Diners Club International Ltd. v. Zakaria Nana
Claim Number: FA0807001213767
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <halaldinersclub.com> and <halaldinersclub.org>, registered with Network Solutions, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 7, 2008.
On July 3, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <halaldinersclub.com> and <halaldinersclub.org> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 July
15, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 4, 2008
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@halaldinersclub.com and postmaster@halaldinersclub.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <halaldinersclub.com> and <halaldinersclub.org> domain names are confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <halaldinersclub.com> and <halaldinersclub.org> domain names.
3. Respondent registered and used the <halaldinersclub.com> and <halaldinersclub.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an international provider of financial services to individuals, small businesses and large corporations through multiples channels of trade: chiefly credit card services. It has registered the DINERS mark in numerous jurisdictions worldwide, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,462,209 issued October 20, 1987) for credit card services.
Respondent registered the disputed domain names on January 18, 2007. The <halaldinersclub.com> and <halaldinersclub.org> domain names direct Internet users to websites promoting competing financial services.
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.
The Panel finds that Complainant has sufficiently
established rights under Policy ¶ 4(a)(i) in the DINERS mark through
registration with the USPTO. See
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); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb.
Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD
mark with the United States Patent and Trademark Office establishes the
complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
The <halaldinersclub.com> and <halaldinersclub.org> domain
names incorporate Complainant’s DINERS mark in its entirety along with
the term “halal” and the generic top-level domains (“gTLD”) “.com,” and
“.org.” It is well-established that the
inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip
Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding
that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,”
is irrelevant to a Policy ¶ 4(a)(i) analysis).
Moreover, the addition of the term “halal” does not adequately
distinguish a disputed domain names. See Westfield
Corp. v.
The Panel concludes that Complainant has satisfactorily established Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must meet its burden of
establishing a prima facie case that
Respondent lacks rights and legitimate interests in the <halaldinersclub.com>
and <halaldinersclub.org> domain
names before the obligation shifts to Respondent to prove its own rights
or legitimate interests in the disputed domain names. 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 names 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); see also AOL LLC v. Gerberg, FA 780200 (Nat.
Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”).
Complainant alleges that there is nothing in the record that
indicates that Respondent is or ever was commonly known by the <halaldinersclub.com>
and <halaldinersclub.org> domain
names. Complainant additionally
asserts that it has not granted Respondent any license, permission, or
authorization to use the DINERS mark in any way. Absent any additional information in the
record, the Panel finds that Respondent is not commonly known by the disputed
domain names pursuant to Policy ¶ 4(c)(ii).
See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum
Dec. 7, 2006) (finding that the respondent failed to establish rights and
legitimate interests in the <emitmortgage.com> domain name as the
respondent was not authorized to register domain names featuring the
complainant’s mark and failed to submit evidence of that it is commonly known
by the disputed domain name); see also
Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding
that the respondent was not commonly known by the disputed domain names where
it maintained the domain name registrations on the complainant’s behalf and
then appropriated the disputed domain names for itself, without permission from
the complainant).
The disputed domain names are being utilized to direct Internet users to websites promoting competing financial services. In a similar situation, the panel in Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001), found no rights or legitimate interests in a disputed domain names where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark. Likewise, other panels, such as that in Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003), have held that a respondent’s use of a disputed domain names to post links to commercial websites and subject Internet users to pop-up advertisements cannot be a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. Consequently, the Panel finds that Respondent is not using the <halaldinersclub.com> and <halaldinersclub.org> domain names in connection with either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ (c)(iii). See also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel concludes that Complainant has satisfactorily established Policy ¶ 4(a)(ii).
The disputed domain names contain a variety of links for and
advertisements of third-parties who compete with Complainant. The Panel finds this to be additional
evidence of Respondent’s bad faith registration and use of the <halaldinersclub.com>
and <halaldinersclub.org> domain
names pursuant to Policy ¶ 4(b)(iii).
See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA
724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent
registered and used the <classicmetalroofing.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the
respondent’s competing website); see also
Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (concluding that the use of a confusingly similar domain name to attract
Internet users to a directory website containing commercial links to the
websites of a complainant’s competitors represents bad faith registration and
use under Policy ¶ 4(b)(iii)).
Further, Complainant alleges that the disputed domain names
are being used to “intentionally attempt to attract, for commercial gain,
Internet users to Respondent’s website … by creating a likelihood of confusion
with the complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of Respondent’s website … or of a product or service on
Respondent’s website....” The sponsored
advertisements, commercial search engine, and links to competitors are presumed
to financially benefit Respondent. Therefore,
the Panel finds this to be further evidence of Respondent’s bad faith
registration and use of the <halaldinersclub.com> and <halaldinersclub.org> domain
names pursuant to Policy ¶ 4(b)(iv).
See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are
in the music and entertainment business.
The links associated with <billboard.tv> and <boogie.tv>
appear to be in competition for the same Internet users, which Complainants are
trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion
between <billboard.tv> and BILLBOARD as to the source, sponsorship,
affiliation, or endorsement of the web site or of a product or service on the
web site.”); see also Red Hat, Inc. v. Haecke, FA
726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in
bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the
disputed domain names to operate a commercial search engine with links to the
products of the complainant and to complainant’s competitors, as well as by
diverting Internet users to several other domain names).
The Panel concludes that Complainant has satisfactorily established 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 <halaldinersclub.com> and <halaldinersclub.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 12, 2008
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