Diners Club International Ltd. v. Treuhand-Services Diners-Club c/o Diners Club
Claim Number: FA0601000624463
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 Treuhand-Services Diners-Club c/o Diners Club (“Respondent”), Toepferstr. 1B, Worms, DE 67549.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <diners-club.info>, registered with Schlund + Partner Ag (R113-Lrms).
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.
Sandra J. Franklin Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 11, 2006. The Complaint was submitted in both German and English.
On January 16, 2006, Schlund + Partner Ag (R113-Lrms) confirmed by e-mail to the National Arbitration Forum that the <diners-club.info> domain name is registered with Schlund + Partner Ag (R113-Lrms) and that Respondent is the current registrant of the name. Schlund + Partner Ag (R113-Lrms) has verified that Respondent is bound by the Schlund + Partner Ag (R113-Lrms) 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 24, 2006, a German language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 13, 2006 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@diners-club.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <diners-club.info> domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or legitimate interests in the <diners-club.info> domain name.
3. Respondent registered and used the <diners-club.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club International Ltd., is a worldwide credit card service provider. Diners Club credit cards are accepted in over 200 countries and at over 7.6 million locations around the world, including airlines, hotel chains, and rental car facilities. Complainant has issued credit cards to over eight million individual consumers and over half of the Fortune 500 companies. Its annual sales in 2003 were over $30 billion. Complainant is a wholly owned subsidiary of Citigroup. Complainant also offers assistance to travelers in the form of medical and legal referrals, travelers’ checks, and replacement of lost or stolen travel documents.
Complainant registered the DINERS CLUB mark with the United States Patent and Trademark Office (“USPTO”) on April 25, 1987 (U.S. Reg. No. 828,013). Complainant also holds trademark registrations for the following marks: DINERS CLUB INTERNATIONAL (U.S. Reg. No. 1,127,084; registered on November 27, 1979 and U.S. Reg. No. 2,658,760; registered on December 10, 2002), DINERS (U.S. Reg. No. 1,462,209; registered on October 20, 1987), DINERS CLUB PRORATION (U.S. Reg. No. 2,293,109; registered on November 16, 1999), and DINERS CLUB ON THE GO (U.S. Reg. No. 2,812,306; registered on February 10, 2004).
Respondent registered the <diners-club.info> domain name on October 31, 2005. Respondent is using the disputed domain name to redirect Internet users to a third-party website, GMX MailDomain, which offers e-mail messaging services. Respondent’s website, which is in the German language, contains one sentence, “Diese Domain wird derzeit ausschließlich für E-Mail genutzt,“ followed by a link to the GMX MailDomain website.
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. See Vivendi Universal Games v. XBNetVentures Inc., FA
198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”); see
also Innomed Techs., 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 <diners-club.info> domain name is
confusingly similar to Complainant’s DINERS CLUB mark pursuant to Policy ¶
4(a)(i) because it contains Complainant’s entire mark, adds a hyphen between
the words of the mark, and attaches the generic top-level domain “.info” to the
end of the mark. Panels have held that
the addition of a hyphen and a generic top-level domain do nothing to
distinguish a disputed domain name from a complainant’s mark. See Health Devices Corp. v. Aspen S T C,
FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks
such as hyphens is irrelevant in the determination of confusing similarity
pursuant to Policy ¶ 4(a)(i).”); see also Sports Auth. Mich. Inc. v. Batu 5,
FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to
Complainant's mark does not create a distinct characteristic capable of
overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also
Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept.
27, 2002) (“[I]t is a well
established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis.”); see also Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”).
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 <diners-club.info> domain name. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <diners-club.info>
domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO
June 20, 2000) (“By not submitting a response, Respondent has failed to invoke
any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Complainant alleges that there is no evidence in the record suggesting that Respondent is commonly known by the <diners-club.info> domain name, and Complainant has not authorized or licensed Respondent to use the DINERS CLUB mark. Despite the WHOIS information identifying Respondent as Treuhand-Services Diners-Club c/o Diners Club, Respondent has not provided any evidence that it is commonly known by that name.
Therefore, Respondent has not established rights or
legitimate interests in the <diners-club.info> domain name
pursuant to Policy ¶ 4(c)(ii). See
Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that
although “the WHOIS information for the <yasexhoo.com> domain name states
that the registrant is YASEXHOO . . . this alone is insufficient to show that
Respondent is commonly known by the domain name.”); see also City News &
Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004)
(“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’
there is no evidence before the Panel to indicate that Respondent is, in fact,
commonly known by the disputed domain name <citynewsandvideo.com>
pursuant to Policy ¶ 4(c)(ii).”).
In addition, Respondent is using
the <diners-club.info> domain
name, which is confusingly similar to Complainant’s DINERS CLUB mark, to
redirect Internet users to a third-party website offering e-mail messaging
services completely unrelated to Complainant.
Such use of the disputed domain name for Respondent’s commercial
gain does not provide evidence of a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”);
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 Disney Enters., Inc. v. Dot
Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the
respondent’s diversionary use of the complainant’s mark to attract Internet
users to its own website, which contained a series of hyperlinks to unrelated
websites, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the disputed domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <diners-club.info>
domain name, which is confusingly similar to Complainant’s DINERS CLUB mark, to
redirect Internet users seeking Complainant’s products and services to an
unrelated website displaying a link that resolves to an e-mail messaging
service. The Panel infers that
Respondent profits from diverting consumers to this website. Therefore, Respondent is taking advantage of
the likelihood of confusion between Respondent’s domain name and Complainant’s
mark and capitalizing on the goodwill associated with the mark. The Panel finds that such use constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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 Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the
respondent profits from its diversionary use of the complainant's mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain).
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 <diners-club.info> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 6, 2006
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