Dinersclubgolf.com, Dinersclubgolf.info, Dinersclubcorporation.info

The timeline behind dinersclubgolf.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Diners Club International Ltd. v. Cameron Jackson Claim Number: FA0506000502782 PARTIES Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is Cameron Jackson (“Respondent”), PO Box 46, Vaucluse, Sydney, NSW, 2030, Australia. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info>, registered with Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain. 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. Judge Harold Kalina (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2005; the National Arbitration Forum received a hard copy of the Complaint on June 22, 2005. On June 23, 2005, Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain confirmed by e-mail to the National Arbitration Forum that the domain names <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info> are registered with Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain and that Respondent is the current registrant of the names. Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain has verified that Respondent is bound by the Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain 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 24, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 14, 2005 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@dinersclubgolf.com, postmaster@dinersclubgolf.info, and postmaster@dinersclubcorporation.info by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On July 21, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info> domain names are confusingly similar to Complainant’s DINERS CLUB mark. 2. Respondent does not have any rights or legitimate interests in the <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info> domain names. 3. Respondent registered and used the <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Diners Club International, Ltd., holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the DINERS CLUB mark (Reg. No. 828,013 issued April 25, 1967) related to the extension of credit to customers who purchase at subscribing retail establishments. Respondent registered the <dinersclubgolf.com> domain name on February 18, 2005, and the <dinersclubgolf.info> and <dinersclubcorporation.info> domain names on April 10, 2005. Respondent is using the <dinersclubgolf.com> and <dinersclubcorporation.info> domain names to redirect Internet users to Respondent’s website featuring advertisements for web hosting and domain name registration services. Respondent is using the <dinersclubgolf.info> domain name to redirect Internet users to Respondent’s website featuring advertisements for eBay and links to golf related goods and services. 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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."). 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 of the mark with the USPTO and through continuous use of the mark in commerce. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). Respondent’s <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info> domain names are confusingly similar to Complainant’s DINERS CLUB mark because the domain names contain Complainant’s mark in its entirety and add the generic or descriptive word “golf” or “corporation,” and the generic top-level domain “.com” or “.info” to the mark. The Panel finds that such minor additions to Complainant’s registered mark are insufficient to negate the confusingly similar aspects of Respondent’s domain names pursuant to 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 the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “Neither 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 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). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has alleged that Respondent does not have rights or legitimate interests in the <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the complainant has asserted that respondent does not have 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 the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Respondent is using the <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info> domain names to redirect Internet users interested in Complainant’s services to Respondent’s websites featuring advertisements for products and services of unrelated third parties. The Panel finds that Respondent’s use of domain names that are confusingly similar to Complainant’s DINERS CLUB mark to redirect Internet users interested in Complainant’s services to Respondent’s websites featuring advertisements for products and services of unrelated third parties 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 pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user). Respondent was not authorized or licensed by Complainant to register or use domain names incorporating Complainant’s DINERS CLUB mark. Nothing in the record shows that Respondent holds a trademark or is commonly known by the <dinersclubgolf.com>, <dinersclubgolf.info>, or <dinersclubcorporation.info> domain name pursuant to Policy ¶ 4(c)(ii). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the domain names 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 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in the mark precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent registered the <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info> domain names, that are confusingly similar to Complainant’s DINERS CLUB mark, for Respondent’s commercial gain. Respondent’s domain names redirect Internet users searching under Complainant’s DINERS CLUB mark to Respondent’s website. 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 G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Bank of Am. 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 H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website). Furthermore, Respondent registered the <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info> domain names with actual or constructive knowledge of Complainant’s rights in the DINERS CLUB mark due to Complainant’s registration of the mark with the USPTO. Registration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s rights is tantamount to bad faith registration and use pursuant to 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 Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 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 <dinersclubgolf.com>, <dinersclubgolf.info>, and <dinersclubcorporation.info> domain names be TRANSFERRED from Respondent to Complainant. Judge Harold Kalina (Ret.), Panelist Dated: August 4, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.