Diners Club International Ltd. v. Standard Tactics LLC
Claim Number: FA0610000820358
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dinerrewards.com>, registered with Go Daddy Software, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 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@dinerrewards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dinerrewards.com> domain name is confusingly similar to Complainant’s DINERS CLUB and DINERS marks.
2. Respondent does not have any rights or legitimate interests in the <dinerrewards.com> domain name.
3. Respondent registered and used the <dinerrewards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diner’s Club International Ltd., holds registrations with the United States Patent and Trademark Office (“USPTO”) for the DINERS CLUB (Reg. No. 828,013 issued April 25, 1967) and DINERS (Reg. No. 1,462,209 issued October 20, 1987) marks. Complainant utilizes the DINERS CLUB and DINERS marks in connection with its operations as a provider of financial services to individuals and businesses, including credit card services. Complainant also uses the marks in its own registered domain name, <dinersclub.com>, used to operate a website for the benefit of Complainant’s online customers and Internet users interested in Complainant’s financial goods and services.
Respondent registered the <dinerrewards.com>
domain name on
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 and DINERS marks through registration of the marks with the USPTO. The panel finds that USPTO registration establishes rights pursuant to Policy ¶ 4(a)(i). See 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 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 <dinerrewards.com> domain name is confusingly similar to Complainant’s DINERS CLUB and DINERS marks. The disputed domain name includes the term “diner,” deleting the letter “s” from the term DINERS in Complainant’s marks. The disputed domain name also includes the descriptive term “rewards,” which is a reference to Complainant’s business practice of rewarding customers who use Complainant’s financial services, particularly credit cards. The deletion of one letter from a term of Complainant’s marks does not distinguish the disputed domain name from Complainant’s marks, and the addition of a term descriptive of Complainant’s business does nothing to overcome the confusing similarity between Complainant’s marks and the disputed domain name. The Panel finds that the disputed domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent lacks rights and
legitimate interests in the <dinerrewards.com>
domain name. Complainant’s assertion
constitutes a prima facie case for purposes of the Policy shifting the
burden to Respondent to demonstrate that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii). The Panel views Respondent’s failure to
submit a Response as evidence that Respondent lacks rights or legitimate
interests. Nonetheless, the Panel will
evaluate the available evidence to determine whether Respondent has rights or
legitimate interests pursuant to Policy ¶ 4(c).
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent is using the <dinerrewards.com>
domain name to redirect Internet users to its website featuring links to
commercial third-party websites offering financial services in direct
competition with Complainant.
Presumably, Respondent is receiving pay-per-click referral fees whenever
Internet users click on the links hosted on Respondent’s website. The Panel finds that such use is neither a bona
fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 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); see also 24 Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep.
26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>,
<24-hourfitness.com> and <24hoursfitness.com> domain names to
redirect Internet users to a website featuring advertisements and links to Complainant’s
competitors could not be considered a bona fide offering of goods or
services or a legitimate noncommercial or fair use).
There is no available evidence that Respondent is commonly
known by the <dinerrewards.com>
domain name. Respondent’s WHOIS
information identifies Respondent as “Standard Tactics LLC,” a name with no
obvious relationship to the disputed domain name. The Panel finds that Respondent is not
commonly known by the disputed domain name as contemplated by Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <dinerrewards.com>
domain name is confusingly similar to Complainant’s DINERS CLUB and DINERS
marks. This confusing simularity may
attract Internet users to Respondent’s website.
Internet users at Respondent’s website may find themselves mistakenly
believing that Complainant is affiliated with or sponsoring Respondent’s
website. Respondent is capitalizing on
this confusion as it is presumably collecting pay-per-click referral fees from
the linked websites hosted on its website.
The Panel finds that such use is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding
bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved
to a website that offered links to third-party websites that offered services
similar to the complainant’s services and merely took advantage of Internet
user mistakes); see also TM Acquisition Corp. v.
Warren, FA 204147 (Nat. Arb. Forum Dec. 8,
2003) (“Although Complainant’s principal website is
<century21.com>, many Internet users are likely to use search engines to
find Complainant’s website, only to be mislead to Respondent’s website at the
<century21realty.biz> domain name, which features links for competing
real estate websites. Therefore, it is
likely that Internet users seeking Complainant’s website, but who end up at
Respondent’s website, will be confused as to the source, sponsorship,
affiliation or endorsement of Respondent’s website.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dinerrewards.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 30, 2006
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