Diners Club International Ltd. v. LaPorte
Holdings, Inc.
Claim Number: FA0501000409747
Complainant Diners Club International Ltd. (“Complainant”),
is represented by Paul D. McGrady,
of Greenberg Traurig, LLP, 77 West
Wacker Drive, Suite 2500, Chicago, IL 60601.
Respondent is LaPorte Holdings,
Inc. (“Respondent”), 2202 S. Figueroa St., Suite 721, Los Angeles, CA
90023.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <dinerclubcanada.com>,
<dinersus.com> and <dinerclubnorthamerica.com>,
registered with Nameking.com, Inc.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
25, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 27, 2005.
On
January 28, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <dinerclubcanada.com>,
<dinersus.com> and <dinerclubnorthamerica.com> are
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the names. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.com, 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
January 28, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 17, 2005 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@dinerclubcanada.com, postmaster@dinersus.com
and postmaster@dinerclubnorthamerica.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 1, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (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 <dinerclubcanada.com>, <dinersus.com>
and <dinerclubnorthamerica.com>
domain names are confusingly similar to Complainant’s DINERS CLUB and DINERS
family of marks.
2. Respondent does not have any rights or
legitimate interests in the <dinerclubcanada.com>,
<dinersus.com> and <dinerclubnorthamerica.com>
domain names.
3. Respondent registered and used the <dinerclubcanada.com>, <dinersus.com> and <dinerclubnorthamerica.com>
domain names in bad faith.
B.
Respondent failed to submit a Response
in this proceeding.
Complainant,
Diners Club International, Ltd., has used the DINERS CLUB and DINERS family of
marks in connection with credit card services, credit card user loyalty
programs and assistance to travelers programs in addition to numerous other
programs related to its financial services.
Complainant’s initial use began in 1965. Complainant owns trademark registration rights for the DINERS
CLUB and DINERS family of marks through registration with the United States
Patent and Trademark Office (e.g., Reg. No. 828,013, issued April 25, 1967;
Reg. No. 1,462,209, issued October 20, 1987, respectively) Complainant has also
registered its DINERS family of marks in other countries including Switzerland,
Hong Kong, China and Brazil.
Complainant has
registered and is using the <dinersclubcanada.com> domain name to direct
customers to the Canadian information found on Complainant’s website operated
at the <dinersclubnorthamerica.com> domain name.
Respondent
registered the <dinersus.com>,
<dinerclubcanada.com> and <dinerclubnorthamerica.com>
domain names on October 22, 2002, January 6, 2005 and January 12, 2005,
respectively. Respondent uses the
disputed domain names to redirect Internet users to websites featuring links
promoting goods and services of third parties, including financial and travel
services. They also display a link with
Complainant’s DINERS CLUB mark that leads to advertisements for competitors such
as <cardoffers.net> and <creditusaonline.com>. Some of the links lead to fraudulent
websites that attempt to obtain personal information from Internet users. The websites also display links entitled
“statements,” “pay bill,” “rewards” and “balance” to give the false appearance
that the disputed domain names are a portal with which to conduct business with
Complainant.
Respondent also
provides pop-up advertisements and links at the disputed domain names that lead
to pornographic websites and websites featuring goods and services unrelated to
Complainant.
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.
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.
Complainant has
established that it has rights in the DINERS CLUB and DINERS marks through
registration with the United States Patent and Trademark Office. Additionally, Complainant has continuously
used the marks in international commerce for the last forty years. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that 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
registered by Respondent are confusingly similar to Complainant’s DINERS CLUB
and DINERS marks because the <dinersclubcanada.com>
and <dinerclubnorthamerica.com>
domain names incorporate Complainant’s DINERS CLUB and DINERS marks. The only difference between the disputed
domain names and Complainant’s marks is Respondent’s minor omission of the
letter “s” and the addition of geographically descriptive terms such as
“canada” and “north america.”
Respondent’s minor additions and omissions do not distinguish the
disputed domain names from Complainant’s marks. See Net2phone Inc. v.
Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s
registration of the domain name <net2phone-europe.com> is confusingly
similar to Complainant’s mark "the
combination of a geographic term with the mark does not prevent a domain name
from being found confusingly similar"); see also Wal-Mart Stores, Inc. v. Walmarket
Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name,
<walmartcanada.com> is confusingly similar to Complainant’s famous mark);
see also Reuters Ltd. v. Global Net 2000,
Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which
differs by only one letter from a trademark has a greater tendency to be
confusingly similar to the trademark where the trademark is highly
distinctive); see also Universal City
Studios, Inc. v. Harper Stephens, D2000-0716 (WIPO Sept. 5, 2000) (finding
that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark
did not change the overall impression of the mark and thus made the disputed
domain name confusingly similar to it).
Additionally,
Respondent’s <dinersus.com> domain
name is also confusingly similar to Complainant’s diners marks because the
domain name contains Complainant’s DINERS mark and deviates from Complainant’s
DINERS CLUB mark by replacing the word “club” with the geographically
descriptive term “us.” Respondent’s
alterations does not sufficiently differentiate the disputed domain name from
Complainant’s mark. See SportSoft Golf, Inc. v. Sites to Behold
Ltd., FA 94976 (Nat. Arb. Forum July 27, 2000) (finding that the disputed
domain name is neither identical to nor confusingly similar to Complainant’s
trademark because the trademark links together two generic words – golf and
society -- with a geographic entity, the United States); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO
Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can
rarely be relied upon to differentiate the mark if the other elements of the
domain name comprise a mark or marks in which another party has rights); see also Hammond Suddards Edge v. Westwood
Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain
name, “hammondsuddards.net,” is essentially identical to Complainant's mark,
Hammond Suddards Edge, where the name “Hammond Suddards” identifies Complainant
independently of the word “Edge”); see
also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr.
20, 2001) (finding that the <westjets.com> domain name is confusingly
similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER
mark).
Furthermore,
Respondent’s addition of the generic top-level domain “.com” does not eliminate
the confusingly similar nature of Respondent’s domain names from Complainant’s
marks. See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also
Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
("the addition of the generic top-level domain (gTLD) name ‘.com’ is . . .
without legal significance since use of a gTLD is required of domain name
registrants"); see also Interstellar
Starship Serv. Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997)
(<epix.com> "is the same mark" as EPIX).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the
disputed domain names. When Complainant
establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it
has rights or legitimate interests. Due
to Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent lacks rights and legitimate interests in the disputed domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once Complainant asserts that Respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the
mere assertion by Complainant that Respondent has no rights or legitimate
interests is sufficient to shift the burden of proof to Respondent to
demonstrate that such rights or legitimate interests do exist); Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Additionally, if
Complainant makes a prima facie showing
and Respondent does not respond, the Panel may accept all reasonable inferences
and assertions in the Complaint as true.
See 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.”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence); see also Charles
Jourdan AG. V. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint).
Respondent is
using the <dinerclubcanada.com>,
<dinersus.com> and <dinerclubnorthamerica.com>
domains names to redirect Internet users to websites featuring links promoting
goods and services of third parties, including financial and travel
services. Respondent’s domains also
display a link with Complainant’s DINERS CLUB mark that leads to advertisements
for competitors such as <cardoffers.net> and
<creditusaonline.com>.
Additionally, the disputed domains display links entitled “statements,”
“pay bill,” “rewards” and “balance” to give the false appearance that the
disputed domain names are a portal with which to conduct business with
Complainant. Respondent’s use of domain
names that are confusingly similar to Complainant’s DINERS CLUB and DINERS
marks to redirect Internet users interested in Complainant’s services to a
website that links to Complainant’s competitors is not a use in connection with
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is
not a legitimate noncommercial or fair use of the domain names pursuant to
Policy ¶ 4(c)(iii). See Geoffrey, Inc. v. Toyrus.com, FA 150406
(Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed
domain name, a simple misspelling of Complainant’s mark, to divert Internet
users to a website that featured pop-up advertisements and an Internet
directory, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the domain name); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat.
Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal
to suck surfers into a site sponsored by Respondent hardly seems legitimate”).
Respondent also
provides pop-up advertisements and links at the disputed domain names that lead
to pornographic websites and websites featuring goods and services unrelated to
Complainant. The Panel infers that
Respondent receives click through fees by redirecting Internet users to
commercial websites. Respondent’s use
of domain names that are confusingly similar to Complainant’s marks for
commercial gain is evidence of Respondent’s lack of rights or legitimate
interests in the disputed domain names.
See Wells Fargo & Co. v. Party
Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of
Complainant’s WELLS FARGO mark to divert Internet users to websites featuring
pop-up advertisements was not a bona fide offering of goods or services); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25,
2003) (finding that Respondent had no rights or legitimate interests in a
domain name that it used to redirect Internet users to an Internet directory
website that featured numerous pop-up advertisements for commercial goods and
sexually explicit websites); see also
Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept.
27, 2002) (finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult
orientated website, containing images of scantily clad women in provocative
poses, did not constitute a connection with a bona fide offering of goods or
services or a noncommercial or fair use); see
also McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum
June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users
to a website that features pornographic material, had been “consistently held”
to be neither a bona fide offering of goods or services . . . nor a legitimate
noncommercial or fair use).
Respondent has
not offered any proof, and there is no indication in the record suggesting that
Respondent is commonly known by the disputed
domain names. Furthermore, Respondent
does not have permission to use Complainant’s marks. Thus, Respondent has not established rights or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See
Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees through the use of the domain names
by diverting Internet users searching for Complainant to Complainant’s
competitors. Respondent registered and
used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from
its diversionary use of Complainant’s mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to Policy
¶ 4(b)(iv)); see also Disney Enters.,
Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant’s mark to divert
Internet users to a competitor’s website.
It is a reasonable inference that Respondent’s purpose of registration
and use was to either disrupt or create confusion for Complainant’s business in
bad faith pursuant to ¶¶ 4(b)(iii) [and] (iv).”).
Respondent is
using the disputed domain names to advertise links to Complainant’s
competitors. The Panel finds that, by
creating confusion around Complainant’s mark, Respondent is attempting to
disrupt Complainant’s business.
Therefore, the Panel concludes that Respondent registered and use the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See
EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that
Respondent registered and used the domain name <eebay.com> in bad faith
where Respondent has used the domain name to promote competing auction sites); see also Puckett v. Miller, D2000-0297
(WIPO June 12, 2000) (finding that Respondent has diverted business from
Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <dinerclubcanada.com>,
<dinersus.com> and <dinerclubnorthamerica.com>
domains names be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
March 15, 2005
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