DECISION

Diners Club International Ltd. v. SPS a/k/a DCS a/k/a ADC

Claim Number:  FA0303000149414

PARTIES

Complainant is Diners Club International Ltd., Chicago, IL, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry, Digital Brands Practice. Respondent is SPS a/k/a DCS a/k/a ADC, Haarlem, 2000 AC, NL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aboutdinersclub.com> and <dinersclubsucks.com>, registered with Bulkregister.Com, Inc.

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 14, 2003; the Forum received a hard copy of the Complaint on March 17, 2003.

On March 17, 2003, Bulkregister.Com, Inc. confirmed by e-mail to the Forum that the domain names <aboutdinersclub.com> and <dinersclubsucks.com> are registered with Bulkregister.Com, Inc. and that Respondent is the current registrant of the names. Bulkregister.Com, Inc. has verified that Respondent is bound by the Bulkregister.Com, Inc. 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 March 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 7, 2003 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@aboutdinersclub.com and postmaster@dinersclubsucks.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On April 14, 2002, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <aboutdinersclub.com> and <dinersclubsucks.com> domain names are confusingly similar to Complainant’s DINERS CLUB mark.

2. Respondent does not have any rights or legitimate interests in the <aboutdinersclub.com> and <dinersclubsucks.com> domain names.

3. Respondent registered and used the <aboutdinersclub.com> and <dinersclubsucks.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Diners Club International, Ltd., is the owner of numerous trademarks and services marks, all of which incorporate the DINERS CLUB mark, or some variation thereof (e.g., DINERSCLUB). More specifically, Complainant holds the following trademarks: France Reg. No. 99,808,591 for DINERS CLUB INTERNATIONAL registered on January 28, 2000; Australian Reg. No. 820,822 for DINERS CLUB registered on February 21, 2001; Austrian Reg. No. 185,392 for DINERS CLUB INTERNATIONAL LTD. registered on December 28, 1999; United States Reg. No. 2,658,760 for DINERS CLUB INTERNATIONAL registered on the Principal Register on December 10, 2002; and United States Reg. No. 828,013 for DINERS CLUB registered on April 25, 1967.

Complainant has also applied for registration of its mark in Albania, Bahrain, Bosnia-Herzegovina, Bulgaria, Chile, El Salvador, Germany, India, Italy, Malta, Morocco, Pakistan, and Taiwan, among others. The majority of Complainant’s DINERS CLUB marks cover credit card services; credit card user loyalty programs; and assistance to travelers in the form of providing medical and legal referrals, recovery or replacement of travel documents. Additionally, for most of the past decade Complainant has used the DINERS CLUB mark in conjunction with a credit card program concerning restaurant discounts and dining guides. Complainant has used the DINERS CLUB mark to identify its products and services since 1965.

Complainant is a leading provider of financial services to individuals, small businesses and large corporations. Complainant’s credit cards are accepted in over 200 countries and at over 7.6 million locations around the world. Complainant is a wholly owned subsidiary of Citigroup, a leading global financial services organization. Complainant’s DINERS CLUB credit cards are accepted at 700,000 ATMs and are issued in 64 international currencies. Complainant has over 8 million individual DINERS CLUB cardholders. Over half of the Fortune 500 companies hold corporate cards issued by Complainant under the DINERS CLUB mark. In 2001, Complainant’s DINERS CLUB mark produced sales of related products and services upwards of $31 billion.

Due to Complainant’s extensive marketing of its DINERS CLUB products and related services, the mark has become famous and readily identifies Complainant’s offerings.

Respondent, SPS a/k/a DCS a/k/a ADC, registered <aboutdinersclub.com> and <dinersclubsucks.com> on May 26, 2001 and March 1, 2003, respectively. Complainant’s investigation of Respondent’s use of the subject domain names indicates that the domain names currently do not resolve to a website, and that Respondent makes no use of the domain names. However, “Respondent is a pornographer and has made it clear that it will put these domains to its use unless paid by Complainant.” Respondent’s correspondence to Complainant states:

           

Personally, I exploit primarily erotic flavored Internet sites and am in contact with hundreds of similar firms, worldwide . . . If Diners Club is only aiming at acquiring the domain name or both domain names without any compensation, I request you to act accordingly and take legal action without any further contact with me or my company.

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.

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 mark through registration with various international trademark authorities and continuous use of the mark in commerce since 1965.

Respondent’s <aboutdinersclub.com> and <dinersclubsucks.com> domain names are confusingly similar to Complainant’s DINERS CLUB mark. Respondent’s domain name incorporates Complainant’s famous mark in its entirety. Respondent merely adds suggestive generic words to Complainant’s mark, which fails to create a distinguishable second-level domain under the Policy. Complainant’s mark remains the dominant element in Respondent’s domain names, and the focus centers on the DINERS CLUB mark. Therefore, Respondent’s domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

Additionally, the presence of top-level domains, such as “.com,” is inconsequential when conducting an analysis under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent did not respond to Complainant’s submission, thereby failing to fulfill its burden of demonstrating rights or legitimate interests in the subject domain names. Respondent’s failure to respond allows all reasonable inferences made by Complainant to be regarded as true, unless clearly contradicted by the evidence. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Moreover, Respondent’s failure to submit evidence of circumstances that may suggest it has rights or legitimate interests in the disputed domain names corroborates Complainant’s assertions that Respondent has none. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

Uncontested evidence indicates that Respondent has made no use of the domain names, except to use the registrations as leverage in order to bargain with Complainant over their sale. Respondent’s correspondence with Complainant indicates that Respondent is engaged in pornography. Further, Respondent’s fax indicates that it will seek to tarnish Complainant’s DINERS CLUB mark, and the goodwill contained therein, by linking the subject domain names to pornographic material unless Complainant offers some form of compensation. The circumstances surrounding Respondent’s registration reveal that Respondent intends to sell its rights in the domain names. Respondent’s willingness to dispose of the domain name registrations suggests that it lacks rights in the domain names under Policy ¶ 4(c)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the world-wide web would be "misleadingly" diverted to other sites).

No evidence suggests Respondent is commonly known by the <aboutdinersclub.com> and <dinersclubsucks.com> domain names pursuant to Policy ¶ 4(c)(ii). Complainant is the senior user of the DINERS CLUB family of marks, and Respondent appears to be holding Complainant hostage through a disguised threat. Further, Respondent’s WHOIS information fails to reference the DINERS CLUB mark or an affiliation with Complainant of any kind. 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Respondent’s second-level domains (i.e., “aboutdinersclub” and “dinersclubsucks”) suggest Respondent has a noncommercial purpose for the domain names. However, Respondent has failed to submit a plan to the Panel that establishes the development of legitimate websites. Moreover, previous panels have determined that a respondent cannot identify itself by another’s mark where the mark is famous, despite noncommercial intentions. Therefore, Respondent fails to establish rights in the domain names under Policy ¶ 4(c)(iii). See Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding no rights or legitimate interests from Respondent's alleged "free speech" use of the domain name <vivendiuniversalsucks.com>, which fully incorporated Complainant's VIVENDI UNIVERSAL mark, because the domain name was passively held); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests in respect of 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”).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Factual circumstances indicate that Respondent registered the domain names in bad faith because it had knowledge of Complainant’s DINERS CLUB mark prior to registering the infringing domain names. Not only is Complainant’s DINERS CLUB mark represented by a plethora of international trademark registrations, but Complainant’s mark and corresponding services are responsible for billions of dollars in annual revenues. The nature of Respondent’s domain names also suggests Respondent had knowledge of Complainant’s rights in the DINERS CLUB mark because the domain names indicate critical commentary. For the above reasons, the Panel infers that Respondent was at least constructively, if not actually aware of Complainant’s mark prior to registering the domain names. Respondent’s registration of  <aboutdinersclub.com> and <dinersclubsucks.com>, despite knowledge of Complainant’s rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith); see also Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding bad faith because Respondents had prior knowledge of Complainant's VIVENDI UNIVERSAL mark and deliberately chose to register a domain name that incorporated that mark in its entirety with the word "sucks").

Complainant’s submission reveals that Respondent registered the infringing domain names primarily for the purpose of selling, or otherwise transferring the registrations to Complainant; therefore, Respondent’s actions constitute bad faith pursuant to Policy ¶ 4(b)(i). Respondent’s correspondence with Complainant illustrates this statement because Respondent states it will not transfer the domain name registrations without “compensation.” Conditions surrounding Respondent’s registration, such as its passive holding of the domain names and suggestive statements, permit the inference that Respondent used the domain names in bad faith under the Policy. See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).

Additionally, although passive holding is usually not a determinative factor in finding bad faith when the domain name has been registered relatively recently, the present dispute contains circumstances that reinforce such a finding. Specifically, Respondent registered the <dinersclubsucks.com> domain name on March 1, 2003. Factors that support the Panel’s finding of bad faith regarding this domain name are: Respondent’s suggestive statements to Complainant indicating it was interested in selling its rights in the domain name; the fact that the domain name incorporates Complainant’s entire mark; and Respondent did not submit materials providing an explanation that supported future legitimate use. See E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <aboutdinersclub.com> and <dinersclubsucks.com> domain names be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  April 21, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/394.html