Citigroup Inc. and Diners Club International Ltd. v. Steve Kerry d/b/a North West Enterprise, Inc.
Claim Number: FA0602000638003
Complainants are Citigroup Inc. and Diners Club International Ltd. (collectively, “Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is Steve Kerry d/b/a North West Enterprise, Inc. (“Respondent”), 22915 Telegraph Rd., Santa Fe Springs, CA 90670.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <citimcard.com>, <dinerscard.net>, <dinersmcard.com>, <dinerskard.com> and <wwwdinerscard.com>, registered with Onlinenic, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 2, 2006.
On February 4, 2006, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <citimcard.com>, <dinerscard.net>, <dinersmcard.com>, <dinerskard.com> and <wwwdinerscard.com> domain names are registered with Onlinenic, Inc. and that Respondent is the current registrant of the names. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 February 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 27, 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@citimcard.com, postmaster@dinerscard.net, postmaster@dinersmcard.com, postmaster@dinerskard.com and postmaster@wwwdinerscard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <citimcard.com>, <dinerscard.net>, <dinersmcard.com>, <dinerskard.com> and <wwwdinerscard.com> domain names are confusingly similar to Complainant’s CITICARD and DINERS marks.
2. Respondent does not have any rights or legitimate interests in the <citimcard.com>, <dinerscard.net>, <dinersmcard.com>, <dinerskard.com> and <wwwdinerscard.com> domain names.
3. Respondent registered and used the <citimcard.com>, <dinerscard.net>, <dinersmcard.com>, <dinerskard.com> and <wwwdinerscard.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants are Citigroup, Inc. (“Citigroup”), an international financial services company, and Diner’s Club International Ltd. (“Diner’s Club”), a wholly owned subsidiary of Citigroup that offers credit card services to consumers worldwide. Citigroup has registered the CITICARD mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,181,467 issued December 8, 1981). Additionally, Diner’s Club has registered the DINERS mark with the USPTO (Reg. No. 1,462,209 issued October 20, 1987).
Respondent registered the <citimcard.com> and <dinersmcard.com> domain names on June 10, 2002; the <dinerscard.net> domain name on December 19, 2000; and the <dinerskard.com> and <wwwdinerscard.com> domain names on May 9, 2002. Internet users who access these domain names are directed to a website offering competing financial services, and each website subjects Internet users to pop-up advertisements.
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. 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 CITICARD and DINERS marks, pursuant to Policy ¶ 4(a)(i), through registration of the mark with the USPTO. 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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’s <dinerscard.net> domain name incorporates Complainant’s DINERS mark, along with the term “card.” The Panel notes that Complainant is in the business of offering credit card services, and the term “card” is related to Complainant’s business. The addition of a related term to a Complainant’s mark does not adequately distinguish Respondent’s domain name from the mark. Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). Additionally, the addition of the “.net” generic top-level domain fails to distinguish Respondent’s domain name from Complainant’s mark. 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).
Furthermore, Respondent’s <dinersmcard.com>, <dinerskard.com> and <wwwdinerscard.com> domain names all incorporate Complainant’s DINERS mark, the descriptive term “card,” and a different spelling error in each case. Likewise, Respondent’s <citimcard.com> domain name incorporates Complainant’s CITICARD mark with an additional letter. Neither the addition of a term or a letter to Complainant’s mark serves to adequately distinguish Respondent’s domain names from the mark. Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to the complainant’s mark BEANIE BABIES).
Moreover, Respondent’s <wwwdinerscard.com> domain name merely removes the period that follows the “www” in a standard website address. The Panel notes that neglecting the period between the “www” and the domain name is a common typographical error among Internet users, and that Respondent’s <wwwdinerscard.com> domain name is therefore confusingly similar to Complainant’s DINERS mark. Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark). Therefore, each of the disputed domain names is confusingly similar to either Complainant’s DINERS mark or Complainant’s CITICARD mark.
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 <citimcard.com>, <dinerscard.net>, <dinersmcard.com>, <dinerskard.com> and <wwwdinerscard.com> 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, Complainant’s assertions are unopposed, and the Panel will evaluate the evidence to determine if Respondent has rights or legitimate interests in the disputed domain names. Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this subparagraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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”).
Respondent uses several domain names, each of which
incorporates one of Complainant’s marks in its entirety, to redirect Internet
users to a website featuring links to Complainant’s competitors. These websites include links containing
Complainant’s marks, further confusing Internet users about the relationship
between the websites and Complainant.
The Panel infers that Respondent receives payment in exchange for
directing users to these other websites.
Such use is not in connection with a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s
mark--websites where the respondent presumably receives a referral fee for each
misdirected Internet user--was not a bona fide offering of goods or
services as contemplated by the Policy); see
also 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).”).
Respondent refers to itself in the
WHOIS database as “Steve Kerry” and “North West Enterprise, Inc.” Complainant asserts that it has not granted
Respondent any license, permission, or authorization based on which he could
use any domain name registration that is confusingly similar to its marks. Furthermore, Complainant’s rights in its
marks predate Respondent’s registration of the disputed domain names, and there
is no evidence that Respondent has ever been commonly known by any of the
disputed domain names. The Panel finds
that Respondent has no rights or legitimate interests in this name under Policy
¶ 4(c)(ii). 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 prior rights in the domain name precede the respondent’s
registration; (3) the respondent is not commonly known by the domain name in
question); see also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel assumes that Respondent receives click-through
fees in exchange for diverting Internet users to other websites, including
those of Complainant’s competitors.
Because Respondent’s <citimcard.com>,
<dinerscard.net>, <dinersmcard.com>,
<dinerskard.com> and <wwwdinerscard.com> domain names
include Complainant’s CITICARD and DINERS marks, Internet users may mistakenly
believe that the resulting websites are affiliated with Complainant. Use of the disputed domain names to take
advantage of such confusion constitutes bad faith registration and use pursuant
to Policy ¶ 4(b)(iv). American Univ. v. Cook,
FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain
name that incorporates another's mark with the intent to deceive Internet users
in regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
Because the disputed domain names incorporate Complainant’s marks along with simple spelling errors, such as the addition of a letter or the absence of a period after the letters “www”, the Panel finds that Respondent is taking advantage of Internet users who mistype domain names when they try to access Complainant’s websites. Respondent’s registration of the disputed domain names amounts to typosquatting, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). National Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
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 <citimcard.com>, <dinerscard.net>, <dinersmcard.com>, <dinerskard.com> and <wwwdinerscard.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 17, 2006
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