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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Diners Club International, Ltd. v. WebsiteNames.com
Claim Number: FA0106000097737
PARTIES
The Complainant is Diners Club International Ltd., Chicago, IL, USA ("Complainant") represented by Richard M. Assmus, of Mayer, Brown & Platt. The Respondent is WebsiteNames.com, Coral Gables, FL, USA ("Respondent") represented by Steven Bombard.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carteblanche.com>, registered with Network Solutions, Inc.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.
Daniel B. Banks, Jr., R. Glen Ayers, M. Scott Donahey as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on June 25, 2001; the Forum received a hard copy of the Complaint on June 26, 2001.
On June 27, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <carteblanche.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 June 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 2001 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@carteblanche.com by e-mail.
A timely response was received and determined to be complete on July 17, 2001.
Complainant filed an Additional Response within the time allowed and that Additional Response was considered. Respondent filed an Additional Submission after the deadline for submissions. That Additional Submission was forwarded to the Panel and was considered.
On July 25 2001, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed as Panelists R. Glen Ayers, M. Scott Donahey and Daniel B. Banks, Jr.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant is Diners Club International, Ltd. ("DCI"), a worldwide financial services company. Among DCI's services is the CARTE BLANCHE credit card, which was first offered in 1964. Complainant has owned a federal trademark registration for the CARTE BLANCHE mark since 1958. The first CARTE BLANCHE cards were issued by the Carte Blanche Corporation in 1982. Citicorp which is the owner of DCI acquired Carte Blanche Corporation. The CARTE BLANCHE card became a leader, along with the DINERS CLUB card, in the high end "travel and entertainment" sector and has maintained a loyal following of cardholders. In 1997, the year in which Respondent registered the disputed domain name "carteblanche.com", there were over 25,000 CARTE BLANCHE cardholders. CARTE BLANCHE cards are accepted at over 1.1 million ATM machines, travel agents and merchants.
The disputed domain name had been originally registered by DCI in March 1995 but was deleted for non-payment in March 1997, ten days before Respondent's predecessor-in-interest, OLX, registered the domain name. When DCI learned of the lapsed registration and re-registration by OLX, DCI placed the name on "hold" under the NSI trademark policy at the time. After the name was taken off "hold" in May 2000, the domain name registrant was changed from "OLX" to Respondent WebsiteNames.com.
The Respondent, WebsiteNames.com, is a broker of domain names. It registers available domain names, including both common words and trademarks, and holds these domain names for sale through its website. Apparently, Respondent does not make any other uses of the domain names it maintains.
After the Respondent registered the disputed domain name, DCI, through counsel, informed OLX that the registration of the carteblanche.com domain name violated DCI's rights in the CARTE BLANCHE mark and asked that OLX immediately cease all use of the domain name carteblanche.com and assign the domain name to DCI. At that time, Respondent claimed to have legitimate plans for the domain name and refused to cease its infringing and diluting activities. To this date, Respondent has not made any use of the domain names and has held the name solely in a hope of selling it for a profit.
In September 2000, DCI again asserted its rights against Respondent by a letter from DCI's attorney. In response to this letter, Respondent's attorney wrote:
"carteblanche.com" has not been used by our client's websitenames.com". Our function has been custodial, namely, to protect people from themselves where their own lethargy and failure to act has caused their name to be in a position of jeopardy. "websitenames.com" has served faithfully as a custodian of "carteblanche.com" and needs only to be compensated for these services and will assign the name to whomever Diner's Club may direct."
Thereafter, Respondent offered to sell the domain name to DCI for the sum $25,000 making reference to the anticipated costs that DCI would expend in order to enforce its rights. Specifically, it was stated, "We are prepared to offer the custodial fee for a fraction of what it would cost even to get through Discovery in Trademark litigation."
The domain name incorporated Complainant's entire registered trademark "CARTE BLANCHE". It is virtually identical to Complainant's mark and, under the circumstances, the confusing similarity standard of Paragraph 4(a)(i) is met.
Respondent has no legitimate rights in respect of the Domain Name as required by Paragraph 4(a)(ii) of the policy. Specifically, Respondent has never made any use of the domain name. It is simply part of Respondent's inventory of domain names. While domain name brokering may be a legitimate use of a domain name in certain circumstances, it is not legitimate use when the domain name incorporates a famous registered mark like CARTE BLANCHE and where the domain name is held hostage based on the trademark owner's expected cost of obtaining the domain name through legal action. Also, Respondent is not known nor has it become known by the domain name and Respondent cannot show non-commercial or fair use of the domain name.
Respondent registered and is using the domain name in bad faith. Registration primarily for the purpose of selling the domain name indicates bad faith. And, the fact that Respondent offered to sell the name for $25,000 and made reference to DCI's anticipated cost of legal action to enforce its rights clearly indicates bad faith. Such a demand clearly exceeds any documented out-of-pocket costs directly related to domain name registration.
B. Respondent:
Respondent WebSiteNames.com, inc. is in the business of identifying domain names comprised of generic or descriptive terms, registering those domain names, selling them to interested parties, and/or developing Web sites using those domain names for clients. Respondent registered the carteblanche.com domain name with Network Solutions on March 24, 1997.
Respondent had written communication with Complainant in 1997, but there was no further communication until September 2000 at which time, DCI stepped up their pursuit of the carteblanche.com domain name. By October 2000, Respondent wanted to resolve the matter to either commence with plans to develop the name or to receive adequate compensation to suffice giving up those plans and any other options. Respondent was advised that the most efficient and amicable way to settle the matter directly was to propose the concept of a "custodial fee". Respondent's subsequent offer was rejected by DCI.
There would be no confusion between the CARTE BLANCHE card and the domain name carteblanche.com. The term carte blanche is an almost universal term that has been integrated into many Romance and Germanic languages. It is a commonly used phrase and dictionary term in common usage. It has been in the lexicon of many languages including French since 1798 and English since 1913. Carte Blanche is widely used on the Internet and mainstream media. Citations rarely
refer to the credit card nor any products or services from DCI.
Carte Blanche is not a well-known mark. In the realm of a universal, global, general credit card, the fact that it has only 25,000 card holders is an extremely small number when compared with the tens of millions of card holders of legitimately famous, global credit cards. The Wall Street Journal ran an article dated December 6, 2000, titled "Citigroup Banks On a Makeover For Diners Club." It was noted therein that "it is resuscitating another illustrious name from the past -Carte Blanche, a card also owned by Citigroup that is still in limited circulation but hasn't been marketed in years." The Thomson Financial Publication Credit Card Management, dated May 2 2001, titled "The Continuing Push for Acceptance" noted that DCI "went back to the future by relaunching its long dormant Carte Blanche brand."
With respect to DCI's claim that Respondent does not have a legitimate right to the disputed domain name because it is not its primary corporate name, Respondent contends that a person or entity may legitimately register and use many domain names that are different from its corporate or trade names. While registration of a domain name that mimics one's corporate or trade name may provide proof of legitimacy, the inverse is not also true. The absence of a corporate or trade name from which a domain name was derived does not render the registration and use illegitimate.
DCI has not proven that Respondent has no legitimate interests in the domain name. DCI's trademark Carte Blanche has a literal French translation meaning "white card". This white card was used in France to give the holder freedom and authority to sign off on expenditures. This is not fanciful or arbitrary use and any secondary meaning in its mark is not so strong such that consumers are likely to associate carteblanche.com only with DCI. Respondent is in the business of selling generic and descriptive domain names such as carteblanche.com. As a result, Respondent's descriptive, non-source identifying domain name make its interest legitimate, whether or not Respondent or its associates had the ability or opportunity to develop a working website on the domain.
With regard to Complainant's claim of bad faith, Respondent did not contact DCI to sell the domain name. Rather, DCI approached Respondent. Respondent never suggested to DCI or its representative that the name was available for sale nor did it seek any compensation in 1997, 1998 or 1999. In 2000, Respondent talked about compensation after it felt backed into a corner by DCI's representative and believed that it had no other viable, amicable, efficient alternative.
Respondent clearly does sell domain names. However, Respondent also registers names for possible future development of websites for itself or its clients. Respondent owns many domain names and they are all generic or descriptive and/or have a likely common or popular meaning in the vernacular. They have all been properly researched for propriety. "The UDRP is very narrow in scope; it covers only clear cut cases of 'cybersquatting' and 'cyberpiracy', and does not cover every dispute that might arise over domain names." CarteBlanche.com was selected along with other generic or commonly used French terms and phrases for sale or other future development.
FINDINGS
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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;
(2) the 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
Respondent contends that "carte blanche" is generic in nature, as it is a common dictionary term, and thus is not an exclusive term in which only Complainant may assert rights. Respondent therefore has rights and legitimate interests in the disputed domain name. Respondent cites a South African television show titled "Carte Blanche," which has 3.5 million viewers. See CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that "concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website"); see also Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that Respondent has rights and legitimate interests in the domain name where Complainant submitted insufficient evidence to establish either fame or
strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the CAR TOYS mark).
It is the finding of this panel that the term "carte blanche" is generic in nature and is a commonly used term. As such, it has not acquired secondary meaning sufficient to allow Complainant the exclusive use of that term.
Rights or Legitimate Interests
Respondent further contends that it has rights and legitimate interests in the disputed domain name as it deals in the business of registering generic or descriptive terms as domain names and selling them to interested parties, and that the disputed domain name is just such a term. See Shirmax Retail Ltd. v. CES Mktg., Inc., AF-0104 (eResolution Mar. 20, 2000) (stating "[G]iven the generic nature of the domain name, [Respondent] has at least a tenable argument that its use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark").
Respondent contends that it was unable to use and develop a website located at the disputed domain name because Complainant had the registrar place a hold on <carteblanche.com>, however Respondent fails to allege at what date a hold was placed on the disputed domain name. See 3Z Prod. v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000) (finding a legitimate interest in a domain name is shown by website development); see also David J. Joseph Co. v. Barry, D2000-1418 (WIPO Jan. 2, 2001) (finding Respondent provided substantial evidence of his demonstrable preparations to use the domain name with a business involving the sale of scrap materials prior to receiving notice of the present dispute).
A mark is weak when it is generally descriptive. (EAuto L.L.C. v. Eauto Parts, D2000-0096). The mark "Carte Blanche" is generally descriptive in two ways. First, in the literal French translation, it means "White Card." Second, it is generally recognized in English to mean "unlimited authority." Where a mark is weak, it is difficult to argue that the Respondent does not have legitimate rights and interests in respect of the domain name.
Registration and Use in Bad Faith
Respondent contends that Complainant contacted Respondent regarding the sale of the disputed domain name, and that Complainant’s initial contact cannot render Respondent’s offer to sell the disputed domain name in bad faith. See Sumner v. Urvan, WIPO D2000-0596 (WIPO July 24, 2000) (finding no bad faith where Respondent did not contact Complainant first, but rather, Complainant first contacted Respondent about purchasing the domain name). But see Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a Panel should not "put much weight on the fact that it was the Complainant who contacted the Respondent to see if it was interested in selling the domain name"). However it is unclear from the record if Complainant contacted Respondent regarding the sale of the disputed domain name, or the transfer of the domain name.
Respondent further contends that its offer to sell the disputed domain name was not in bad faith as the domain name is generic, and Complainant cannot have exclusive rights to the term "carte blanche." See John Fairfax Publ'n. Pty Ltd v. Domain Names 4U & Fred Gray, D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where the Respondent is a seller of generic domain names); see also Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).
Where the part of a domain name that is identical to a mark is a generic term, it does not constitute bad faith. (Allocation Network GmbH v. Steven Gregory, WIPO Case No. D2000-0104). Also, the registration of many descriptive terms is evidence that the Respondent is not acting in bad faith and is not attempting to profit from the use of Complainant's mark. (EAuto L.L.C. v. Net Me Up, D2000-0104). It is not bad faith to engage in the business of registering and selling domain names that incorporate descriptive terms. (Shirmax Retail Ltd./ Detaillants Shirmax L TEE v. CES Marketing Group, Inc., AF-104).
DECISION
It is the decision of panelists Daniel B. Banks, Jr. and M. Scott Donahey that the Complainant's request that the domain name "carteblanche.com" be transferred is denied. Panelist R. Glen Ayers files a separate dissenting opinion.
Daniel B. Banks, Jr., Panel Chair
Dated: August 2, 2001
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