DECISION

Diners Club International Ltd. v. Car In Won Australia pty Ltd

Claim Number:  FA0410000338427

PARTIES

Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Ladas & Parry, 224 South Michigan Avenue, Chicago, IL, 60604.  Respondent is Car In Won Australia pty Ltd. (“Respondent”), 4 Goonyah Crt Greensborough, Melbourne, Victoria 3088, Australia.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically October 1, 2004; the Forum received a hard copy of the Complaint October 4, 2004.

On October 5, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, 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 October 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 2004, 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@dinersclubgiftvouchers.com and postmaster@dinersclubgiftcertificates.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 October 29, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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. The domain names Respondent registered, <dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com>, are confusingly similar to Complainant’s DINERS CLUB mark.

2. Respondent has no rights to or legitimate interests in the <dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com> domain names.

3. Respondent registered and used the <dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com> domain names in bad faith.

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

FINDINGS

Complainant established by extrinsic proof in this proceeding that it owns numerous registrations for the DINERS CLUB mark with governing authorities all across the world, including Albania (Reg. No. 2000/00026, issued Sept. 5, 2001), Australia (Reg. No. 820,822, issued Feb. 21, 2001), Bahrain (Reg. No. SM 3423, issued Jan. 26, 2000), Chile (Reg. No. 562,638, issued June 6, 2000), and the United States (Reg. No. 828,013, issued Apr. 25, 1967), among others.  The DINERS CLUB mark is used to identify the source of Complainant’s services, which include the “extension of credit to customers who purchase at subscribing retail establishments and making collections from such customers through a central billing system,” as well as “credit card services, assistance to travellers (sic) in the form of recovery or replacement of lost or stolen travel documents, travellers cheques (sic) and credit cards. . .”.

In connection with Complainant’s financial services, Complainant issues credit cards that are accepted in over 200 countries, at 7.5 million locations around the world, at 700,000 ATMs, and utilizing some 64 local currencies. In 2001, Complainant’s sales reached approximately $31. billion.  Complainant has more than 8 million individual cardholders.  By using Complainant’s credit cards, customers accumulate what are referred to as “customer loyalty points.”  These loyalty points can then be redeemed for gift certificates and vouchers within the Diners Club Rewards Program.  

Respondent registered the disputed domain names <dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com> April 12, 2004.  The domain names resolve to a website that offers credit card merchant accounts for sale.  Specifically, the website indicates that its “partners authorize credit card purchases, process them, and deposit the proceeds into your account.”  The website lists three types of credit accounts: standad U.S. merchant account, an international account and a specialty merchant account.  The website also lists the application fees associated with each account, which range from $89. to $499.

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 may establish a presumption of rights in a mark either by registering the mark with a legitimate governmental authority or through proof of common law rights in the mark.  In the instant case, Complainant owns numerous registrations for its DINERS CLUB mark with authorities in various countries around the world.  Therefore, Complainant established a presumption of rights in the DINERS CLUB mark. Since Respondent failed to respond to the Complaint, the Panel finds Complainant has rights in the DINERS CLUB mark pursuant to paragraph 4(a)(i) of the Policy.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption). 

The domain names <dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com> both incorporate Complainant’s DINERS CLUB mark in its entirety.  In the instant case, Respondent added the terms “gift vouchers” and “gift certificates” to Complainant’s mark in the disputed domain names.  Complainant’s credit card services involve customer loyalty points that can be redeemed for gift certificates and vouchers via the Diners Club Rewards Program.  Therefore, Respondent’s additional terms incorporated into the domain names simply identify aspects of Complainant’s own credit card services offered under its DINERS CLUB mark, which makes the additional terms descriptive. A term may be deemed descriptive if it identifies anything about goods or services offered under a third-party mark, such as its purpose, size, color, ingredients, intended users, origin, or anything else.  See 2 McCarthy on Trademarks and Unfair Competition § 11:16 (4th ed.) (“A mark is ‘descriptive’ if it is descriptive of: the intended purpose, function or use of the goods; the size of the goods, the provider of the goods, the class of users of the goods, a desirable characteristic of the goods, the nature of the goods, or the end effect upon the user.”).

In some prior decisions under the Policy, panels found that addition of descriptive terms to a third-party mark was insufficient to support findings that a domain name was confusingly similar to the mark under paragraph 4(a)(i) of the Policy.  For example, in Grand Bay Mgmt. Co. v. Allegory Invs., the panel found that the domain name <casinograndbay.com> was not confusingly similar to the GRAND BAY mark.  D2001-0874 (WIPO Sept. 21,  2000).  Also, in Virgin Enters. Inc. v. Internet Domains, the panel found that the domain name <virginmail.com> was not confusingly similar to the VIRGIN mark.  Yet, in these cases, the descriptive terms were being added to marks that were, themselves, descriptive.  That is not the case here.  Therefore, the Panel adopts the view of the majority of panels involved in default decisions that, where a domain name incorporates a third-party mark in its entirety and simply adds descriptive terms to the mark, it is sufficient to establish that the domain name is confusingly similar to the third-party mark pursuant to paragraph 4(a)(i) of the Policy.  See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the terms “traffic school,” “defensive driving,” and “driver improvement,” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporated the VIAGRA mark in its entirety, and deviated only by the addition of the word “bomb,” the domain name was rendered confusingly similar to Complainant’s mark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Complainant established Policy ¶ 4(a)(i).

Rights to Legitimate Interests

Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain names.  Respondent did not contest the allegations set forth in the Complaint and in such cases, the failure gives rise to an implicit admission that Respondent lacks rights and legitimate interests with regard to the disputed domain names.  Without the benefit of a Response, the Panel also may accept all reasonable allegations and inferences set forth in the Complaint as true.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

No allegations and no evidence indicate that Respondent is commonly known by Complainant’s mark and the domain names <dinersclubgiftvouchers.com> and <dinersclubgiftcertificates.com> pursuant to paragraph 4(c)(ii) of the Policy.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); 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).

Furthermore, a website that uses a domain name, which is identical or confusingly similar to a third-party mark, to market goods or services that directly compete with those offered by the third party under its mark has been found to be neither a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.  In the instant case, Respondent is using a domain name that is confusingly similar to Complainant’s DINERS CLUB mark to direct Internet users to a website that offers credit card merchant accounts for sale.  Complainant uses its DINERS CLUB mark also to offer credit card accounts for sale.  Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.  Therefore, Respondent is not using the domain names in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Complainant established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and used the disputed domain names in bad faith.  Respondent did not contest those allegations.  Pursuant to paragraph 4(b)(iv) of the Policy, bad faith registration and use is established when an individual registers a domain name with the intention of attempting to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the resolved website or of the services contained at the site.

The fact that Respondent has registered two domain names and has attached an active website to each domain name evidences that Respondent intentionally attempted to attract Internet users to its website.  The fact that Respondent is offering credit card merchant accounts for sale, with application fees ranging from $89. to $499. permits the inference that Respondent has attempted to attract Internet users to the website for commercial gain.  The fact that Respondent chose to register a domain name that is confusingly similar to Complainant’s established DINERS CLUB mark, which operates in the field of credit card services, evidences Respondent’s creation of a likelihood of confusion with Complainant’s mark.  Therefore, Respondent is in violation of paragraph 4(b)(iv) of the Policy.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Complainant established Policy ¶ 4(a)(iii).

DECISION

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

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

Hon. Carolyn Marks Johnson, Panelist

Dated: November 10, 2004.

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