Diners Club International Ltd. v. Jeffrey
Demerly
Claim Number: FA0503000445224
PARTIES
Complainant
is Diners Club International Ltd. (“Complainant”),
represented by Paul D. McGrady, of Greenberg Traurig, LLP,
77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is Jeffrey Demerly (“Respondent”), 2101
Peachtree Blvd., Saint Cloud, FL 34769.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <applyfordiners.com>, <dinersapplication.com>, and <dinerapplications.com>, registered with Go Daddy Software, Inc.
PANEL
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.
Joel
M. Grossman as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
22, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 24, 2005.
On
March 22, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <applyfordiners.com>, <dinersapplication.com>, and <dinerapplications.com> are registered with Go Daddy
Software, Inc. and that the Respondent is the current registrant of the name. Go
Daddy Software, Inc. has 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
March 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 14,
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@applyfordiners.com, postmaster@dinersapplication.com,
and postmaster@dinerapplications.com by e-mail.
A
timely Response was received and determined to be complete on April 11, 2005.
On
April 14, 2005 a timely Additional Submission was received from Complainant. On
April 17, 2005 a timely Additional Submission was received from Respondent.
On April 21, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Joel M. Grossman as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
Diners Club owns a family of marks, most of which cover credit card services.
It contends that the Diners Club trademark, including the word “Diners”
standing alone, is a famous mark, and has been recognized as early as 1965.
Complainant
contends that the three domain names in dispute are nearly identical to its
family of marks, and are confusingly similar. Complainant contends that merely
adding descriptive words such as “apply for” or “application” do not in any way
diminish the confusion between the disputed domain names and Complainant’s
family of marks.
Complainant
further contends that Respondent has no rights or legitimate interests in the
disputed domain names. Neither Respondent’s original intention for the use of
the domain names, nor Respondent’s subsequent stated use are legitimate.
Complainant asserts that Respondent has never operated any bona fide business
using these names and that any claim by Respondent of a planned use of the
names is pretextual.
Finally,
Complainant contends that Respondent registered and is using the disputed names
in bad faith. Complainant asserts that Respondent has actual or constructive
knowledge of Complainant’s family of marks. Further, Complainant contends that
Respondent is a ‘serial cybersquatter,’ having registered domains which use
trademarks of other well-known credit card companies such as Discover and Visa,
and these other registrations evidence Respondent’s bad faith. Finally,
Respondent’s bad faith is evidenced by the fact that the purported intended use
is not credible.
B.
Respondent
Respondent
contends that he was unaware of the Complainant’s mark in the word “Diners” standing
alone without “Club.” Respondent contends that the disputed names are not
identical or confusingly similar with Complainant’s family of marks, pointing
out that the word “diner,” when appearing without “club” can refer to an
informal, inexpensive restaurant, such as Mel’s Diner. Respondent points out
that there is a website named “Diners.com” that refers to these kind of
restaurants, and has no connection to Complainant’s business.
Respondent
contends that there is a legitimate use of the disputed names, which is for job
seekers in the restaurant business, and employers seeking workers to connect
with each other. Respondent denies that it acted or continues to act in bad
faith, stating that it intends to use the disputed names for a legitimate purpose,
helping small restaurants find workers, and helping workers find jobs.
C.
Additional Submissions
Complainant
notes that in his Response, Respondent virtually admits bad faith. The Response
states that Respondent initially registered the disputed names with the
intention of getting permission from Visa to use these disputed names to
promote their credit cards. Since it is evidence of bad faith to register names
with the intention of disrupting a competitor’s business, these names were
registered in bad faith. Alternatively, even if Respondent had intended to use
the names to promote applications for Diners Club cards, such use would be in
bad faith, since it would appear that the names had been registered for the
purpose of selling or renting them to Complainant.
Respondent’s
Additional Submission refutes claims made by Complainant that Respondent is a
pornographer. The Panel believes that whether or not Respondent operates
pornographic or “adult-oriented” websites is irrelevant to the issues in this
case, and this case will be decided on its merits without any consideration of
this point. Additionally, Respondent again states that it registered the names
in good faith, in the belief that the terms “diners” standing alone without
“club” was not trademarked by Complainant, and that the planned use of the
sites, matching job seekers and employers in the restaurant business, is
legitimate.
FINDINGS
The domain names APPLYFORDINERS.COM,
DINERSAPPLICATION.COM AND DINERAPPLICATIONS.COM are confusingly similar to the
Diners Club mark. Further, Respondent has not shown any rights or legitimate
interests in these names. Finally, Respondent has acted in bad faith in
registering and using these names.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute
Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the
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.
The Panel finds that the three disputed
domain names are either identical to, or confusingly similar to, the Diners
Club marks. Because the disputed names include the word “diner” or “diners” but
not the word “club,” Respondent contends that they are not identical or
confusingly similar. However, while the word “diner” standing alone might refer
to an informal restaurant, the Panel finds that when coupled with the words
“apply for” or “application” it is meant to suggest applying for a Diners Club
credit card. A consumer seeking a way to apply for a Diners Club card would be
confused by these domain names. An almost identical case, involving American
Express cards, was decided in American Express Co. v. Pierce, FA 166008
(Nat. Arb. Forum Aug. 14, 2003). There the respondent had registered a number
of domain names similar to the names Respondent has registered in the present
case, including “applyforamericanexpress.com” and
“americanexpressapplication.com.” The Panel in the American Express case
held that names “americanexpressapplication.com” and
“applyforamericanexpress.com” were identical or confusingly similar to the
AMERICAN EXPRESS mark. This Panel concludes, as did the Panel in American
Express, that the addition of descriptive words like “apply” and “application”
do not reduce the confusion with Complainant’s famous mark. Similarly, the
dropping of the “s” in one of Respondent’s
registrations—dinerapplications.com—is insignificant. See, Universal City
Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding
that deleting the “s” from Universal Studios (“Univeral Studios”) did not
change the overall impression of the mark, and the name was still confusingly
similar with the Complainant’s mark). So too in this case, “dinerapplications”
also suggests applying for a Diners Club card.
Respondent has not met its burden to come
forward with concrete evidence that it has a legitimate interest in the
disputed names. See G.D. Searle v. Martin Mktg, FA 118277 (Nat. Arb.
Forum Oct. 1, 2002). In Respondent’s Response he states that he initially
registered these domain names to promote Visa credit card services. (Response,
page 6.) Respondent
then changed his mind, stating that he determined that he was incorrect in his
assumption that he would be able to do that, and instead came up with a new use
for these domain names: setting up a job hotline for the food and beverage
industry. While Respondent now claims to be establishing a business matching
job seekers and employers in the food and beverage business, this explanation
appears to the Panel to be unlikely and pretextual. As a matter of common
sense, the term “apply for diners” does not suggest employment at all. Had
Respondent registered names such as “applyfordinerjobs.com,” or
“dinerjobapplications.com,” the claim would be more believable. Further, it is
undisputed that Respondent is not commonly known by the disputed names;
instead, WHOIS information identifies Respondent as “Jeffrey Demerly.” See
Compagnie de Saint Gobain v. Com-Union Corp, D2000-0020 (WIPO Mar. 14,
2000).
Because Respondent has not presented a
legitimate reason for registering domain names that utilize the famous DINERS
CLUB mark, the Panel finds that these names were registered and used in bad
faith. As noted above, in his Response, Respondent states that his original
intention in registering these names was to promote Visa credit card
applications. Complainant correctly notes in its Additional Submission that this
statement virtually is an admission that the names were registered in bad faith
under Section 4(b)(iii) of the Policy which states that it will be considered
bad faith for a registrant to register a domain name “primarily for the purpose
of disrupting the business of competitor.” Respondent’s statement of its
initial purpose in registering these names—getting new applicants for Visa, one
of Complainant’s competitors—falls directly within this language. In finding
that Respondent’s registration and use of these names is in bad faith, the
Panel also takes note of the fact that Respondent has registered numerous other
domain names such as “applyforvisa.com,” “applyformastercard.com” and
“applyforamex.com” in which it attempts to trade on a famous mark of a credit
card company. See Armstrong Holdings, Inc. v. JAZ Association, FA 95234
(Nat. Arb. Forum Aug. 17, 2000), in which the Panel determined that
Respondent’s registering of domain names using other famous marks was evidence
of bad faith. Respondent’s explanation of how it now intends to use these names
is unpersuasive. There seems little doubt that Respondent’s goal was not to
link job seekers and employers in the food and beverage business, but to trade
off these famous marks, or to direct traffic to its websites by confusing the
public into thinking this is the place to apply for a credit card.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <applyfordiners.com>,
<dinersapplication.com>, and <dinerapplications.com>
domain names be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: May 3, 2005
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