Diners Club International Ltd. v. Car In
Won Australia pty Ltd
Claim
Number: FA0410000338427
Complainant is Diners Club International Ltd. (“Complainant”),
represented by Paul D. McGrady of Ladas & Parry,
224 South Michigan Avenue, Chicago, IL, 60604.
Respondent is Car In Won
Australia pty Ltd. (“Respondent”), 4 Goonyah Crt Greensborough, Melbourne,
Victoria 3088, Australia.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com>,
registered with Go Daddy Software, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically October 1, 2004; the Forum received a hard copy of the Complaint
October 4, 2004.
On
October 5, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com>
are registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. Go Daddy Software, Inc. verified that Respondent is
bound by the Go Daddy Software, 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
October 5, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 25, 2004, 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@dinersclubgiftvouchers.com and
postmaster@dinersclubgiftcertificates.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 29, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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 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. The domain names Respondent registered, <dinersclubgiftvouchers.com>
and <dinersclubgiftcertificates.com>, are confusingly similar
to Complainant’s DINERS CLUB mark.
2. Respondent has no rights to or legitimate
interests in the <dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com>
domain names.
3. Respondent registered and used the <dinersclubgiftvouchers.com>
and <dinersclubgiftcertificates.com> domain names in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
established by extrinsic proof in this proceeding that it owns numerous
registrations for the DINERS CLUB mark with governing authorities all across
the world, including Albania (Reg. No. 2000/00026, issued Sept. 5, 2001),
Australia (Reg. No. 820,822, issued Feb. 21, 2001), Bahrain (Reg. No. SM 3423,
issued Jan. 26, 2000), Chile (Reg. No. 562,638, issued June 6, 2000), and the
United States (Reg. No. 828,013, issued Apr. 25, 1967), among others. The DINERS CLUB mark is used to identify the
source of Complainant’s services, which include the “extension of credit to
customers who purchase at subscribing retail establishments and making
collections from such customers through a central billing system,” as well as
“credit card services, assistance to travellers (sic) in the form of recovery
or replacement of lost or stolen travel documents, travellers cheques (sic) and
credit cards. . .”.
In connection
with Complainant’s financial services, Complainant issues credit cards that are
accepted in over 200 countries, at 7.5 million locations around the world, at
700,000 ATMs, and utilizing some 64 local currencies. In 2001, Complainant’s
sales reached approximately $31. billion.
Complainant has more than 8 million individual cardholders. By using Complainant’s credit cards,
customers accumulate what are referred to as “customer loyalty points.” These loyalty points can then be redeemed
for gift certificates and vouchers within the Diners Club Rewards Program.
Respondent
registered the disputed domain names <dinersclubgiftvouchers.com> and
<dinersclubgiftcertificates.com> April 12, 2004. The domain names resolve to a website that
offers credit card merchant accounts for sale.
Specifically, the website indicates that its “partners authorize credit
card purchases, process them, and deposit the proceeds into your account.” The website lists three types of credit
accounts: standad U.S. merchant account, an international account and a
specialty merchant account. The website
also lists the application fees associated with each account, which range from
$89. to $499.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant may
establish a presumption of rights in a mark either by registering the mark with
a legitimate governmental authority or through proof of common law rights in
the mark. In the instant case,
Complainant owns numerous registrations for its DINERS CLUB mark with
authorities in various countries around the world. Therefore, Complainant established a presumption of rights in the
DINERS CLUB mark. Since Respondent failed to respond to the Complaint, the
Panel finds Complainant has rights in the DINERS CLUB mark pursuant to
paragraph 4(a)(i) of the Policy. See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
The domain names
<dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com>
both incorporate Complainant’s DINERS CLUB mark in its entirety. In the instant case, Respondent added the
terms “gift vouchers” and “gift certificates” to Complainant’s mark in the
disputed domain names. Complainant’s
credit card services involve customer loyalty points that can be redeemed for
gift certificates and vouchers via the Diners Club Rewards Program. Therefore, Respondent’s additional terms
incorporated into the domain names simply identify aspects of Complainant’s own
credit card services offered under its DINERS CLUB mark, which makes the
additional terms descriptive. A term may be deemed descriptive if it identifies
anything about goods or services offered under a third-party mark, such as its
purpose, size, color, ingredients, intended users, origin, or anything else. See 2 McCarthy
on Trademarks and Unfair Competition § 11:16 (4th ed.) (“A mark is ‘descriptive’ if it
is descriptive of: the intended purpose, function or use of the goods; the size
of the goods, the provider of the goods, the class of users of the goods, a
desirable characteristic of the goods, the nature of the goods, or the end
effect upon the user.”).
In some prior
decisions under the Policy, panels found that addition of descriptive terms to
a third-party mark was insufficient to support findings that a domain name was
confusingly similar to the mark under paragraph 4(a)(i) of the Policy. For example, in Grand Bay Mgmt. Co. v.
Allegory Invs., the panel found that the domain name
<casinograndbay.com> was not confusingly similar to the GRAND BAY
mark. D2001-0874 (WIPO Sept. 21, 2000).
Also, in Virgin Enters. Inc. v. Internet Domains, the panel found
that the domain name <virginmail.com> was not confusingly similar to the
VIRGIN mark. Yet, in these cases, the
descriptive terms were being added to marks that were, themselves,
descriptive. That is not the case
here. Therefore, the Panel adopts the
view of the majority of panels involved in default decisions that, where a
domain name incorporates a third-party mark in its entirety and simply adds
descriptive terms to the mark, it is sufficient to establish that the domain
name is confusingly similar to the third-party mark pursuant to paragraph
4(a)(i) of the Policy. See Am.
Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum
Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and
merely added the terms “traffic school,” “defensive driving,” and “driver
improvement,” did not add any distinctive features capable of overcoming a
claim of confusing similarity); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name
incorporated the VIAGRA mark in its entirety, and deviated only by the addition
of the word “bomb,” the domain name was rendered confusingly similar to
Complainant’s mark); see also Westfield
Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element).
Complainant
established Policy ¶ 4(a)(i).
Complainant
alleges that Respondent has no rights to or legitimate interests in the
disputed domain names. Respondent did
not contest the allegations set forth in the Complaint and in such cases, the
failure gives rise to an implicit admission that Respondent lacks rights and
legitimate interests with regard to the disputed domain names. Without the benefit of a Response, the Panel
also may accept all reasonable allegations and inferences set forth in the Complaint
as true. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding Respondents’ failure to respond can be construed as an
admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
No allegations
and no evidence indicate that Respondent is commonly known by Complainant’s
mark and the domain names <dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com>
pursuant to paragraph 4(c)(ii) of the Policy. See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Furthermore, a
website that uses a domain name, which is identical or confusingly similar to a
third-party mark, to market goods or services that directly compete with those
offered by the third party under its mark has been found to be neither a bona
fide offering of goods or services under paragraph 4(c)(i) of the Policy
nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the
Policy. In the instant case, Respondent
is using a domain name that is confusingly similar to Complainant’s DINERS CLUB
mark to direct Internet users to a website that offers credit card merchant
accounts for sale. Complainant uses its
DINERS CLUB mark also to offer credit card accounts for sale. Since Complainant and Respondent both offer
credit card accounts for sale, the Panel finds that Respondent is using the
domain names to offer strictly competing services with Complainant, which would
be legitimate had Respondent not incorporated Complainant’s mark in a confusingly
similar domain name to accomplish this end.
Therefore, Respondent is not using the domain names in connection with a
bona fide offering of goods or services under paragraph 4(c)(i) of the
Policy or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of
the Policy. See Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that
Respondent’s appropriation of Complainant’s mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services); see also Clear Channel Communications, Inc. v. Beaty
Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent,
as a competitor of Complainant, had no rights or legitimate interests in a
domain name that utilized Complainant’s mark for its competing website); see
also Chip Merch., Inc. v. Blue Star
Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain
names were confusingly similar to Complainant’s mark and that Respondent’s use
of the domain names to sell competing goods was illegitimate and not a bona
fide offering of goods).
Complainant
established Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent registered and used the disputed domain names in bad
faith. Respondent did not contest those
allegations. Pursuant to paragraph
4(b)(iv) of the Policy, bad faith registration and use is established when an
individual registers a domain name with the intention of attempting to attract
Internet users to its website for commercial gain, by creating a likelihood of
confusion with a complainant’s mark as to the source, sponsorship, affiliation
or endorsement of the resolved website or of the services contained at the
site.
The fact that
Respondent has registered two domain names and has attached an active website
to each domain name evidences that Respondent intentionally attempted to
attract Internet users to its website.
The fact that Respondent is offering credit card merchant accounts for
sale, with application fees ranging from $89. to $499. permits the inference
that Respondent has attempted to attract Internet users to the website for
commercial gain. The fact that
Respondent chose to register a domain name that is confusingly similar to Complainant’s
established DINERS CLUB mark, which operates in the field of credit card
services, evidences Respondent’s creation of a likelihood of confusion with
Complainant’s mark. Therefore,
Respondent is in violation of paragraph 4(b)(iv) of the Policy. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with Complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that Respondent intentionally attempted to attract Internet users to his
website for commercial gain by creating a likelihood of confusion with
Complainant’s mark and offering the same services as Complainant via his
website); see also Scholastic Inc.
v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the
domain name at issue to resolve to a website offering similar services as
Complainant into the same market); see also Computerized Sec. Sys., Inc. v.
Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s
use of the <saflock.com> domain name to offer goods competing with Complainant’s
illustrates Respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see
also TM Acquisition Corp. v. Carroll,
FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent
used the domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant).
Complainant
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 <dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 10, 2004.
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page