Diners Club International Ltd. v. Earick Allen / Allen & Associates
Claim Number: FA1508001632709
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is Earick Allen / Allen & Associates (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <urbandinersclub.com>, <urbandinersclub.net> and <urbandiners.club>, registered with Godaddy.Com, 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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2015; the Forum received payment on August 12, 2015.
On August 12, 2015, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <urbandinersclub.com>, <urbandinersclub.net> and <urbandiners.club> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, 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 August 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 2015 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@urbandinersclub.com, postmaster@urbandinersclub.net, postmaster@urbandiners.club. Also on August 13, 2015, 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 August 14, 2015.
On August 19, 2015 an Additional Submission submitted by Complainant was received by the FORUM. This submission was determined to be compliant.
On August 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Roberto A. Bianchi as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant`s contentions can be summarized as follows:
Complainant owns the DINERS CLUB mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 828,013, registered April 25, 1967). Complainant provides financial services to individuals, small businesses, and large corporations, and uses the DINERS CLUB mark in connection with those services. The disputed domain names are confusingly similar to the DINERS CLUB mark. The <urbandinersclub.com> domain name wholly incorporates Complainant’s mark, adds the generic word “urban,” and attaches the generic top-level domain (“gTLD”) “.com” to the domain name. The <urbandinersclub.net> domain name incorporates Complainant’s mark in full, adds the generic word “urban,” and attaches the gTLD “.com.” The <urbandiners.club> domain name contains Complainant’s mark in its entirety, adds the generic word “urban,” and uses the top level domain “.club,” which is a portion of Complainant’s mark, to complete the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent has never been commonly known by the disputed domain names, as the WHOIS record for the disputed domain names identifies “Earick Allen / Allen & Associates” as the registrant of record. Further, Complainant has not granted Respondent any license, permission, or authorization to use the DINERS CLUB trademark. Respondent’s lack of rights or legitimate interests in the disputed domain names is made evident by Respondent’s failure to use these domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses or has used the disputed domain names to divert Internet users to a commercial website that features generic links to third-party websites. See Compl., at Attached Ex. F. Two of the disputed domain names now feature no content, merely a statement noting “website coming soon!” Id.
Respondent has engaged in bad faith registration and use of the disputed domain names. Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Finally, Respondent had knowledge of Complainant and its rights in the DINERS CLUB mark, both at registration and renewal of the disputed domain names, which is evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
In summary, Respondent`s contentions are as follows:
The disputed domain names were registered December 4, 2007.
Respondent’s original plan for its business had nothing to do with financial services, and Respondent procured the disputed domain names for business purposes totally unrelated to Complainant.
Respondent has no desire to use the disputed domain names any longer, as stated in its communication to Complainant on November 20, 2014. Thus, the subsequent automatic renewal of the domain names is of no benefit to Respondent. If Complainant desires a transfer of the disputed domain names, Respondent is willing to cooperate so long as all the information is supplied and costs are paid.
C. Additional Submissions
In its Additional Submission, Complainant states that Respondent fails to rebut Complainant’s prima facie case, and does not deny any of the assertions or arguments set forth in the Complaint.
Respondent’s response states simply that he requested transfer instructions but that Complainant never supplied them. This is not true. Respondent was sent instructions by Federal Express on Thursday, February 19, 2015, and “E.ALLEN,” that is, Respondent Earick Allen, signed for the Federal Express on Monday, February 23, 2015. Exhibit A to Compl. Addnl. Submission. Contrary to Respondent’s response, Complainant made every attempt to resolve the matter before initiating these proceedings.
As to the <southshoredinnerclub.com>, <secretdinersclub.com>, <metrodiningclub.com>, and <capecoddiningclub.com>, noted by Respondent, Complainant observes that of these, only one domain name contains the DINERS CLUB mark and none of these domain names are registered to Respondent. It appears that Respondent is attempting to raise an “everybody is doing it” defense by referencing domain names that Respondent believes are confusingly similar to Complainant’s trademarks. However, Complainant is not aware of any such defense under the UDRP and, in any event, Complainant’s history of protecting consumers from confusion through the enforcement of its DINERS CLUB mark in the domain name space is well established.
Respondent did not reply to Complainant`s additional submission.
Respondent unilaterally stated his wish to unconditionally transfer the disputed domain names to Complainant. Accordingly, it is so ordered.
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.
In its Response[1], Respondent states the following:
“
[A]s I stated in my communication of November 20, 2014, given that I have no
desire to use the domains any longer, their subsequent automatic renewal is of
no benefit to me. While I do not expect to be reimbursed for their purchase, I
also do not intend to incur any expense related to transferring the domain
names to your client. Again, as I have consistently indicated, if your client
desires that the domain names be transferred, I will need to be supplied all
information necessary for that transaction. I will also expect that any costs
associated with this transfer will be borne by your client.”
In the Panel`s opinion, Respondent`s statement represents a unilateral consent to transfer the disputed domain names to Complainant. Also, Respondent`s consent is unconditional. His wish not to incur any costs for the transfer clearly does not represent a condition because the transfer is the result of an order issued by a panel in a UDRP proceeding, for which no expense has been established in addition to the fee paid pursuant to Rules ¶ 19 and the provider`s corresponding supplemental rules. In sum, the instant case is similar to those cases where panels granted transfer based on respondent’s consent, such as in Williams-Sonoma, Inc. v. EZ-Port, D2000-0207 (WIPO May 5, 2000) (although in Williams-Sonoma the respondent had not submitted any response). This Panel, like the panel in Williams-Sonoma believes that “the better course is to enter an order granting the relief requested by the Complainant so that the transfer may occur without further delay.” UDRP Panels normally consider that the unilateral consent by the respondent to unconditionally transfer a disputed domain name to the complainant is sufficient to order the transfer without examining whether the requirements of UDRP ¶ 4(a) are met or not. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also 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.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Accordingly, it is Ordered that the <urbandinersclub.com>, <urbandinersclub.net> and <urbandiners.club> domain names be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: August 28, 2015
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