Diners Club International Ltd. v. Earick Allen / Allen & Associates
Claim Number: FA1512001650644
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Earick Allen / Allen & Associates (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <urbandinersclub.us>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 2, 2015; the Forum received payment on December 3, 2015.
On December 3, 2015, GoDaddy.com, Inc. confirmed by e-mail to the Forum that the <urbandinersclub.us> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@urbandinersclub.us. Also on December 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 December 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
Complainant uses the DINERS CLUB mark to market its financial services through various channels of trade.
Complainant holds a registration for the DINERS CLUB service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 4,424,062, registered October 29, 2013).
Respondent registered the domain name <urbandinersclub.us> on or about May 24, 2014.
The domain name is confusingly similar to Complainant’s DINERS CLUB mark.
Respondent has not been commonly known by the domain name.
Respondent has not been authorized by Complainant to register its DINERS CLUB mark or any variant of it in a domain name.
Respondent is not making a bona fide offering of goods or services via the domain name, nor a legitimate noncommercial or fair use of it.
Instead, the domain name resolves to an inactively held website displaying the message: “Website Coming Soon!”
Respondent has no rights to or legitimate interests in the domain name.
Respondent has used the <urbandinersclub.us> domain name as part of a pattern of bad faith domain name registrations.
Respondent knew of Complainant and its rights in the DINERS CLUB mark when it registered the domain name.
Respondent registered or uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it considers appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a complaint filed under the Policy 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.”
Complainant has rights in the DINERS CLUB service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Nat. Arb. Forum Aug. 4, 2015) (finding that a UDRP complainant’s USPTO registrations for the HAAS mark sufficiently demonstrated its rights in the mark under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <urbandinersclub.us> domain name is confusingly similar to Complainant’s DINERS CLUB mark. The domain name incorporates the mark in its entirety, merely eliminating the space between the terms of the mark and adding the generic term “urban” and the country code Top Level Domain (“ccTLD”) “.us.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Nat. Arb. Forum Aug. 12, 2015), declaring that:
Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).
See also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a UDRP complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Further see Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Nat. Arb. Forum June 19, 2015) (finding that the addition of “[t]he ccTLD “.us” designation is inconsequential to a Policy ¶ 4(a)(i) analysis.”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <urbandinersclub.us> domain name, and that Respondent has not been authorized by Complainant to register any variant of DINERS CLUB in a domain name. Moreover, the pertinent WHOIS information identifies the registrant only as “Earick Allen / Allen & Associates,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(iii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in UDRP ¶ 4(c)(ii) [the analog of usTLD ¶ 4(c)(iii)], where there was no evidence in the record, including the WHOIS information, showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services via the <urbandinersclub.us> domain name, nor a legitimate noncommercial or fair use of it so as to demonstrate that it has acquired rights to or legitimate interests in it as provided in Policy ¶¶ 4(c)(ii) and (iv), respectively, in that, although it has been held by Respondent for more than 18 months, the domain name resolves to a page which merely displays the message, “Website Coming Soon!” This inactive use of the domain name does not, in the circumstances, constitute either the provision of a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iv). See Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003), finding that: “Respondent's [failure to make an active use] of the … domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent knew of Complainant and its rights in the widely-known DINERS CLUB mark when it registered the contested <urbandinersclub.us> domain name. This stands as proof of Respondent’s bad faith in registering the domain name. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012):
Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).
In addition, we are convinced by the evidence that Respondent’s inactive holding of the <urbandinersclub.us> domain name for more than 18 months similarly demonstrates Respondent’s bad faith in its registration. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a UDRP respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered the domain name in bad faith).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <urbandinersclub.us> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 6, 2016
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