Diners Club International Ltd. v. Alma Lugtu
Claim Number: FA1501001602774
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, United States. Respondent is Alma Lugtu (“Respondent”), Colorado, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <financialdinnerclub.com>, <financialdinnerclub.net>, <thefinancialdinnerclub.com>, and <thefinancialdinnerclub.net> ('the Domain Names'), registered with GODADDY.COM, LLC.
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.
<<Dawn Osborne>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2015; the Forum received payment on February 2, 2015.
On February 2, 2015, GODADDY.COM, LLC confirmed by e-mail to the Forum that the <financialdinnerclub.com>, <financialdinnerclub.net>, <thefinancialdinnerclub.com>, and <thefinancialdinnerclub.net> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 February 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2015 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@financialdinnerclub.com, postmaster@financialdinnerclub.net, postmaster@thefinancialdinnerclub.com, as well as postmaster@thefinancialdinnerclub.net. Also on February 3, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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" 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 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
The Complainant's contentions can be summarised as follows:
The Complainant is the owner of trade mark registrations for DINERS CLUB and DINERS CLUB INTERNATIONAL for financial services in the USA. Its credit cards are accepted in over 200 countries and the Complainant has over 8 million card holders.
The Complainant offers loyalty programs with many well-known restaurants which have received awards.
Respondent registered the Domain Names on July 21, 2007 well after Complainant began extensive marketing of its services under its marks around the world.
The Domain Names resolve to pages featuring payperclick advertisements. for financial services some of which are the Complainant's direct competitors.
The Domain Names are confusingly similar to the Complainant’s marks because they incorporate the Complainant’s DINERS CLUB mark dropping only an 's' and adding an 'n' and adding the descriptive term 'financial' and the generic term 'the'. Financial describes the services available to the Complainant’s customers. These minor changes do nothing to distinguish the Domain Names from Complainant’s DINERS CLUB marks.
The Respondent lacks rights or legitimate interests in the Domain Names. It has never been commonly known by them and has never used any trade mark similar to the Domain Names other than the infringing use complained of in this Complaint. Respondent has never operated any bona fide or legitimate business under the Domain Names and is not making non-commercial or fair use of them. Complainant has not granted Respondent any authorisation to use the Domain Names.
The fact that the Respondent had actual knowledge of the Complainant's marks is shown by its use in relation to competing services.
The Domain Names are currently used in conjunction with payperclick advertising schemes that feature advertisements for the Complainant’s competitors and have been used to intentionally attempt to attract for commercial gain Internet users to Respondent's web sites or other on line locations by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent's web sites or location of a product or service on its web site. This also constitutes deliberate disruption of the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Domain Names were registered in 2007 and have been used to point to payperclick advertising which has no connection with the Complainant including advertisements for the Complainant’s competitors and for 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."
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.”).
Identical or Confusingly Similar
The Domain Names consist of misspellings of the Complainant's DINERS CLUB mark, with generic terms 'financial' and/or 'the' and the gTLDs .com or .net added.
Noting Diners Club International Ltd. v My First Car ltd FA 070500 (Nat. Arb. Forum June 11, 2007)(finding that the domain name dinnerclubinternational.com was confusingly similar to the DINERS CLUB INTERNATIONAL mark owner by the Complainant because the name merely alters DINERS to ‘dinner’ and Complainant’s mark remains the dominant portion of the disputed domain name and Reuters Ltd. v Global Net 2000 Inc. D2000-04441 (WIPO July 13, 2000)(finding that a domain name which differs by only one letter from the trade mark has a greater tendency to be confusingly similar to a trade mark where it is highly distinctive.) The Panel agrees that the misspelling alterations to the Complainant's mark do not negate the confusingly similar nature of the Domain Name to the Complainant’s registered trade mark pursuant to the Policy.
Noting: Warner Bros Entm't Inc. v Sadler FA 250236 (Nat. Arb. Forum May 19, 2004) (finding that addition of generic terms to Complainant's mark failed to alleviate the confusing similarity between the mark and the domain names).
See also Am. Int'l Group Inc. v Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec 15, 2003) (finding that the addition of the term 'assurance' to the Complaint's AIG mark failed to sufficiently differentiate the name from the mark under Policy 4 (a)(i) because the appended term directly related to the Complainant's business).
See also Marriot Int'l Inc. v Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002) (The addition of the article 'the' to the beginning of the Domain Names fails to make them separate and distinct as distinguishable from the Complainant’s marks)
The Panel finds that nor do the additions of the generic terms ‘the’ and ‘financial’ to confusingly similar names to the Complainant’s registered trade mark negate the confusingly similar nature of the Domain Names to the Complainant’s registered trade mark pursuant to the Policy.
Further, the addition of gTLDS .net and .com do not serve to distinguish the Domain Names from the Complainant’s mark See Bond & Co. Jewellers, Inc. v Tex. Int'l Prop. Assocs., FA 937650 (Nat Arb Forum Apr 30, 2007)(finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the Complainant’s mark under Policy 4(a)(i).)
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Respondent has not responded and given any reasons for its registration and use of the Domain Names. Respondent does not appear to be commonly known by the Domain Names. Complainant has not authorised the use of its mark and the Respondent does not appear to be connected with the Complainant in any way.
The Domain Names have been used to link to pay-per-click advertising for other third party commercial web sites including financial services. The Panel notes Disney Enters. Inc. v Kamble FA 918556 (Nat Arb. Forum Mar 27 2007) (holding that the operation of a payperclick website at a confusingly similar domain name was neither a bona fide offering of goods and services nor a legitimate non-commercial or fair use of the disputed domain names.)
The Panel thus concludes that there is no rights or legitimate interests in the Domain Names under para 4 (c) (i) or (iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <financialdinnerclub.com>, <financialdinnerclub.net>, <thefinancialdinnerclub.com>, and <thefinancialdinnerclub.net> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 17, 2015
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