The Complainant is Diners Club International Ltd, United States of America (“United States”), represented by Winston & Strawn LLP, United States.
The Respondent is Edgar Coox, IniDesing, Ecuador, self-represented. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2019. On March 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 28, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2019. The Center received an informal email communication from the Respondent on April 3, 2019. On the same day, the Center notified the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by April 10, 2019. The Complainant did not request for suspension. The Respondent submitted a further email communication to the Center on April 6, 2019. On April 11, 2019 (as clarified by a further email of April 12, 2019) the Complainant submitted a request to file a Supplemental Filing.
The Center appointed Steven A. Maier as the sole panelist in this matter on May 14, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Outstanding Procedural Issues
In the exercise of its discretion under paragraph 10 of the Rules, the Panel determines that the Respondent’s email communications dated April 3 and April 6, 2019 shall stand together as the Response in this proceeding.
The Panel finds there to be no exceptional or other circumstances why the Complainant’s unsolicited Supplemental Filing should be admitted and declines to admit that filing. 5. Factual Background
The Complainant is a company located in Illinois, United States. It is a provider of financial services including credit card services under names and trademarks including DINERS and DINERS CLUB.
The Complainant is the owner of registrations for trademarks including DINERS and DINERS CLUB in various jurisdictions. Those registrations include, for example, the following:
- United States trademark number 1462209 for the word mark DINERS registered on October 20, 1987 for credit card services in Class 36
- United States trademark number 4424062 for the word mark DINERS CLUB registered on October 29, 2013 for financial and related services in Classes 35 and 36
- Ecuador trademark number 1241-00 for the word mark DINERS registered on June 23, 2000 for services in Class 36
- Ecuador trademark number 767-00 for the word mark DINERS CLUB registered on April 27, 2000 for services in Class 36
- Ecuador trademark number 8569 for the word mark DINERS CLUB CASH registered on September 9, 2003 for financial and related services in Class 36
All four of the disputed domain names were registered on August 26, 2018.
According to evidence submitted by the Complainant by way of screen-shots dated March 22, 2019, the disputed domain name has resolved to a web page which appeared to offer food-related links. The other three disputed domain names have resolved to GoDaddy parking pages offering links to “Get This Domain” in each case. 6. Parties’ Contentions A. Complainant
The Complainant submits that it is a leading provider of financial services, that it has over eight million individual cardholders, and that its credit cards are accepted at 7.6 million locations in 200 countries throughout the world. The Complainant provides evidence of its trademark portfolio including the registrations referred to above and contends that, by virtue of their longstanding use in commerce, its marks DINERS and DINERS CLUB have attained the status of notorious trademarks.
The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights. It states that each of the disputed domain names comprises its trademark DINERS together with the term “cash” and a generic Top-Level Domain (“gTLD”) i.e., “.com.”, “.info”, “.net”, and “.org.” respectively. The Complainant submits that neither the term “cash” nor the gTDLs prevent the disputed domain names from being confusingly similar to the Complainant’s trademarks.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It states that it has never licensed or authorized the Respondent to use any domain names which are similar to its DINERS marks, that the Respondent has not commonly been known by any name corresponding to the disputed domain names, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of any of the disputed domain names.
Concerning the disputed domain name , the Complainant alleges that the domain name has resolved to a website offering links including one to “Diners”, which then takes the user to adverts for credit cards. This allegations is not supported by the screen-shots exhibited by the Complainant referred to above, although the Complainant incorporates a further image in the Complaint itself which does suggest that the Complainant’s own credit cards have been offered under the name “D”.
Concerning the remaining disputed domain names, the Complainant submits that a passive holding of those names does not give rise to rights or legitimate interests, particularly in circumstances where the names are connected with, and used for purposes competitive with, the Complainant’s trademarks.
The Complainant submits that the disputed domain names were registered and are being used in bad faith. It contends that there is no reason for the Respondent to have registered the disputed domain names otherwise than in the knowledge of the Complainant’s trademarks and with the intention of taking unfair advantage of the Complainant’s goodwill in those trademarks by registering domain names that are confusingly similar to them.
The Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent submits that it acquired the disputed domain names lawfully and without restriction and that the Complainant could itself have purchased the names had it wished to do so, in view particularly of its financial position.
The Respondent lists approximately 20 other domain names comprising the term “dinerscash” and a gTLD (or other TLD) which the Respondent states are still available to be registered. The Respondent submits that this demonstrates that the Complainant has no genuine interest in registering domain names of this nature.
The Respondent denies that it has violated any intellectual property rights and submits that it has registered and used the disputed domain names in relation only to the keywords “diners” and “cash”, which are words in common usage, for the purposes of an affiliate marketing project. It provides a Facebook link in this regard. However, this link was unavailable to the Panel and the Respondent had not submitted any further material in support of this assertion.
The Respondent denies having referenced anything relating to the Complainant on any website, that any of the disputed domain names have ever linked to anything or that they have ever been offered for sale.
The Respondent objects to the registration of trademarks that comprise common words and to the implications of this for the domain name system.
The Respondent states that the Complainant has no right to the disputed domain names and that if it wishes to acquire them it will need to compensate the Respondent for the disputed domain names, his investment in them and the damage that has been caused to him. 7. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it is the owner of various trademark registrations including DINERS, DINERS CLUB and (in Ecuador) DINERS CLUB CASH for goods and services including financial services. The disputed domain names comprise the terms “diners” and “cash” and a gTLD in each case, which is to be disregarded for the purposes of comparison. The Panel accepts the Complainant’s submission that the term “cash” is a dictionary word, the inclusion of which does not prevent any of the disputed domain names from being confusingly similar to the Complainant’s trademarks. The Panel therefore finds that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
It is the Respondent’s case that he registered the disputed domain names only because of the keyword value of two common words, “diners” and “cash” and for the purposes of an affiliate marketing project. However, the Respondent has failed in the view of the Panel to explain the specific choice or the conjunction of these two particular terms, or to demonstrate the use of (or preparations to use) the disputed domain names for the purpose of any such marketing project.
Furthermore, the Respondent has denied having used any of the disputed domain names to refer to the Complainant, to link to anything or to offer the disputed domain names for sale, all of which denials are at odds with material submitted by the Complainant.
On balance, therefore, the Panel finds it improbable that the Respondent registered the disputed domain names for the purpose he has claimed and finds it more likely that he registered the disputed domain names because of their similarity with the Complainant’s trademarks. Such targeting of a trademark does not give rise to rights or legitimate interests and the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
For the same reasons as set out above, the Panel finds on the balance of probabilities that the Respondent registered the disputed domain names in the knowledge of the Complainant’s trademarks and with the intention of benefitting from the commercial goodwill that attaches to those trademarks.
While the Respondent’s use of the disputed domain name is disputed, it appears to the Panel that this disputed domain name has been used for the purpose of online links (which can be assumed to have generated payment for the Respondent or intended to) and possibly for the purpose of linking to credit cards including the Complainant’s own credit cards. In this regard, the Panel finds that the Respondent has used the disputed domain name to create a likelihood of confusion between that disputed domain name and the Complainant’s trademark in the manner contemplated by paragraph 4(b)(iv) of the Policy.
While the remaining disputed domain names have been held passively (although stated to be available for acquisition) this factor is not an obstacle to a finding of bad faith where the other circumstances of the case point to that conclusion (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel has come to that conclusion in this case.
In the circumstances, the Panel finds that the disputed domain names have been registered and are being used in bad faith. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , and be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: May 28, 2019
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