Diners Club International Ltd. v. Steve Bateman / CCC
Claim Number: FA1601001658326
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Steve Bateman / CCC (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usadinersclub.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2016; the Forum received payment on January 28, 2016.
On January 28, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <usadinersclub.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 January 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2016 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@usadinersclub.com. Also on January 28, 2016, 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 February 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 <usadinersclub.com> domain name be transferred from Respondent to Complainant.
Complainant
Complainant uses the DINERS CLUB mark in connection with its business as a provider of financial services, including credit card services. Complainant has registered the DINERS CLUB mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 828,013, registered April 25, 1967), and has also registered the DINERS CLUB mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA174910, registered March 12, 1971). Respondent’s <usadinersclub.com> domain name is confusingly similar to the DINERS CLUB mark as it incorporates the mark entirely, while eliminating spacing between words of the mark, adds the geographic abbreviation “usa,” and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <usadinersclub.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use through the <usadinersclub.com> domain name. Rather, the domain name resolves to an inactive website. Previously, the domain name resolved to a website that prompted users to follow an “Enroll Now” link and enter personal information including social security numbers. The previous use of the domain name constitutes phishing, which is evidence that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent is using the <usadinersclub.com> domain name in bad faith. Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent is currently engaging in inactive holding of the domain name and resolving website, which is also evidence of bad faith registration and use. When Respondent registered and subsequently used the DINERS CLUB mark, which has gained significant goodwill and fame, Respondent had actual knowledge of the mark and Complainant’s rights in the mark, demonstrating bad faith under a non-exclusive analysis of Policy ¶ 4(a)(iii).
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <usadinersclub.com> domain name.
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(f), 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.”).
Complainant uses the DINERS CLUB mark in connection with its business as a provider of financial services, including credit card services. Complainant claims it has registered the DINERS CLUB mark with the USPTO (e.g., Reg. No. 828,013, registered April 25, 1967), as well as with CIPO (e.g., Reg. No. TMA174910, registered March 12, 1971). Panels have found that valid USPTO and CIPO trademarks registrations adequately demonstrate a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO). Therefore, the Panel finds that Complainant has demonstrated rights in the DINERS CLUB mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <usadinersclub.com> domain name is confusingly similar to the DINERS CLUB mark as it incorporates the mark entirely, while eliminating the spacing between words, and adds the geographic abbreviation “usa” and the gTLD “.com.” Panels have found such alterations to a mark to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <usadinersclub.com> domain name is confusingly similar to the DINERS CLUB mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 argues that Respondent has no rights or legitimate interests in the <usadinersclub.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the disputed domain name lists “Steve Bateman” as registrant. Complainant asserts that it has not given Respondent permission to use its DINERS CLUB mark. Respondent has not submitted a response to refute any of Complainant’s allegations. Therefore, in light of the available evidence, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <usadinersclub.com> domain name. The disputed domain name resolves to a website that states only, “This site does not exist within the LDAP database.” Past panels have found that inactive holding of a domain name without demonstrable preparations for use does not evince rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, the Panel finds that Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant contends that Respondent previously used the disputed domain name to resolve to a website advertising a company called “USA Diners Club.” The website offered coupons and discount programs for a variety of businesses. To access these alleged discounts, users purportedly were prompted to click an “Enroll Now” link, which redirected to another website that asked for contact information, including social security numbers, income levels, address, and marital status. Complainant argues that Respondent’s purported use of the domain name constitutes phishing, which past panels have found is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent’s use of the disputed domain name to phish for Internet users’ personal information does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and (iii).
Even when considering the previous resolving website on its own, Respondent has still sought to offer goods or services which compete with those offered by Complainant. The facts of this case are in accordance with Alcon, Inc. v. ARanked, FA1306493 (Nat. Arb. Forum Mar. 18, 2010), in which the panel found that capitalizing on the well-known marks of the complainant by attracting Internet users to disputed domain names where the respondent sold competing products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Respondent has submitted nothing to rebut Complainant’s contentions. Therefore, the Panel finds that no bona fide offering of goods or services exists through Respondent’s use of the resolving website, and that a legitimate noncommercial or fair use is not present pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant has proved this element.
Complainant argues that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant argues that Respondent was using the website to attract Internet users to its site for commercial gain because the disputed domain name resolved to a website that advertised goods and services that compete with those of Complainant, as well as attempting to phish for Internet users’ personal information. Past panels have found such use is evidence of registration and use in bad faith. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also The Royal Bank of Scotland Group plc and The Royal Bank of Scotland International Limited v. Yorgi Brawn, FA787945 (Nat. Arb. Forum Oct. 18, 2006) (finding disputed domain used for phishing purposes and disputed domain’s capability of creating a likelihood of confusion as to the source and affiliation of complainant was evidence of bad faith registration and use). Therefore, the Panel finds that Internet user confusion which subsequently results in the redirection to Respondent’s own site constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).
Complainant further contends that Respondent’s past use of the domain name to harvest personal user information such as social security numbers and addresses constitutes phishing. Past panels have found phishing to be evidence of bad faith registration and use according to Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use). The Panel finds that Respondent’s use of a domain name that is confusingly similar to Complainant’s mark in order to acquire personal information from internet users constitutes phishing, and is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Complainant also contends that Respondent’s inactive holding of the domain name and the resolving website constitutes bad faith registration and use per Policy ¶ 4(a)(iii). Complainant claims that the domain name resolves to a website showing a message saying “This site does not exist within the LDAP database.” Past panels have found inactive holding of a disputed domain name to qualify as bad faith use and registration. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Therefore, the Panel finds that Respondent’s inactive holding of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant contends that in light of the fame and notoriety of Complainant's DINERS CLUB mark, it is inconceivable that Respondent could have registered the <usadinersclub.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel finds Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <usadinersclub.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 29, 2016
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