DECISION

Diners Club International, Ltd. v. Infotechnics Limited

Claim Number: FA0307000169085

PARTIES

Complainant is Diners Club International, Ltd., Chicago, IL (“Complainant”) represented by Paul D. McGrady of Ladas & Parry. Respondent is Infotechnics Limited, Apia, WESTERN SAMOA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <diners-club.net> registered with Domaindiscover.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 16, 2003; the Forum received a hard copy of the Complaint on July 17, 2003.

On July 18, 2003, Domaindiscover confirmed by e-mail to the Forum that the domain name <diners-club.net> is registered with Domaindiscover and that Respondent is the current registrant of the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 July 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 11, 2003 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@diners-club.net 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 August 12, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

Respondent delivered a submission entitled, “Additional Statement of Respondent,” to the Forum on August 15, 2003.

On the same date, Complainant countered with an Additional Submission in response to Respondent’s submission.

On August 16, 2003, Respondent submitted a “Petition to Consider Reply to Complainant’s Additional Submission.”

PROCEDURAL ISSUE

Respondent contends in its “Additional Statement of Respondent” that its submission should be considered timely filed in accordance with NAF Supplemental Rule 7(a), which reads:

A party may submit additional written statements and documents to the Forum and the opposing party(s) within five (5) calendar days after the date the Response was submitted or the last date the Response was due to be submitted to the Forum, whichever occurs first.

 

Respondent interprets this language to permit it to submit a statement responsive to the Complaint even after the Forum has issued a Notification of Respondent Default. Respondent apparently reads Supp. Rule 7 to provide a perpetual five-day extension of the deadline for a Response to be received by the Forum as expressed in Rule 5(a). However, Supp. Rule 7(d) states, “Additional submissions and responses to additional submissions may not amend the original Complaint or Response.” Implicit in the rule is the requirement of Respondent to have submitted a Response in order for it to subsequently submit an additional submission. Therefore, a party may only submit an additional submission, if said party has first submitted an original submission. In this case, there is nothing for the “Additional Statement of Respondent” to be in addition to because a timely Response was never filed. Thus, the Administrative Panel (“the Panel”) finds that Respondent’s submission, regardless of what it is entitled, is untimely filed. In its discretion, a Panel may choose to consider an untimely filed submission. This Panel chooses not to consider Respondent’s tardy submission. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the Response is solely in the discretion of the Panelist). Moreover, the Panel finds that Supp. Rule 7 prohibits the Panel from considering the “Additional Statement of Respondent” because the rule clearly requires a party to submit an original submission in order to file an additional submission.

Respondent cites three UDRP decisions for the application of Supp. Rule 7 in the manner understood by Respondent. However, none of the panelists supported its acceptance of the untimely filed Responses with any reasoning. Without any support for these decisions, the Panel finds it difficult to rule contrary to the clear reading of Supp. Rule 7 when read in toto. Therefore, the Panel finds that the better reading of Supp. Rule 7 is that a party must have first submitted an original submission in order to submit a subsequent additional submission.

Accordingly, Having reviewed the communications records, 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <diners-club.net> domain name is confusingly similar to Complainant’s DINERS CLUB mark.

2. Respondent does not have any rights or legitimate interests in the <diners-club.net> domain name.

3. Respondent registered and used the <diners-club.net> domain name in bad faith.

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

FINDINGS

Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the DINERS CLUB mark (Reg. No. 828,013 registered on April 25, 1967) related to the extension of credit to customers who purchase at subscribing retail establishments, and making collections from such customers through a central billing system. Complainant also holds a number of trademark registrations for variations of the mark in the United States and several other countries.

Respondent registered the <diners-club.net> domain name on June 20, 2003. Respondent is using the disputed domain name to criticize Complainant’s business practices.

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 that it has rights in the DINERS CLUB mark through registration with the USPTO.

Respondent’s <diners-club.net> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates Complainant’s entire DINERS CLUB mark and merely adds a hyphen between the two words in the mark. The insignificant addition of a hyphen between the two words in the mark does not sufficiently differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar to Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also Gen. Elec. Co. v. Bakhit, D2000-0386 (WIPO June 22, 2000) (finding that placing a hyphen in a domain name between “General” and “Electric” is confusingly similar to Complainant’s mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not come forward to challenge Complainant’s allegations. Thus, the Panel accepts all reasonable allegations and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); 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).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights to or legitimate interests in the <diners-club.net> domain name. Once Complainant has established a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights to or a legitimate interest in the disputed domain name. 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 Meijer, Inc. v. Porksandwich Web Servs., FA 97186 (Nat. Arb. Forum July 6, 2001) (finding that it is reasonable to shift the burden of proof to Respondent to show why no reasonable alternatives exist to use of that particular domain name that includes the mark or name of Complainant for a criticism site aimed at Complainant).

Respondent is using the disputed domain name to criticize Complainant’s business practices. While Respondent may have the right to voice its displeasure about its past relationship with Complainant, this right does not inhere in Respondent any rights to the <diners-club.net> domain name. Therefore, the Panel finds that Respondent has failed to establish any rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) because of Respondent’s complete appropriation of Complainant’s registered mark and Respondent’s failure to rebut Complainant’s prima facie case. See Baker &Daniels v. DefaultData.com, FA 104579 (Nat. Arb. Forum Mar. 27, 2002) (finding that because Respondent’s <bakeranddaniels.com> domain name merely incorporates Complainant’s trademark, without more, it is not protected by the First Amendment); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety).

Furthermore, Respondent has proffered no evidence and there is no proof evident in the record that suggests Respondent is commonly known by DINERS CLUB or <diners-club.net>. Therefore, Respondent has not established any rights to or legitimate inerests in the disputed domain name with regard 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 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").

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Policy lists four circumstances that, if found by the Panel to be present, shall evidence the registration and use of a domain name in bad faith. This list was not meant to be exclusive. Under appropriate facts, the Panel may consider the totality of the circumstances when determining whether a domain name has been registered and used in bad faith. See 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”); see also 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”).

Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website. Moreover, Respondent’s failure to come forward and respond to Complainant’s prima facie evidence helps to sway the Panel’s decision in favor of Complainant. Thus, the Panel finds that, in the absence of any contentions or explanations from Respondent to the contrary, Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that Respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where Respondent published negative comments regarding Complainant’s organization on the confusingly similar website); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding bad faith where Respondent knowingly chose a domain name, identical to Complainant’s mark, to voice its concerns, opinions, and criticism about Complainant); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <diners-club.net> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: August 20, 2003

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