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Generic Top Level Domain Name (gTLD) Decisions |
Diners Club International Ltd. v. Sajeda
Ali
Claim
Number: FA0404000250823
Complainant is Diners Club International Ltd.,
(“Complainant”), represented by Paul
D. McGrady, of Ladas & Parry, 224 South Michigan
Avenue, Chicago, IL 60604. Respondent
is Sajeda Ali (“Respondent”), 91 Cranford Lane, Heston Middlesex, TW5 9HQ UK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <asiandinersclub.com>, registered with Tucows
Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 7, 2004; the Forum
received a hard copy of the
Complaint on April 8, 2004.
On
April 8, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain
name <asiandinersclub.com> is registered with Tucows Inc. and that
Respondent is the current registrant of the name. Tucows Inc. has verified that
Respondent
is bound by the Tucows 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
April 9, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
April 29, 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@asiandinersclub.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
May 28, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James
A. Carmody, Esq., 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <asiandinersclub.com>
domain name is confusingly similar to Complainant’s DINERS CLUB mark.
2. Respondent does not have any rights or
legitimate interests in the <asiandinersclub.com> domain name.
3. Respondent registered and used the <asiandinersclub.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Diner’s
Club International Ltd. is a wholly owned subsidiary of Citigroup, a leading
global financial services organization.
Complainant is a leading provider of financial services to individuals,
small businesses, and large corporations through many channels
of trade,
including but not limited to credit card services. Complainant began operating under the famous DINERS CLUB mark in
1965. Credit cards issued by
Complainant under its DINERS CLUB mark are accepted in over 200 countries, at
over 7.6 million locations around
the world, at 700,000 ATMs and are issued in
64 local currencies. Complainant’s
products and services sold under the DINERS CLUB mark are advertised and
promoted across the United States and around
the world.
Respondent registered the <asiandinersclub.com>
domain name on December 2, 2003.
Respondent is
using the domain name to promote, among other services, web diversion schemes.
Respondent uses the domain name to harbor a website offering for sale
services known as “web diversion” and “e-mail diversion” and
also domain name
registrations, internet hosting, domain name auction services, web design
services and online marketing services.
Furthermore, Respondent indicated to Complainant in its return of
voluntary transfer that Respondent intended to offer restaurant/dining
promotion services in direct competition with the core Diners Club
Services.
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.
Complainant
established with extrinsic proof in this proceeding that it has rights to the
DINERS CLUB mark as evidenced by its registration
with the United States Patent
and Trademark Office and by continuous use of its mark in commerce for the last
thirty-nine years. 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
domain name is confusingly similar to Complainant’s DINERS CLUB mark because
the domain name incorporates a combination
of Complainant’s mark and only
deviates with the addition of the generic or descriptive word “asian.” The mere addition of a generic or
descriptive term does not negate the confusing similarity of Respondent’s
domain name pursuant to
Policy ¶ 4(a)(i).
See L.L. Bean, Inc. v.
ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that
combining the generic word “shop” with Complainant’s registered mark “llbean”
does not circumvent Complainant’s rights in the mark nor avoid the confusing
similarity aspect of the ICANN Policy); see also 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the domain
name. Due to Respondent’s failure to
respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the
disputed domain name. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply
to the Complaint). The burden 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002) (holding that where Complainant has asserted that Respondent has no
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
Complainant that Respondent has
no right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such a right or
legitimate
interest does exist).
Furthermore, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted
a Response. 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.”)
Respondent is
using the <asiandinersclub.com> domain name to direct Internet
users to a website that is used to promote, among other services, web diversion
schemes. The website associated with
the offending domain offers for sale services known as “web diversion” and
“email diversion” and domain
name registrations, internet hosting, domain name
auction services, web design services, and online marketing services. The Panel finds that this diversion of
Internet consumers, is not a use in connection with a bona fide offering of
goods or services
pursuant to Policy ¶ 4(c)(i), nor is it a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See 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); see also Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum
Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s
mark to attract Internet
users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods
or
services nor a legitimate noncommercial or fair use of the disputed domain
names).
Moreover, nothing in the record, including the WHOIS domain name
registration information, suggests that Respondent is commonly known
by the <asiandinersclub>
domain name or by Complainant’s DINERS CLUB mark pursuant to Policy ¶
4(c)(ii). Therefore, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See
Tercent Inc. v. 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 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 or using
the domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that contains in its entirety
Complainant’s well-known mark and did so for Respondent’s
commercial gain. Respondent’s domain name diverts Internet
users who seek Complainant’s DINERS CLUB mark to Respondent’s commercial
website through
the use of a domain name that is confusingly similar to
Complainant’s mark. Furthermore,
Respondent is unfairly and opportunistically benefiting from the goodwill
associated with Complainant’s DINERS CLUB mark.
Respondent’s practice of
diversion, motivated by commercial gain, constitutes bad faith registration and
use pursuant to Policy ¶
4(b)(iv). See
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)); 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).
Respondent’s
registration of the domain name, a domain name that incorporates Complainant’s
well-known registered mark in its entirety
and deviates only with the addition
of a generic or descriptive term, suggests that Respondent knew of
Complainant’s rights in the
DINERS CLUB mark.
Thus, the Panel finds that Respondent likely chose the <asiandinersclub.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark. 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
Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]hile an intent to confuse consumers is not
required for a finding of trademark infringement,
intent to deceive is strong
evidence of a likelihood of confusion").
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED
Accordingly, it
is Ordered that the <asiandinersclub.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
June 11, 2004
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