Diners Club International Ltd. v. Rulator Corp.
Claim Number: FA1411001591801
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA.
Respondent is Rulator Corp. (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dinersbucks.com>, registered with NETWORK SOLUTIONS, LLC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2014; the National Arbitration Forum received payment on November 25, 2014.
On November 24, 2014, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <dinersbucks.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dinersbucks.com. Also on November 25, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 11, 2014.
A timely Additional Submission was received from Complainant on December 16, 2014, and deemed compliant.
On December 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the DINERS trademark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,462,209, registered Oct. 20, 1987), as well as the DINERS CLUB trademark, registered with the USPTO (Reg. No. 828,013, registered April 25, 1967). The Complainant uses the DINERS and DINERS CLUB trademarks in connection with financial services for individuals, small businesses, and large corporations.
The <dinersbucks.com> domain name is confusingly similar to the DINERS mark as the disputed domain name incorporates the trademark in full, merely adding the term “bucks.” The added term “bucks” is a reference to Complainant’s services in the financial sector.
The Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has never been known by the <dinersbucks.com> domain name, and has no authorization from Complainant to use the trademark. Further, Respondent has never used the disputed domain name in furtherance of a bona fide offering, or a legitimate noncommercial or fair use. The Respondent resolves the disputed domain name to a website offering various pay-per-click advertisements to financial services and restaurant loyalty services.
The Respondent has engaged in bad faith use and registration. Respondent has engaged in a pattern of registering domain names that infringe on other’s trademarks. Further, Respondent’s use of the domain name in connection with pay-per-click scheme, which includes a link to Complainant’s own services, evinces bad faith pursuant to Policy ¶ 4(b)(iv). Lastly, the Respondent had actual knowledge of the Complainant’s trade mark as evidenced by Respondent’s use of the disputed domain name in connection with a website advertising Complainant’s financial card services.
B. Respondent
The Respondent has been in the restaurant business for over thirty-five years. Respondent claims interest in the “diners” plus “bucks” combination. The terms comprising the disputed domain name, “diners” and “bucks,” relate to Respondent’s trade, and the Respondent uses the disputed domain name as a promotional and fundraising program for its restaurant. Further, the <dinersbucks.com> domain name is comprised of generic words outside the scope of Complainant’s control.
Respondent has registered similar domain names in an effort to protect its interest in the “diners” plus “bucks” combination.
C. Additional Submissions
Complainant’s Additional Submission
The Respondent did not deny the existence of the DINERS trademark, or that the subject domain name is confusingly similar to the trademark.
Respondent has failed to allege or evidence adequate common law rights to “diners buck” or the subject domain name.
Further, Respondent’s efforts to use the disputed domain name in connection with pay-per-click ads referencing Complainant’s own DINERS trademark reveal no protected or legitimate use of the disputed domain name.
The Complainant is the owner of the U.S. trademark registrations
No. 1,462,209 DINERS
No. 828,013 DINERS CLUB.
The Respondent registered the <dinersbucks.com> domain name on June 17, 2011.
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."
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.
The Complainant owns the DINERS trademark through registration with the USPTO (Reg. No. 1,462,209, registered Oct. 20, 1987). It is the Panels opinion that this USPTO registration indicate rights in the DINERS mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
As shown by the Complainant, the DINERS trademark, alone or in combination with the word “CLUB”, is used by the Complainant in connection with financial services for individuals, small businesses, and large corporations.
The Complainant argues that the <dinersbucks.com> domain name is confusingly similar to its DINERS trademark for the purposes of Policy ¶ 4(a)(i).
The relevant part of the disputed domain name is “dinersbucks ”, as it has been well established in previous UDRP cases that the added top-level domain – being a required element of every domain name – may be disregarded when assessing whether or not a mark is identical or confusingly similar.See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel note that the remaining portion of the disputed domain name consists of a combination of Complainant’s DINERS mark and the generic term “bucks”.
The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. In this case, the disputed domain name starts with the incorporated trademark, therewith still being the dominant or principal component of <dinersbucks.com>. However, the word “bucks” is also the plural version of the slang word for “one dollar”, thereby meaning “money”. As the Complainant’s trademark DINERS is used in connection with financial services, an added slang word for money does not distinguish the disputed domain name, but rather even more closely point to the Complainant’s services.
While Respondent contends that the disputed domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to the Complainant’s trademark, the Panel find that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s trademark.
Accordingly, the Panel finds the <dinersbucks.com> domain name confusingly similar to the DINERS trademark pursuant to Policy ¶ 4(a)(i), despite the addition of the generic term “bucks,” and gTLD.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant contends that the Respondent has never been known by <dinersbucks.com>, and has no authorization from Complainant to use the trademark. The Panel notes that the WHOIS information identifies “Rulator Corp.” as the registrant of record. While Respondent alleges that Respondent uses the term “diners bucks” as a marketing and promotional tool, the Panel determine there is insufficient evidence to surmise Respondent is actually commonly known by the moniker for purposes of Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Further, the Complainant argues that the Respondent has never used the disputed domain name in furtherance of a bona fide offering, or a legitimate noncommercial or fair use. Instead, Complainant alleges that Respondent resolves <dinersbucks.com> to a website offering various pay-per-click advertisements to financial services and restaurant loyalty services. In its Additional Submission, the Complainant urges that such use effectively trumps any legitimacy Respondent has proffered in the disputed domain name.
The Respondent claims to have been in the restaurant business for over thirty-five years. Although the Respondent has not provided any evidence to support that statement, apart from what the Respondent states is a printout from a web site at “dinerbucks.com” – which in fact has no specific references to the Respondent, other than using the word Diner Bucks – the Panel finds no reason to question that the Respondent may have some interest in the restaurant business.
However, as shown in Exhibit F of the Complaint, the Respondent is using <dinersbucks.com> for a pay-per-click web site with links to “Diners Club”, “Diners Card”, clearly referring to, and trying to take advantages of, the knowledge of the Complainant’s trademark. There are no specific references to the Respondent or any restaurant business related to the Respondent on the said web site.
The Panel therefore finds that the Respondents use <dinersbucks.com> does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Complainant argues that the Respondent has engaged in a pattern of registering domain names that infringe on other’s trademarks, notably, Complainant’s own DINERS trademark. The Panel note that Respondent has been subject to two other cases involving the DINERS trademark, and that the proceedings resulted in transfers to the Complainant. See Diners Club International Ltd. v. Robert Spayne aka Rulator Corp., FA 854291 (Nat. Arb. Forum Jan. 26, 2007); Diners Club International Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007). The Panel determine that these prior cases, involving the instant parties, serve to educate the Panel’s present bad faith determination, and agree that the adverse decisions demonstrate a pattern of bad faith use and registration pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Further, the use of the disputed domain name to promote generic pay-per-click links shows a scheme to profit off a likelihood of Internet user confusion. Therefore, the Panel concludes that Policy ¶ 4(b)(iv) bad faith is at play here.
Lastly, the Complainant argues that the Respondent had actual knowledge of the Complainant’s trademark DINERS as evidenced by Respondent’s use of the disputed domain name in connection with a website advertising Complainant’s financial card services. The Panel notes that <dinersbucks.com> was registered on June 17, 2011, several years after Complainant prevailed against Respondent in previous UDRP cases involving the DINERS trademark. To the Panel, it is therefore obvious that Respondent registered <dinersbucks.com> with actual knowledge of the Complainant and its rights in the DINERS trademark, and the Panel therefore agree that a finding of Policy ¶ 4(a)(iii) bad faith registration is warranted. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dinersbucks.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: December 22, 2014
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