Diners Club International Ltd. v. Juan / N/A
Claim Number: FA1307001512304
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, United States. Respondent is Juan / N/A (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <diners.com.co>, registered with CENTRAL COMERCIALIZADORA DE INTERNET S.A.S.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2013. The National Arbitration Forum received payment on July 30, 2013. The Complaint was submitted in both Spanish and English.
On July 30, 2013, CENTRAL COMERCIALIZADORA DE INTERNET S.A.S confirmed by e-mail to the National Arbitration Forum that the <diners.com.co> domain name is registered with CENTRAL COMERCIALIZADORA DE INTERNET S.A.S and that Respondent is the current registrant of the name. CENTRAL COMERCIALIZADORA DE INTERNET S.A.S has verified that Respondent is bound by the CENTRAL COMERCIALIZADORA DE INTERNET S.A.S 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 7, 2013, the Forum served the Spanish language Complaint and all Annexes, including a Spanish language Written Notice of the Complaint, setting a deadline of August 27, 2013 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@diners.com.co. Also on August 7, 2013, the Spanish language 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Spanish language Complaint and Commencement Notification, and that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <diners.com.co> domain name is confusingly similar to Complainant’s DINERS mark.
2. Respondent does not have any rights or legitimate interests in the <diners.com.co> domain name.
3. Respondent registered and uses the <diners.com.co> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the DINERS mark, registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,462,209 registered October 20, 1987), and with the Spanish Patent and Trademark Office (“SPTO”) (e.g., Reg. No. 2,255,336 registered April 1, 2001).
Respondent first registered the <diners.com.co> domain name on February 15, 2010 and uses it to host hyperlinks to third-party websites, some of which directly compete with Complainant.
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:
(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.
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.”).
The Panel finds that Complainant has established its rights in the mark pursuant to Policy ¶ 4(a)(i) through the registrations of its DINERS mark with the USPTO and the SPTO. Previous panels have held that a complainant that has registered a mark with numerous government agencies around the world sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See, e.g., Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Respondent’s <diners.com.co> domain name is identical to its DINERS mark, since it fully incorporates Complainant’s DINERS mark and simply adds “.com” and the ccTLD “.co,” the country code for Columbia. Previous panels have held that a domain name’s addition of a ccTLD is irrelevant for the purpose of a confusing similarity analysis under the Policy. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Previous panels have also held that a disputed domain name’s addition of the generic term “.com” is insufficient to distinguish the domain name from a complainant’s mark. 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 the complainant combined with a generic word or term); see also Borders Props., Inc. v. Hewitt, FA 114618 (Nat. Arb. Forum July 23, 2002) (“The added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term . . . [t]herefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”). Similarly, previous panels have held that the presence or absence of punctuation in a domain name is irrelevant for the purposes of a confusing similarity analysis. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Accordingly, the Panel finds that the <diners.com.co> domain name is confusingly similar to Complainant’s DINERS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant first alleges that Respondent is not commonly known as <diners.com.co>, because the WHOIS information identifies the registrant of the disputed domain name as “Juan / N/A,” which suggests that Respondent is not known by <diners.com.co>. Complainant further argues that it has not authorized Respondent to use its DINERS mark in a domain name. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), a previous panel concluded 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 and the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent’s use of the disputed domain name is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), because the domain name resolves to a website that hosts hyperlinks to websites of third parties, some of which directly compete with Complainant. Previous panels have held that a respondent’s use of a disputed domain name to promote hyperlinks to third parties unrelated to the complainant does not constitute a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See, e.g., Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Therefore, the Panel finds that Respondent’s use of the <diners.com.co> domain name is unprotected as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <diners.com.co> domain name takes advantage of Complainant’s well-known DINERS mark to mislead Internet users seeking Complainant’s products or services, presumably for click-through fees from various third-party websites. In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), a previous panel held that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Accordingly, the Panel finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the DINERS mark because the website resolving from the disputed domain name links to third-party websites that directly compete with Complainant. The Panel notes that previous panels have found that, where the disputed domain name’s resolving website displays content with a clear relation to the complainant, the respondent’s actual knowledge of the complainant’s mark can be inferred. See, e.g., Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). The Panel finds that Respondent had actual knowledge of the mark, additional evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <diners.com.co> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 11, 2013
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