Diners Club International Ltd. v. SPS
a/k/a DCS a/k/a ADC
Claim
Number: FA0303000149414
Complainant is
Diners Club International Ltd., Chicago, IL, USA (“Complainant”) represented
by Paul D. McGrady, of Ladas & Parry, Digital Brands Practice.
Respondent is SPS a/k/a DCS a/k/a ADC, Haarlem, 2000 AC,
NL (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aboutdinersclub.com> and <dinersclubsucks.com>,
registered with Bulkregister.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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 14, 2003; the Forum received a hard copy of the
Complaint on March 17, 2003.
On
March 17, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that
the domain names <aboutdinersclub.com> and <dinersclubsucks.com>
are registered with Bulkregister.Com, Inc. and that Respondent is the current
registrant of the names. Bulkregister.Com, Inc. has verified that Respondent is
bound by the Bulkregister.Com, Inc. 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 18, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 7, 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@aboutdinersclub.com and
postmaster@dinersclubsucks.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 14, 2002, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aboutdinersclub.com>
and <dinersclubsucks.com> domain names are confusingly similar to
Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or
legitimate interests in the <aboutdinersclub.com> and <dinersclubsucks.com>
domain names.
3. Respondent registered and used the <aboutdinersclub.com>
and <dinersclubsucks.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Diners Club International, Ltd., is the owner of numerous trademarks and
services marks, all of which incorporate the DINERS CLUB mark, or some
variation thereof (e.g., DINERSCLUB). More specifically, Complainant holds the
following trademarks: France Reg. No. 99,808,591 for DINERS CLUB INTERNATIONAL
registered on January 28, 2000; Australian Reg. No. 820,822 for DINERS CLUB
registered on February 21, 2001; Austrian Reg. No. 185,392 for DINERS CLUB
INTERNATIONAL LTD. registered on December 28, 1999; United States Reg. No.
2,658,760 for DINERS CLUB INTERNATIONAL registered on the Principal Register on
December 10, 2002; and United States Reg. No. 828,013 for DINERS CLUB
registered on April 25, 1967.
Complainant has
also applied for registration of its mark in Albania, Bahrain,
Bosnia-Herzegovina, Bulgaria, Chile, El Salvador, Germany, India, Italy, Malta,
Morocco, Pakistan, and Taiwan, among others. The majority of Complainant’s
DINERS CLUB marks cover credit card services; credit card user loyalty
programs; and assistance to travelers in the form of providing medical and
legal referrals, recovery or replacement of travel documents. Additionally, for
most of the past decade Complainant has used the DINERS CLUB mark in
conjunction with a credit card program concerning restaurant discounts and
dining guides. Complainant has used the DINERS CLUB mark to identify its
products and services since 1965.
Complainant is a
leading provider of financial services to individuals, small businesses and
large corporations. Complainant’s credit cards are accepted in over 200
countries and at over 7.6 million locations around the world. Complainant is a
wholly owned subsidiary of Citigroup, a leading global financial services
organization. Complainant’s DINERS CLUB credit cards are accepted at 700,000
ATMs and are issued in 64 international currencies. Complainant has over 8
million individual DINERS CLUB cardholders. Over half of the Fortune 500
companies hold corporate cards issued by Complainant under the DINERS CLUB
mark. In 2001, Complainant’s DINERS CLUB mark produced sales of related
products and services upwards of $31 billion.
Due to
Complainant’s extensive marketing of its DINERS CLUB products and related
services, the mark has become famous and readily identifies Complainant’s offerings.
Respondent, SPS
a/k/a DCS a/k/a ADC, registered <aboutdinersclub.com> and <dinersclubsucks.com>
on May 26, 2001 and March 1, 2003, respectively. Complainant’s investigation of
Respondent’s use of the subject domain names indicates that the domain names
currently do not resolve to a website, and that Respondent makes no use of the
domain names. However, “Respondent is a pornographer and has made it clear that
it will put these domains to its use unless paid by Complainant.” Respondent’s
correspondence to Complainant states:
Personally,
I exploit primarily erotic flavored Internet sites and am in contact with
hundreds of similar firms, worldwide . . . If Diners Club is only aiming at
acquiring the domain name or both domain names without any compensation, I
request you to act accordingly and take legal action without any further
contact with me or my company.
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 rights in the DINERS CLUB mark through registration with various
international trademark authorities and continuous use of the mark in commerce
since 1965.
Respondent’s <aboutdinersclub.com>
and <dinersclubsucks.com> domain names are confusingly similar
to Complainant’s DINERS CLUB mark. Respondent’s domain name incorporates
Complainant’s famous mark in its entirety. Respondent merely adds suggestive
generic words to Complainant’s mark, which fails to create a distinguishable
second-level domain under the Policy. Complainant’s mark remains the dominant
element in Respondent’s domain names, and the focus centers on the DINERS CLUB
mark. Therefore, Respondent’s domain names are confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Additionally,
the presence of top-level domains, such as “.com,” is inconsequential when
conducting an analysis under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top-level of the domain name such as “.net” or “.com” does not
affect the domain name for the purpose of determining whether it is identical
or confusingly similar).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
did not respond to Complainant’s submission, thereby failing to fulfill its
burden of demonstrating rights or legitimate interests in the subject domain
names. Respondent’s failure to respond allows all reasonable inferences made by
Complainant to be regarded as true, unless clearly contradicted by the
evidence. 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 in respect of the domain name, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Moreover,
Respondent’s failure to submit evidence of circumstances that may suggest it
has rights or legitimate interests in the disputed domain names corroborates
Complainant’s assertions that Respondent has none. See Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed); see also 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).
Uncontested
evidence indicates that Respondent has made no use of the domain names, except
to use the registrations as leverage in order to bargain with Complainant over
their sale. Respondent’s correspondence with Complainant indicates that
Respondent is engaged in pornography. Further, Respondent’s fax indicates that
it will seek to tarnish Complainant’s DINERS CLUB mark, and the goodwill
contained therein, by linking the subject domain names to pornographic material
unless Complainant offers some form of compensation. The circumstances
surrounding Respondent’s registration reveal that Respondent intends to sell
its rights in the domain names. Respondent’s willingness to dispose of the
domain name registrations suggests that it lacks rights in the domain names
under Policy ¶ 4(c)(i). See Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding
Respondent’s conduct purporting to sell the domain name suggests it has no
legitimate use); see also Skipton
Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in
a domain name where Respondent offered the infringing domain name for sale and
the evidence suggests that anyone approaching this domain name through the
world-wide web would be "misleadingly" diverted to other sites).
No evidence
suggests Respondent is commonly known by the <aboutdinersclub.com> and
<dinersclubsucks.com> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant is the senior user of the DINERS CLUB family of marks, and
Respondent appears to be holding Complainant hostage through a disguised
threat. Further, Respondent’s WHOIS information fails to reference the DINERS
CLUB mark or an affiliation with Complainant of any kind. 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 Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was
not commonly known by the mark and never applied for a license or permission
from Complainant to use the trademarked name).
Respondent’s
second-level domains (i.e., “aboutdinersclub” and “dinersclubsucks”) suggest
Respondent has a noncommercial purpose for the domain names. However,
Respondent has failed to submit a plan to the Panel that establishes the
development of legitimate websites. Moreover, previous panels have determined
that a respondent cannot identify itself by another’s mark where the mark is
famous, despite noncommercial intentions. Therefore, Respondent fails to
establish rights in the domain names under Policy ¶ 4(c)(iii). See Vivendi
Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding no rights or
legitimate interests from Respondent's alleged "free speech" use of
the domain name <vivendiuniversalsucks.com>, which fully incorporated
Complainant's VIVENDI UNIVERSAL mark, because the domain name was passively
held); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no
rights or legitimate interests in respect of the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Factual
circumstances indicate that Respondent registered the domain names in bad faith
because it had knowledge of Complainant’s DINERS CLUB mark prior to registering
the infringing domain names. Not only is Complainant’s DINERS CLUB mark
represented by a plethora of international trademark registrations, but
Complainant’s mark and corresponding services are responsible for billions of
dollars in annual revenues. The nature of Respondent’s domain names also
suggests Respondent had knowledge of Complainant’s rights in the DINERS CLUB
mark because the domain names indicate critical commentary. For the above
reasons, the Panel infers that Respondent was at least constructively, if not
actually aware of Complainant’s mark prior to registering the domain names.
Respondent’s registration of <aboutdinersclub.com>
and <dinersclubsucks.com>, despite knowledge of Complainant’s
rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in
light of the notoriety of Complainants' famous marks, Respondent had actual or
constructive knowledge of the BODY BY VICTORIA marks at the time she registered
the disputed domain name and such knowledge constituted bad faith); see also
Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding bad
faith because Respondents had prior knowledge of Complainant's VIVENDI
UNIVERSAL mark and deliberately chose to register a domain name that
incorporated that mark in its entirety with the word "sucks").
Complainant’s
submission reveals that Respondent registered the infringing domain names
primarily for the purpose of selling, or otherwise transferring the
registrations to Complainant; therefore, Respondent’s actions constitute bad
faith pursuant to Policy ¶ 4(b)(i). Respondent’s correspondence with
Complainant illustrates this statement because Respondent states it will not
transfer the domain name registrations without “compensation.” Conditions
surrounding Respondent’s registration, such as its passive holding of the
domain names and suggestive statements, permit the inference that Respondent
used the domain names in bad faith under the Policy. See Cruzeiro Licenciamentos Ltda v. Sallen,
D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain
name can qualify as bad faith if the domain name owner’s conduct creates the
impression that the name is for sale); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000)
(finding that a general offer of sale combined with no legitimate use of the
domain name constitutes registration and use in bad faith).
Additionally,
although passive holding is usually not a determinative factor in finding bad
faith when the domain name has been registered relatively recently, the present
dispute contains circumstances that reinforce such a finding. Specifically,
Respondent registered the <dinersclubsucks.com> domain name on
March 1, 2003. Factors that support the Panel’s finding of bad faith regarding
this domain name are: Respondent’s suggestive statements to Complainant
indicating it was interested in selling its rights in the domain name; the fact
that the domain name incorporates Complainant’s entire mark; and Respondent did
not submit materials providing an explanation that supported future legitimate
use. See E. & J. Gallo Winery
v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that
establishing a legitimate free speech/complaint site does not give rights to
use a famous mark in its entirety); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000)
(finding bad faith even though Respondent has not used the domain name because
“It makes no sense whatever to wait until it actually ‘uses’ the name, when
inevitably, when there is such use, it will create the confusion described in
the Policy”); see also Alitalia
–Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23,
2000) (finding bad faith where Respondent made no use of the domain name in
question and there are no other indications that Respondent could have
registered and used the domain name in question for any non-infringing
purpose).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <aboutdinersclub.com> and <dinersclubsucks.com>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
April 21, 2003
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