DECISION

Diners Club International Ltd. V. Kim Brown a/k/a Miss K.J. Brown

Claim Number:  FA0403000244131

PARTIES

Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady, Jr., of Ladas & Parry, 224 South Michigan Avenue, Chicago, IL 60604.  Respondent is Kim Brown a/k/a Miss K. J. Brown  (“Respondent”), 39 Norway St., Stretford, Manchester, M32 OJN, United Kingdom.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <platinumcorporatedinersclub.com> and <pinnaclecorporatedinersclub.com>, registered with Melbourne, IT & Tucows, respectivly.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 9, 2004; the Forum received a hard copy of the Complaint on March 10, 2004.

On March 10, 2004, Melbourne, IT confirmed by e-mail to the Forum that the domain names <platinumcorporatedinersclub.com> is registered with Melbourne, IT and that Respondent is the current registrant of the name. Melbourne, IT has verified that Respondent is bound by the Melbourne, IT 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 the same day, Tucows confirmed by e-mail to the Forum that the domain name <pinnaclecorporatedinersclub.com> is registered with Tucows and that Respondent is the current registrant of the names. Tucows has verified that Respondent is bound by the Tucows registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the “Policy.”

On March 15, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 5, 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@platinumcorporatedinersclub.com and postmaster@pinnaclecorporatedinersclub.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 15, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 <platinumcorporatedinersclub.com> and <pinnaclecorporatedinersclub.com> domain names are confusingly similar to Complainant’s DINERS CLUB mark.

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

3. Respondent registered and used the <platinumcorporatedinersclub.com> and <pinnaclecorporatedinersclub.com> domain names in bad faith.

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

FINDINGS

Complainant, Diners Club International Ltd., is a leading provider of financial services to individuals, small businesses and large corporations largely through credit card services. The credit cards issued by Complainant are accepted in over 200 countries worldwide and at over 7.6 million locations worldwide, including airlines, hotel chains, restaurants, rental car agencies, shipping and delivery services, gasoline and service stations, ski resorts, etc. Complainant has over eight million cardholders.

Complainant holds a trademark registration with the United States Patent and Trademark Office for the DINERS CLUB mark (Reg. No. 828,013, issued April 25, 1967). Complainant also holds trademarks for the DINERS CLUB mark in seventeen countries around the world, including France, Albania, Australia, Peru, the Philippines, Italy, Austria, Bahrain and Chile. Complainant began using its mark in 1965. Through Complainant’s efforts, Complainant has succeeded in establishing a well-known reputation and a famous, high-quality name through the use of its mark.

Complainant’s main website is located at the <dinersclub.com> domain name, where customers can access information on Complainant’s goods and services, related services, restaurant reviews and dining guides.

Respondent registered the <platinumcorporateddinersclub.com> domain name on September 9, 2003. Respondent registered the <pinnaclecorporateddinersclub.com> domain name on November 8, 2003. Respondent is currently using the domain names to offer domain name registration, web servers and hosting services, and web diversion services, respectivly.

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 the United States Patent and Trademark Office. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that 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.).

Respondent’s <platinumcorporateddinersclub.com> and <pinnaclecorporateddinersclub.com> domain names are confusingly similar to Complainant’s DINERS CLUB mark because the domain names incorporate Complainant’s mark in its entirety and only deviate with the addition of the combined generic terms “platinumcorporated” and “pinnaclecorporated,” respectivly. The addition of generic terms to Complainant’s registered mark does not negate the confusing similarity of the domain name pursuant to Policy ¶ 4(a)(i). See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist); 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); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead Internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered).

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

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain names. Respondent’s failure to respond to the Complaint allows the Panel to assume that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no rights or legitimates interest is sufficient to shift the burden of proof to Respondent to demonstrate that such rights or legitimate interests do exist); see also 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 with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Moreover, because Respondent has not submitted a response, the Panel may accept all reasonable allegations and inferences in the Complaint as true. See 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.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Respondent is using the domain names to divert Internet traffic intended for Complainant to websites that offer domain name registration, web servers and web hosting and web diversion services. Respondent’s use of domain names that are confusingly similar to Complainant’s famous DINERS CLUB mark to redirect Internet users interested in Complainant’s products and services to websites that offer domain name registration, web servers and web hosting, and web diversion services, services unrelated to Complainant’s products and services, is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use."); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where Respondent was using Complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under Complainant’s mark); see also U.S. Franchise Sys., Inc. v. Howell III, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

Moreover, Respondent has offered no evidence and no evidence in the record suggests that Respondent is commonly known by the <platinumcorporateddinersclub.com> and <pinnaclecorporateddinersclub.com> domain names.  Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name nor using the domain name in connection with a legitimate or fair use).

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

Registration and Use in Bad Faith

Respondent registered the domain names for its own commercial gain. Respondent’s domain names redirect Internet users who search under Complainant’s famous DINERS CLUB mark to its own commercial websites that offer domain name registration, web server and web hosting services, and web diversion services through the use of domain names confusingly similar to Complainant’s mark. Respondent’s practice of diversion, motivated by commercial gain, through the use of confusingly similar domain names evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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 G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site); see also Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).

Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of a domain name, additional factors can also evidence bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

Sufficient evidence exists in the record to suggest that Respondent registered and used the domain names in bad faith because Respondent had knowledge of Complainant’s rights in the mark. Respondent’s registration of domain names that incorporate Complainant’s famous registered mark in its entirety, and deviate only with the addition of generic words, suggests that Respondent had knowledge of Complainant’s rights in the famous DINERS CLUB mark. Thus, Respondent likely chose the <platinumcorporateddinersclub.com> and <pinnaclecorporateddinersclub.com> domain names based on the distinctive and famous qualities of Complainant’s mark. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity).

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

DECISION

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

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

Louis E. Condon, Panelist

Dated:  April 29, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/409.html