national arbitration forum

 

DECISION

 

Diners Club International Ltd. v. Hotels Etc.

Claim Number:  FA0603000652624

 

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 Hotels Etc. (“Respondent”), 2113 Highway 95 #9, Bullhead City, AZ 86442.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <2for1dinersclub.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.

 

Honorable Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 1, 2006.

 

On March 1, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <2for1dinersclub.com> domain name is registered with Go Daddy Software, Inc. and that 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 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 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@2for1dinersclub.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 31. 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <2for1dinersclub.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark.

 

2.      Respondent does not have any rights or legitimate interests in the <2for1dinersclub.com> domain name.

 

3.      Respondent registered and used the <2for1dinersclub.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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 has registered the DINERS CLUB mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 828,013 issued April 25, 1967).  Complainant also holds trademark registrations for the following marks with the USPTO: DINERS CLUB INTERNATIONAL (Reg. No. 1,127,084 issued November 27, 1979 and Reg. No. 2,658,760 issued December 10, 2002), DINERS (Reg. No. 1,462,209 issued October 20, 1987), DINERS CLUB PRORATION (Reg. No. 2,293,109 issued November 16, 1999), and DINERS CLUB ON THE GO (Reg. No. 2,812,306 issued February 10, 2004). 

 

Respondent registered the <2for1dinersclub.com> domain name on December 3, 2005.  Respondent’s domain name resolves to a website featuring links to Complainant’s direct competitors in the credit card and financial services industries, as well as to adult-oriented content.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

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 <2for1dinersclub.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark pursuant to Policy ¶ 4(a)(i), because it contains Complainant’s entire mark and merely adds the generic term “2for1.”  Panels have concluded that the addition of a generic term to a complainant’s mark in a domain name does not negate a finding of confusing similarity under 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 Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark).  Therefore, Respondent’s domain name is confusingly similar to Complainant’s DINERS CLUB mark.

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent lacks rights and legitimate interests in the <2for1dinersclub.com> domain name.  Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <2for1dinersclub.com> domain name.  See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

There is no evidence in the record that Respondent is commonly known by the <2for1dinersclub.com> domain name.  Respondent has registered the domain name under the name “Hotels Etc.,” and Complainant has not authorized or licensed Respondent to register a domain name incorporating its DINERS CLUB mark.  Consequently, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that the respondent was not commonly known by the domain name <greatsouthernwood.com> where the respondent linked the domain name to <bestoftheweb.com>); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Moreover, Respondent is using the <2for1dinersclub.com> domain name, which includes Complainant’s DINERS CLUB mark, in order to operate a website featuring links to the websites of Complainant’s direct competitors and to adult-oriented content. 

In Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), the panel found that respondent’s diversionary use of the <isleworthcountryclub.com> website to misdirect Internet users seeking the complainant’s ISLEWORTH mark to adult-oriented websites did not constitute 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).  In this case, Respondent is also diverting Internet users to a website displaying links to websites containing adult-oriented content, as well as to websites in direct competition with Complainant.  Hence, Respondent’s use of the disputed domain name does not establish rights or legitimate interests in the <2for1dinersclub.com> domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent has registered and is using the <2for1dinersclub.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain name includes Complainant’s mark and resolves to a website with links to Complainant’s direct competitors and to adult-oriented content.  The Panel infers that Respondent receives click-through fees for each consumer it diverts to third-party websites.  Therefore, Respondent is taking advantage of the confusing similarity between Complainant’s DINERS CLUB mark and the domain name and profiting from the goodwill associated with the mark.  Respondent’s diversionary use of the disputed domain name provides evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See 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); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <2for1dinersclub.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  April 14, 2006