Diners Club International Ltd. v. Nokta
Internet Technologies
Claim Number: FA0605000720824
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 Nokta
Internet Technologies (“Respondent”), represented by Paul Raynor Keating, Balmes 173 2 2, Barcelona 08006, Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clubrewards.com>,
registered with Moniker Online Services,
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.
The Honourable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 30, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 31, 2006.
On May 30, 2006, Moniker Online Services, Inc. confirmed by e-mail to
the National Arbitration Forum that the <clubrewards.com>
domain name is registered with Moniker Online Services, Inc. and that the
Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is
bound by the Moniker Online Services, 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 June 6, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 26, 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@clubrewards.com by e-mail.
On June 22, 2006, Respondent requested, pursuant to Supplemental Rule 6, an extension of 21 days to respond to the Complaint due to extenuating circumstances. On June 22, 2006, the National Arbitration Forum, with Complainant’s consent, granted Respondent an extension and set a new deadline of July 17, 2006 for a filing of a Response.
A timely Response was received and determined to be complete on July
14, 2006.
On July 20, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Diners Club International Ltd
contends that:
1. The domain name <clubrewards.com> which is registered in the name of the
Respondent is nearly identical and confusingly similar to the Complainant’s
service mark, CLUB REWARDS which was registered with the United States Patent
and Trademark Office (the USPTO ) on January 1, 1991. .
2. Respondent does not have any rights
or legitimate interests in the <clubrewards.com>
domain name.
3.
Respondent registered and is using the domain name <clubrewards.com> in bad faith.
4.
The domain name should be transferred from Respondent to Complainant.
B. Respondent
Respondent Nokta Internet Technologies
maintains that the disputed domain name was registered by an automated software
system that combines key search terms which are generic or descriptive words
and uses them to form domain names.
Because of the possibility that this system will create domain names
that conflict with trademarks, the Respondent reviews such cases and, where
appropriate, abandons the domain name thus created or transfers it to the
trademark owner. In the present case,
as such a situation arose, the Respondent was prepared to transfer the
contentious domain name to the Complainant and that process has progressed, but
has not yet been concluded.
Accordingly, the Respondent expressly stipulates and requests that the
domain name <clubrewards.com>
be transferred to Complainant.
FINDINGS
The Complainant is the famous credit card and
financial services company that operates the equally well-known affinity
rewards program CLUB REWARDS. It uses
the CLUB REWARDS program to promote its services and the goods and services of
its marketing partners. It registered
CLUB REWARDS with the USPTO on January 1,1991 as a service mark.
The Respondent is an internet technology
company which uses in its business an automated software system. This system matches generic and descriptive
words to create and register domain names that might be likely search expressions
used by direct internet navigators. In
the course of using this system it conceived the contentious domain name that
was registered on March 10, 2003.
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; and
(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.
Whatever the history of this matter, it is
clear that it is now a request for a consent order. That is so because the
Complainant asks for an order that the contentious domain name be transferred
to it. The Respondent says that it was
only the automated system it uses that produced a domain name that has raised
‘trademark issues’ with the Complainant and, as that result has now become
apparent, it also asks for an order that the domain name be transferred to the
Complainant.
It is open to the Panel when faced with such a
situation to forgo the usual UDRP analysis of the three issues set out above
and simply make an order for the transfer of the domain name to
Complainant. That course was followed
in Boehringer Ingelheim Int’l GmbH v.
modern Ltd-Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003). It was also followed in PSC Mgmt. Ltd. Partnership v.
PSC Mgmt. Ltd. Partnership, FA
467747 (Nat. Arb. Forum June 6, 2005) and in 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.”). The same
course was followed recently by the panel as presently constituted in Norgren, Inc. v. Norgren, Inc., FA
670051 (Nat. Arb. Forum May 23, 2006) and even more recently in The Body Shop Int’l plc v. Agri, Lacus, and
Caelum LLC, FA 679564 (Nat. Arb.
Forum May 25, 2006). The Panel
respectfully adopts the position as put forth in the most recent of those
decisions, The Body Shop Int’l plc:
Consistent with a general legal principle governing arbitrations as
well as national court proceedings, this Panel holds that it cannot issue a
decision that would be either less than requested, or more than requested by
the parties. Because both Complainant and Respondent request the transfer
of the disputed domain name to Complainant, the Panel must recognize the common
request of the two parties.’
Indeed, it would be unwise to make any other
findings in case the same issues were to arise in later proceedings. Accordingly, the Panel will not make any
findings of fact or compliance or otherwise, but will make the only order that
is appropriate in the circumstances, which is an order for the transfer of the
domain name to Complainant.
DECISION
Accordingly, it is Ordered that the <clubrewards.com>
domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,Panelist
Dated: August 2, 2006
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