The Complainant is Diners Club International Ltd, United States of America (“United States”), represented by Taft, Stettinius & Hollister, LLP, United States.
The Respondent is 石磊 (Shi Lei), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2021. On April 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 6, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on May 11, 2021. On May 6, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 10, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint, together with the amended 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 in English and Chinese of the Complaint, and the proceedings commenced on May 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on June 9, 2021. 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. Factual Background The Complainant is a provider of financial services, including credit card services. It has over 8 million individual cardholders and its credit cards are accepted in over 7.6 million locations around the world. The Complainant holds multiple trademark registrations for DINERS CLUB in multiple jurisdictions, including: - United States trademark registration number 828,013, registered on April 25, 1967, specifying extension of credit to customers who purchase at subscribing retail establishments and making collections from such customers through a central billing system in classes 35 and 36; and Those trademark registrations remain current. The Complainant has also registered the domain name The Respondent is an individual resident in China. The disputed domain name was registered on November 12, 2020. It formerly resolved to a website in English that required Internet users to go through a so-called “standard security check”, instructing them to click on a button that activated the download of an Internet browser extension onto their devices. At the time of this Decision, the disputed domain name resolves to a landing page displaying Pay-Per-Click (“PPC”) links to websites for business credit cards and business credit, among other things. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s DINERS CLUB trademark. It fully incorporates that mark and adds the industry-specific terms “invoice” and “payment” and the generic Top-Level Domain (“gTLD”) suffix “.com”, which do not make the disputed domain name any less confusingly similar. It omits the letter “s” which is a typosquatting variation designed to confuse. The Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations that are confusingly similar to any of the DINERS CLUB marks. The Respondent is not commonly known by the disputed domain name or any of the DINERS CLUB marks. The Respondent’s diversionary use of the disputed domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use. Typosquatting itself is evidence of no rights or legitimate interests. The disputed domain name was registered and is being used in bad faith. There is no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the Complainant’s marks. The Respondent is currently using the disputed domain name to capitalize on Internet users’ efforts to find the Complainant’s website. The Respondent uses the disputed domain name to redirect Internet users to “security check” pages which appear to solicit unwanted software or malware, which constitutes bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its arguments are that the Respondent is fully capable of proceeding in English, as evidenced by the facts that the disputed domain name and the website to which it resolves are both in in English, not Chinese; and translation of the Complaint would only unduly burden the Complainant and unnecessarily delay this proceeding. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint and the amended Complaint were filed in English. The website to which the disputed domain name resolves is in English, from which it can reasonably be inferred that the Respondent is proficient in that language. Despite having received an email regarding the language of the proceeding and notice of this dispute in both Chinese and English, the Respondent has not commented on language or expressed any interest in participating in this proceeding. Accordingly, the Panel considers that requiring the Complainant to translate the amended Complaint into Chinese would create an undue burden and delay whereas accepting the amended Complaint in English does not create unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and Based on the evidence submitted, the Panel finds that the Complainant has rights in the DINERS CLUB mark. The disputed domain name incorporates the Complainant’s DINERS CLUB mark as its initial element, omitting only the “s” and, for technical reasons, the space between the words. The omission of the plural “s” is an obvious error in the spelling of the Complainant’s mark and constitutes an example of “typosquatting”. This does not prevent a finding of confusing similarity with the mark because the disputed domain name contains sufficient recognizable elements of the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9. The disputed domain name also incorporates the dictionary words “invoice” and “payment” but, in these circumstances, these do not prevent a finding of confusing similarity either. See WIPO Overview 3.0, section 1.8. The only other additional element in the disputed domain name is a gTLD suffix (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant submits that it has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations that are confusingly similar to any of the DINERS CLUB marks. The disputed domain name, which contains an obvious misspelling of the Complainant’s DINERS CLUB mark, formerly resolved to a webpage that claimed to conduct a “standard security check” but instructed Internet users to click on a button that actually activated the download of an Internet browser extension onto their devices. In these circumstances, the Panel considers that the browser extension was probably malicious software. At the time of this Decision, the disputed domain name resolves to a page displaying PPC links some of which are based on the value of the Complainant’s trademark. Accordingly, the Panel does not consider either use to be in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is either use a legitimate noncommercial or fair use of the disputed domain name for the purposes of paragraph 4(c)(iii) of the Policy. The Respondent is named “石磊” (Shi Lei). There is no evidence the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive. With respect to registration, the disputed domain name was registered in 2020, decades after the registration of the Complainant’s DINERS CLUB trademark, including in China, where the Respondent is resident. The disputed domain name incorporates an obvious misspelling of the Complainant’s DINERS CLUB trademark as its initial element. The disputed domain name adds the words “invoice” and “payment” which, in combination with the initial element, indicate an awareness of the nature of the Complainant’s credit card business. These circumstances give the Panel reason to find that the Respondent knew of the Complainant’s DINERS CLUB mark and targeted that mark when he registered the disputed domain name in bad faith. With respect to use, the disputed domain name contains an obvious misspelling of the Complainant’s DINERS CLUB mark, plus two words that refer to the nature of the Complainant’s credit card business. It formerly resolved to a website that falsely claimed to perform a “standard security check” but instructed Internet users to click on a button that actually activated the download of an Internet browser extension, which was probably malicious software. The Panel considers that the use of the disputed domain name to distribute malware constitutes use in bad faith. See WIPO Overview 3.0, section 3.4 and, for example, Wikimedia Foundation, Inc. v. Walter Gerbert,WIPO Case No. D2016-1346; and Royal Caribbean Cruises Ltd. v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2049. The use of the disputed domain name has recently changed. It now resolves to a landing page displaying PPC links, some of which are for the same type of services as those provided by the Complainant. These links are evidently based on the value of the Complainant’s DINERS CLUB trademark. The Panel considers this a further indication that the disputed domain name is being used in bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 7. 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 name Matthew Kennedy
- Chinese trademark registration number 779370, registered on March 14, 1995, specifying banking services, credit card services and financial services in class 36.
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: June 14, 2021
Full & Egal Universal Law Academy