Diners Club International
Ltd. v. my first car ltd. a/k/a ken soderman
Claim Number: FA0705000978665
PARTIES
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 <dinnerclubinternational.us>,
registered with Namescout.com.
PANEL
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.
Honorable Karl V. Fink (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on May 4, 2007;
the Forum received a hard copy of the Complaint on May 8, 2007.
On May 8, 2007, Namescout.com confirmed by e-mail to the Forum that
the <dinnerclubinternational.us>
domain name is registered with Namescout.com
and that Respondent is the current registrant of the name. Namescout.com
has verified that Respondent is bound by the Namescout.com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On May 10, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 30, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On June 4, 2007, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink
(Ret.), 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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the 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
1. Respondent’s <dinnerclubinternational.us> domain name is confusingly similar to Complainant’s CD DINERS CLUB INTERNATIONAL mark.
2.
Respondent does not have any rights or
legitimate interests in the <dinnerclubinternational.us>
domain name.
3.
Respondent registered and used the <dinnerclubinternational.us> domain
name in bad faith.
B. Respondent
Respondent did not respond to this
proceeding.
FINDINGS
Complainant, Diners
Club International Ltd., is a leading provider of financial services to
individuals, small businesses, and large corporations. Complainant issues credit cards that are
accepted in over 200 countries and at over 7.6 million locations
worldwide. Complainant holds a
registered trademark with the United States Patent and Trademark Office
(“USPTO”) for the CD DINERS CLUB INTERNATIONAL mark (Reg. No. 1,127,084 issued
Nov. 27, 1979).
Respondent, my first car
ltd. a/k/a ken soderman, registered the <dinnerclubinternational.us> domain name on August 24,
2005. Respondent is using the disputed
domain name to display a list of hyperlinks, some of which lead to the websites
of Complainant’s competitors and some of which are unrelated to Complainant’s
business.
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 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 or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
Under Policy ¶ 4(a)(i), registration of a mark with an appropriate governmental authority such as the USPTO confers rights in that mark to Complainant. Since Complainant registered the CD DINERS CLUB INTERNATIONAL mark with the USPTO in 1979, the Panel finds that Complainant has established rights in the CD DINERS CLUB INTERNATIONAL mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (“The Panel finds that Complainant’s timely registration [with the USPTO] and subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <dinnerclubinternational.us> domain name makes minor variations to Complainant’s CD DINERS CLUB INTERNATIONAL mark by removing the “CD” and altering “diners” to “dinner.” However, Complainant’s mark remains the dominant portion of the disputed domain name. Respondent is taking advantage of a common typographical error potentially made by Internet users, and this does not distinguish the disputed domain name from Complainant’s mark under the Policy. Therefore, since the addition of the generic top-level domain (“gTLD”) “.us” is irrelevant to an analysis under the Policy, the Panel concludes that Respondent’s <dinnerclubinternational.us> domain name is confusingly similar to Complainant’s CD DINERS CLUB INTERNATIONAL mark pursuant to Policy ¶ 4(a)(i). See The Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has alleged that Respondent does not have rights or legitimate interests in the <dinnerclubinternational.us> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Because Complainant
has established rights to the CD DINERS CLUB INTERNATIONAL mark and Respondent has
not come forward with any evidence showing it is the owner or beneficiary of a
mark identical to the <dinnerclubinternational.us>
domain name, Complainant has satisfied Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the
respondent was the owner or beneficiary of a mark that is identical to the
<persiankitty.com> domain name); see also Pepsico, Inc.
v. Becky, FA 117014 (Nat. Arb.
Forum Sept. 3, 2002) (holding that because the respondent did not own any
trademarks or service marks reflecting the <pepsicola.us> domain name, it
had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant has alleged that Respondent is not commonly known by the <dinnerclubinternational.us> domain
name. The WHOIS information identifies
Respondent as “my
first car ltd. a/k/a ken soderman,” and Complainant has asserted that
Respondent is not licensed or authorized to use Complainant’s mark or any
variation thereof. The Panel can find no
other evidence in the record indicating that Respondent is commonly known by
the disputed domain name. Therefore, the
Panel finds that Respondent is not commonly known by the <dinnerclubinternational.us> domain
name pursuant to Policy ¶ 4(c)(iii). See
The Braun Corp. v. Loney, FA 699652
(Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly
known by the disputed domain names where the WHOIS information, as well as all
other information in the record, gave no indication that the respondent was
commonly known by the disputed domain names, and the complainant had not
authorized the respondent to register a domain name containing its registered
mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
Complainant has asserted that
Respondent is not using the <dinnerclubinternational.us>
domain name for a bona fide offering
of goods and services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iv). In 24
Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is using the <dinnerclubinternational.us> domain name to display a list of hyperlinks, some of which lead to the websites of Complainant’s competitors. This is likely to disrupt Complainant’s business by diverting potential customers to Respondent’s website. The Panel finds that such registration and use of the <dinnerclubinternational.us> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum April 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant has alleged that Respondent’s <dinnerclubinternational.us> domain name, which is confusingly similar to Complainant’s CD DINERS CLUB INTERNATIONAL, is likely to cause confusion among customers searching for Complainant’s financial services. Specifically, Complainant states that customers may become confused as to the affiliation, endorsement, or sponsorship of the competing or unrelated services advertised by the links on Respondent’s website. Respondent presumably receives click-through fees for each misdirected Internet user, and is therefore attempting to commercially benefit from this likelihood of confusion between Respondent’s domain name and the goodwill associated with Complainant’s CD DINERS CLUB INTERNATIONAL mark. Therefore, the Panel finds that Respondent’s registration and use of the <dinnerclubinternational.us> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <dinnerclubinternational.us> domain name be TRANSFERRED from
Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 11, 2007
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