Diners Club International Ltd. v. Diners
Club International Ltd. c/o Domain Admin
Claim Number: FA0508000551103
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 Diners Club
International Ltd. c/o Domain Admin (“Respondent”), represented by Paul D. McGrady of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500,
Chicago, IL 60601.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <dinersclubsu.com>, <dinerd.com>, <dinersc.com>, <dinersclu.com>, and <dinerclubusa.com>, registered with Nameview, 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.
Paul
M. DeCicco as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
30, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 31, 2005.
On
September 7, 2005, Nameview, Inc. confirmed by e-mail to the National
Arbitration Forum that the <dinersclubsu.com>, <dinerd.com>, <dinersc.com>, <dinersclu.com>, and <dinerclubusa.com> domain names are registered with Nameview,
Inc. and that Respondent is the current registrant of the names. Nameview, Inc. has verified that Respondent
is bound by the Nameview, 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
September 12, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 3,
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@dinersclubsu.com, postmaster@dinerd.com, postmaster@dinersc.com,
postmaster@dinersclu.com, and postmaster@dinerclubusa.com by e-mail.
A
timely Response was received and determined to be complete on September 23,
2005.
On October 3, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Paul M. DeCicco as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
contends as follows:
As a result of these actions by the Registrar, NAF issued a deficiency
requiring the August 30 Complaint to be amended to reflect the new registrant
information. This Complaint is an
attempt to accommodate NAF’ s requirement while at the same time reflecting the
reality that now not only has the person(s) behind “WhoIs Identity Shield”
registered and used domain names confusingly similar to Complainant’s
trademarks.
Trademark/Service Mark Information. Complainant Diners Club
International Ltd. (“Diners Club”) is the owner of U.S. and Canadian trademarks
and service marks, which all incorporate the element “DINERS CLUB” and/or
“DINERS” (collectively the “DINERS CLUB FAMILY”). In addition to U.S. and Canadian rights, Complainant has applied for or registered similar marks in
numerous countries.
The
Fame of Complainant’s Marks. Due to the extensive use and registration of
Complainant’s trademarks around the world, the marks have become famous under
the laws of the United States and other relevant jurisdictions. Further, the
marks have obtained the status of notorious marks and therefore enjoy liberal
protection under the Paris Convention.
During May 2005, well after Complainant used it trademarks on a global scale,
and the filing of many U.S. and international applications for trademark
registration by Complainant, Respondent registered <dinersclu.com>,
<dinersc.com>, <dinerd.com>, and <dinersclubsu.com>
after receipt of Complainant’s initial demand letter—and with actual notice of
Complainant’s rights—WhoIs Identity Shield registered <dinerclubusa.com>.
Following
notification of the Complaint, the Registrar changed the WHOIS records to
reflect Respondent without respondent’s consent. The person(s) behind WhoIs
Identity Shield and/or Nameview, who remain in control of the WHOIS record,
including the DNS selections, continue to misuse the at-issue domain names
through their continued use in a traffic redirection scheme.
Rights
or Legitimate Interests.
Although the Registrar has, inappropriately, regsitered the at-issue domain
names in Complainant’s name, the person(s) behind WhoIs Identity Shield and/or
the Registrar have no right to use the name of Diners Club in this fashion.
Certainly Diners Club has rights and interests in the at-issue domain names;
however, the name and address of Diners Club International Ltd. is being used
without Diners Club’s permission. Such use by the person(s) behind WhoIs
Identity Shield constitutes a bad faith falsification of the WHOIS record
because, regardless of what the doctored WHOIS records may reflect, Diners Club
International Ltd. is not the true party in control of the Offending Domains.
Bad
faith registration and bad faith.
Person(s) behind WhoIs Identity Shield have now modified the WHOIS registration
information of the at-issue domain names to reflect Diners Club International
Ltd. as the registrant. The person(s)
behind WhoIs Identity Shield and/or the Registrar have no authority to use
Diners Club’s name in this fashion, and such fraudulent use constitutes
registration in bad faith.
The
person(s) behind WhoIs Identity Shield and/or the Registrar continue to use the
Offending Domains in their traffic redirection scheme. The at-issue domain names resolve and direct
Internet traffic to websites not controlled or licensed by Complainant. Although the WHOIS record for each of the
at-issue domain names were inappropriately modified by the Registrar following
the filing of Complainant’s prior Complaint, the use of the at-issue domain
names to promote competing goods and services continues to infringe upon
Complainant’s rights in its famous marks.
B. Respondent
Respondent
contends as follows:
Respondent
is in complete agreement with the facts and allegations set forth in the
Complaint and urge the Panel to make a decision transferring these domain names
to Complainant.
Respondent has been involuntarily placed in the unusual position of being
Respondent of record in this matter through an illicit change in title to these
domain names after a complaint was filed against the original registrant of the
domains, WhoIs Identity Shield, which appears to be a service of the registrar,
Nameview.com. Such changes were made by
the Registrar following receipt of instructions from its (alleged) customer
instructing it to do so. Although the
Registrar’s obligation is to lock down the domain record upon receipt of notice
of a UDRP dispute that is filed against a customer and to certify the then
current WHOIS record to the arbitration provider, the Registrar in this case
freely admits that it, instead, changed title to these domain names.
Further, the Registrar and/or its customer continues to manipulate the WHOIS
record to these domain names. E-mails
and a WHOIS search indicate a user of a Canadian IP address has unlocked the
registration, modified the DNS, and then re-locked these domain name
registrations. Now, the DNS, without
authorization, are set to point to servers owned by Diners Club’s parent,
Citigroup, Inc.
The
Registrar has attempted to deliver a user name and password to
Complainant. Complainant will not use
this user name and password because (1)
Complainant will not agree to the terms and conditions of this Registrar’s
Registration Agreement, and (2) Complainant believes that it is appropriate for
any party to engage in the manipulation of a WHOIS record which is supposed to
be locked during the pendency of a UDRP complaint. Coupled with the knowing provision of WHOIS falsification
services, both before and after receipt of Diners Club’s demand letter, and the
fact that Complainant/Respondent has not accessed these records, the only two
conclusions that can be reasonably reached are (1) that the Registrar is
engaged in active cooperation with its cybersquatting customer or (2) that the
Registrar is in fact the cybersquatter itself.
Respondent
also urges the Panel to make note of the outrageous actions of both
Nameview.com and/or its alleged customer in its Decision so that future
complainants will have notice of the likelihood that Nameview.com will attempt
to disrupt UDRP proceedings in which they are involved.
FINDINGS
Complainant and Respondent are the same
entity.
Complainant (and thus Respondent) has a
colorable protectable interest in the at-issue domain names.
Respondent agrees with contention in the
Complaint that the domain names should be transferred.
The registrar failed or refused to allow
Respondent to have administrative control over at-issue domain names registered
in its registry.
The Respondent renounces any rights or
interest in the domain names.
The Respondent agrees that it has not
rights or interests in the domain names.
The Respondent agrees that the domain
names were registered and used in bad faith.
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.
Prior
to filing the Complaint now before the Panel, Complainant filed a Complaint
against Whois Identity Shield. That entity was listed in the WHOIS information
as the Registrant of the domain names.
However, subsequent to filing the Complaint, the WHOIS contact
information for the disputed domain names was changed to “Diners Club
International Ltd.”
Although
it appears that Complainant is the current nominal registrant of the domain
names, administrative access to the domain names is password protected, and the
password is not known to Complainant (or Respondent). Therefore, Complainant, even thought it is the nominal
registrant, is unable to assert control over the at-issue domain names. To gain control over the domain names
Complainant proceeded by filing its Amended Complaint naming itself as
Respondent pursuant to the current WHOIS information. As Respondent, Complainant/Respondent then responded to the
Complaint, agreeing to transfer the disputed domain names to Complainant
thereby submitting to Complainant’s requested remedy as set out in the parties’
contentions above.
Apparently,
Complaint believes that a UDRP proceeding is the most expedient mechanism for
Complainant to gain dominion and control over the at-issue domain name
administrative passwords. It is
unfortunate that the Registrar, Nameview.com, has apparently failed or refused
to recognize the registrations showing Complainant to be the nominal registrant
of the at-issue domain names. The
Registrar could have, and should have, been able to resolve this matter without
forcing Complainant to expend significant legal and financial resources to have
the matter aired and resolved in this forum.
Indeed, the matter could have been resolved by simply authenticating
Complainant as the nominal registrant for the at-issue domain names and then
allowing Complainant to re-password the relevant registration administrative
accounts.
Where
Respondent has agreed to comply with Complainant’s request, other panels have
held that they may forego the traditional UDRP analysis and order the transfer
of the domain names. See PSC
Mgmt. Ltd. P’ship v. PSC Mgmt. Ltd. P’ship, FA 467747 (Nat. Arb. Forum June
6, 2005) (transferring the disputed domain name to the complainant, where the
complainant was listed as the respondent and filed a response agreeing to
transfer the domain name); see also Boehringer Ingelheim Int’l GmbH v.
Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003)
(transferring the domain name registration where Respondent stipulated to the
transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc.,
FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both
asked for the domain name to be transferred to the Complainant . . . .
Since the requests of the parties in this case are identical, the Panel has no
scope to do anything other than to recognize the common request, and it has no
mandate to make findings of fact or of compliance (or not) with the Policy.”).
However,
even if the parties are in agreement, the Panel may nevertheless reach its
decision based on its determination of the disposition of the three enumerated
requirements of the Policy. In this
Panel’s view, the fact that Respondent agrees with Complainant’s request to
transfer the at-issue domain names is not, in and of itself, dispositive of Complainant’s burden to
demonstrate each of the Policy’s three enumerated conjunctive conditionals or
the Panel’s duty to review and make a determination on each.
Notwithstanding the unique fact pattern
in this case, showing Complainant to be one in the same with the nominal
registrant and Respondent’s agreement (with itself) that the ultimate relief
requested by Complainant should be granted, the Panel substantively considers
the threshold issue of whether or not Complainant has what might be equated to
“standing” with regard to the at-issue domain names. If the complainant does not have at least a colorable protectable
interest in the subject domain names, then the complainant’s interest in
transferring the domain names is of no consequence. In such a case the UDRP forum is an improper venue to resolve the
parties’ dispute. The Policy mandates
that the complainant have some protectable trademark interest that is identical
or confusingly similar to the at-issue domain names.
This appears to be an objective
requirement. For example if a
complainant has protected rights in the mark “XYZ,” and the at-issue domain
name held by a respondent is “123,” it would (without more) be improper to
transfer the domain names under a UDRP proceeding even if the parties agreed in
their papers that the domain name should be transfered. In such case the dispute would simply not be
suitable for resolution under the UDRP.
To the extent that an objective evaluation must be made as to the UDRP’s
identity/similarity requirement, it should ultimately be up to the finder of
fact, here the Panel, to make such a determination rather than be determined by
the parties’ agreement.
An objective finding that a trademark and
at-issue domain name is not identical or confusingly similar, even though the
parties agree that they are, trumps the agreement of the parties on this
point. In this regard the Panel finds
that the marks of Complainant and the at-issue domain names are colorably
confusingly similarly. Each of the
domain names contains a substantial portion of Complainant’s mark. Furthermore, Complainant has shown with
particularity that it has rights and interest in trademarks that are
confusingly similar to the at-issue domain names.
The other issues normally considered in UDRP proceedings,
whether or not the respondent has “rights or legitimate interests” in subject
domain name, and whether or not the respondent has “registered and used” the
domain name in “bad faith,” are also impliedly and expressly conceded to by
Respondent in its Response. However,
Respondent’s admissions and agreement with Complainant’s contentions on these
two issues are, without more, conclusive.
Although it appears to logically follow,
the Panel does not conclude that since Complainant and Respondent are
identical entities that if Complainant has rights in the at-issue domain names,
then Respondent must also have rights.
Permitting such reasoning implies a finding for Respondent denying
transfer of the domain names. In fact,
this would be the case in any situation where the Complainant and Respondent
are the same entity. Instead the Panel
acknowledges that while Complainant and Respondent are the same real party in
interest, they are nevertheless in different party roles with regard to this
UDRP proceeding. Since a party may
generally renounce rights and interest, the Panel accepts Respondent’s
contention that it has no legitimate rights or interest in the at-issue domain
names without the need to evaluate the relevant factual backdrop.
Likewise, whether or not the at-issue
domain names were registered and used in bad faith may be determined by
Respondent’s admission. The analysis of
whether or not a Respondent is acting in “bad faith” requires an inquiry into
the Respondent’s motivation. Therefore it is a subjective inquiry concerning
the Respondent’s motivation. In that
regard the Respondent is in the best position to divulge its motivation to act
or refrain from acting. Here,
Respondent admits that it was acting in bad faith in registering and using the
domain name. The Panel agrees.
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 <dinersclubsu.com>,
<dinerd.com>, <dinersc.com>, <dinersclu.com>
and <dinerclubusa.com> domain names be TRANSFERRED from
Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 17, 2005
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