national
arbitration forum
DECISION
Diners Club International Ltd. v. Morty's Domains
Claim Number: FA0611000848828
PARTIES
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul
D. McGrady, Jr., of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is Morty's Domains (“Respondent”), 3940
Laurel Canyon Blvd., Studio City,
CA 91604.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <dinersclubecuador.com>, registered
with Name.net Llc.
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 Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on November 21, 2006;
the National Arbitration Forum received a hard copy of the Complaint on November 21, 2006.
On November 22, 2006,
Name.Net Llc confirmed by e-mail to the
National Arbitration Forum that the <dinersclubecuador.com>
domain name is registered with Name.net Llc
and that Respondent is the current registrant of the name. Name.net Llc
has verified that Respondent is bound by the Name.net
Llc 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 November 30, 2006,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of December 20, 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@dinersclubecuador.com by
e-mail.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On December 27, 2006, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed Honorable Paul
A. Dorf (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
<dinersclubecuador.com>
domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent
does not have any rights or legitimate interests in the <dinersclubecuador.com> domain name.
3. Respondent
registered and used the <dinersclubecuador.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
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 <dinersclubecuador.com>
domain name on September
1, 2006. Respondent is using the disputed domain name to
operate a website filled with links to third-party websites. Many of the
linked third-party websites offer financial goods and services in direct
competition with Complainant, for example “Chase Travel Rewards Card,” “Credit
Cards With Rewards” and
“Quick Student Credit Card.”
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 and
DINERS marks through registration of the marks with the USPTO. The panel
finds that Complainant’s USPTO registrations establish 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
<dinersclubecuador.com>
domain name is confusingly similar to Complainant’s DINERS CLUB and DINERS
marks. The disputed domain name includes Complainant’s entire DINERS CLUB
mark and adds the geographic term “Ecuador.” The Panel finds
that the addition of a geographic term fails to distinguish Respondent’s domain
name from Complainant’s marks pursuant to Policy ¶ 4(a)(i).
See Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that
the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and
<sunkistasia.com> are confusingly similar to the complainant’s registered
SUNKIST mark and identical to the complainant’s common law SUNKIST GROWERS
mark); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000)
(finding confusing similarity between the complainant’s VERISIGN mark and the
<verisignindia.com> and <verisignindia.net> domain names where the
respondent added the word “India” to the complainant’s mark).
The
Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Rights or Legitimate Interests
Complainant
asserts that Respondent lacks rights and legitimate interests in the <dinersclubecuador.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 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure
to respond not only results in its failure to meet its burden, but also will be
viewed as evidence itself that Respondent lacks rights and legitimate interests
in the disputed domain name.”).
Respondent
is using the <dinersclubecuador.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 <dinersclubecuador.com> domain
name. Respondent’s WHOIS information identifies Respondent as “Morty’s
Domains,” 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 Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); 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.
Registration and Use in Bad Faith
Respondent is using the <dinersclubecuador.com> domain name to
misdirect Internet users to its website featuring links to third-party websites
in direct competition with Complainant. Internet users finding themselves
at Respondent’s website may follow the links and do business with one of the
third-party businesses instead of doing business with Complainant. The
Panel finds that such use disrupts Complainant’s business and is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith
by attracting Internet users to a website that competes with the complainant’s
business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s
<dinersclubecuador.com>
domain name is confusingly similar to Complainant’s DINERS CLUB and DINERS
marks. This confusing similarity 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.
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 <dinersclubecuador.com> domain name
be TRANSFERRED from Respondent to Complainant.
Honorable
Paul A. Dorf (Ret.), Panelist
Dated: January 10, 2007
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