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that under certain circumstances the mere assertion by Complainant
that Respondent has no right or legitimate interest is sufficient to shift the
burden of proof to Respondent to demonstrate that such a right or legitimate
interest does exist).
Respondent is
not using the <dinersclubdiningguide.com> domain name. The Panel
finds that Respondent has no rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii) because there is no evidence in the
record to establish Respondent’s rights to or legitimate interests in the
domain name and Respondent has made no use of the domain name since its
registration on July 7, 2000. See
Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or
legitimate interests where Respondent has advanced no basis on which the Panel
could conclude that it has a right or legitimate interest in the domain names,
and no use of the domain names has been established); see also Chanel, Inc. v. Heyward, D2000-1802
(WIPO Feb. 23, 2001) (finding no rights or legitimate interests where
“Respondent registered the domain name and did nothing with it”).
The Panel finds
that Policy ¶ 4(a)(ii) has been established.
It can be
inferred from the fame of Complainant’s mark that Respondent had knowledge of
the mark when Respondent registered the <dinersclubdiningguide.com>
domain name. Despite the fact that Respondent has not used the disputed domain
name, Respondent’s registration of the domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent knew or
should have known of Complainant’s DINERS CLUB mark. See Body Shop Int’l PLC v. CPIC NET &
Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent
failed to use the domain name and (2) it is clear that Respondent registered
the domain name as an opportunistic attempt to gain from the goodwill of the
Complainant); see also E. & J.
Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding
bad faith where (1) Respondent knew or should have known of the Complainant’s
famous GALLO marks and (2) Respondent made no use of the domain name
<winegallo.com>).
Moreover, when
contacted by Complainant, Respondent offered to sell the disputed domain name
registration for more than its out-of-pocket expenses. Respondent’s
communications indicate that it registered the <dinersclubdiningguide.com>
domain name primarily for the purpose of selling it to Complainant for valuable
consideration in excess of Respondent’s out-of-pocket costs directly related to
the domain name, which is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Marketing
Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes
an offer to sell a domain [name] bad faith is some accompanying evidence that
the domain name was registered because of its value that is in some way
dependent on the trademark of another, and then an offer to sell it to the trademark
owner or a competitor of the trademark owner"); see also Universal City Studios, Inc. v. Meeting
Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where the
Respondent made no use of the domain names except to offer them for sale to the
Complainant).
The Panel finds
that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <dinersclubdiningguide.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
April 14, 2003
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