Diners Club International Ltd. v. Cameron
Jackson
Claim Number: FA0506000502782
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 Cameron Jackson (“Respondent”),
PO Box 46, Vaucluse, Sydney, NSW, 2030, Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <dinersclubgolf.com>,
<dinersclubgolf.info>, and <dinersclubcorporation.info>,
registered with Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain.
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 June
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 22, 2005.
On
June 23, 2005, Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain confirmed
by e-mail to the National Arbitration Forum that the domain names <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info> are
registered with Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain and that
Respondent is the current registrant of the names. Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain has verified
that Respondent is bound by the Primus Telco Pty Ltd d/b/a
Primusdomain/Planetdomain 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
June 24, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 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@dinersclubgolf.com, postmaster@dinersclubgolf.info,
and postmaster@dinersclubcorporation.info 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
July 21, 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 <dinersclubgolf.com>, <dinersclubgolf.info>,
and <dinersclubcorporation.info>
domain names are confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or
legitimate interests in the <dinersclubgolf.com>,
<dinersclubgolf.info>, and <dinersclubcorporation.info>
domain names.
3. Respondent registered and used the <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Diners Club International, Ltd., holds a trademark registration with the United
States Patent and Trademark Office (“USPTO”) for the DINERS CLUB mark (Reg. No.
828,013 issued April 25, 1967) related to the extension of credit to customers
who purchase at subscribing retail establishments.
Respondent
registered the <dinersclubgolf.com>
domain name on February 18, 2005, and the <dinersclubgolf.info>
and <dinersclubcorporation.info>
domain names on April 10, 2005.
Respondent is using the <dinersclubgolf.com>
and <dinersclubcorporation.info>
domain names to redirect Internet users to Respondent’s website featuring
advertisements for web hosting and domain name registration services. Respondent is using the <dinersclubgolf.info> domain name to redirect Internet users to
Respondent’s website featuring advertisements for eBay and links to golf
related goods and services.
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. 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.").
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 rights in the DINERS CLUB mark through registration of the mark
with the USPTO and through continuous use of the mark in commerce. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also Innomed
Tech., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Respondent’s <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info>
domain names are confusingly similar to Complainant’s DINERS CLUB mark because
the domain names contain Complainant’s mark in its entirety and add the generic
or descriptive word “golf” or “corporation,” and the generic top-level domain
“.com” or “.info” to the mark. The
Panel finds that such minor additions to Complainant’s registered mark are
insufficient to negate the confusingly similar aspects of Respondent’s domain
names pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec.
9, 2000) (finding that “Neither the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25,
2000) (finding that the top level of the domain name such as “.net” or “.com”
does not affect the domain name for the purpose of determining whether it is
identical or confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info>
domain names. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to
the Complaint, the Panel assumes that Respondent does not have rights or
legitimate interests in the disputed domain names. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the
complainant has asserted that respondent does not have rights or legitimate
interests with respect to the domain name it is incumbent on respondent to come
forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); 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 the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent is
using the <dinersclubgolf.com>,
<dinersclubgolf.info>, and <dinersclubcorporation.info>
domain names to redirect Internet users interested in Complainant’s services to
Respondent’s websites featuring advertisements for products and services of
unrelated third parties. The Panel
finds that Respondent’s use of domain names that are confusingly similar to
Complainant’s DINERS CLUB mark to redirect Internet users interested in
Complainant’s services to Respondent’s websites featuring advertisements for
products and services of unrelated third parties is not a use in connection
with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See eBay
Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the
respondent’s use of the complainant’s entire mark in domain names makes it
difficult to infer a legitimate use); see
also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Wells Fargo & Co. v. Lin Shun
Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a
domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii) because the registrant presumably receives compensation for each
misdirected Internet user).
Respondent was
not authorized or licensed by Complainant to register or use domain names
incorporating Complainant’s DINERS CLUB mark.
Nothing in the record shows that Respondent holds a trademark or is
commonly known by the <dinersclubgolf.com>,
<dinersclubgolf.info>, or <dinersclubcorporation.info>
domain name pursuant to Policy ¶ 4(c)(ii).
Therefore, the Panel finds that Respondent does not have rights or
legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one 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 Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) the respondent is not a licensee of the complainant; (2) the
complainant’s rights in the mark precede the respondent’s registration; (3) the
respondent is not commonly known by the domain name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <dinersclubgolf.com>,
<dinersclubgolf.info>, and <dinersclubcorporation.info>
domain names, that are confusingly similar to Complainant’s DINERS CLUB mark,
for Respondent’s commercial gain.
Respondent’s domain names redirect Internet users searching under
Complainant’s DINERS CLUB mark to Respondent’s website. Respondent is unfairly and opportunistically
benefiting from the goodwill associated with Complainant’s DINERS CLUB
mark. Respondent’s practice of
diversion, motivated by commercial gain, constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Bank of Am. Corp. v.
Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating
that “[s]ince the disputed domain names contain entire versions of
Complainant’s marks and are used for something completely unrelated to their
descriptive quality, a consumer searching for Complainant would become confused
as to Complainant’s affiliation with the resulting search engine website” in
holding that the domain names were registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of
the infringing domain name to intentionally attempt to attract Internet users
to its fraudulent website by using the complainant’s famous marks and likeness); see also
State Fair of Texas v.
Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith
where the respondent registered the domain name <bigtex.net> to infringe
on the complainant’s goodwill and attract Internet users to the respondent’s
website).
Furthermore,
Respondent registered the <dinersclubgolf.com>,
<dinersclubgolf.info>, and <dinersclubcorporation.info>
domain names with actual or constructive knowledge of Complainant’s rights in
the DINERS CLUB mark due to Complainant’s registration of the mark with the
USPTO. Registration of a domain name
that is confusingly similar to another’s mark despite actual or constructive
knowledge of the mark holder’s rights is tantamount to bad faith registration
and use pursuant to Policy ¶ 4(a)(iii).
See Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”).
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 <dinersclubgolf.com>,
<dinersclubgolf.info>, and <dinersclubcorporation.info>
domain names be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
August 4, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum