The Complainant is Diners Club International Ltd. of Chicago, Illinois, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Privacy--Protect.org of Shanghai, the People’s Republic of China.
The disputed domain name <dinersclubmastercard.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2011. On April 18, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2011, 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 April 21, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Complainant declined the invitation. On April 21, 2011, the Center transmitted an email communication to the parties in both English and Slovak regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2011.
The Center appointed Ales Vokálek as the sole panelist in this matter on May 31, 2011. 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.
On the question of the language of the proceeding, the Registrar confirmed that the language of the Registration Agreement is Slovak. The Respondent did not commented on this question. The Complainant argues that the Respondent has published a web page in association with the disputed domain name and the web page is entirely in fluent English, evidencing the Respondent's mastery of the English language. Since the Respondent has sufficient language skills to publish such an elaborate web page in English, there will be no prejudice in allowing English to be the language of these proceedings. The Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836), decides that the language of the proceeding will be English.
On the question of the Respondent’s identity, the Panel agrees with the findings of the panels in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 and Research In Motion Limited v. PrivacyProtect.org/Pluto Domain Services Private Limited, WIPO Case No. D2009-0324 and therefore accepts to the Complainant’s election to proceed against Privacy--Protect.org only.
The Complainant asserted, and provided evidence in support of the following facts which the Panel finds established:
The Complainant owns trademark registrations for the DINERS CLUB trademarks throughout the world in connection with its business activities. The Complainant filed United States trademark DINERS CLUB, No. 828,013 on December 29, 1965. The same trademark has been registered in about 200 jurisdictions. The disputed domain name <dinersclubmastercard.com> was created on November 20, 2010.
The Complainant argues that the disputed domain name <dinersclubmastercard.com> is identical or confusingly similar to the relevant United States trademark registrations for DINERS CLUB in which the Complainant has rights (Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii) and 3(b)(ix)(1)). In addition to United States trademarks, the DINERS CLUB has been applied for or registered in numerous countries. Each of these trademarks incorporate the element DINERS CLUB (collectively the “DINERS CLUB Family”). Most of the marks in the DINERS CLUB Family cover credit card services, credit card user loyalty programs, assistance to travelers in the form of providing medical and legal referrals, recovery or replacement of lost or stolen travel documents, travelers checks and credit cards. The DINERS CLUB Family represents to the worldwide consuming public the goods and services offered by the Complainant and its licensees. Diners Club has made extensive use of the DINERS CLUB Family by providing the Complainant’s core services and an affinity marketing program throughout the United States and around the world. Due to the extensive use and registration of the DINERS CLUB Family, the trademarks in the DINERS CLUB Family have become famous under the laws of the United States and notorious under the laws of the national jurisdictions who have acceded to the Paris Convention.
Furthermore the Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s DINERS CLUB mark as it consists of the entirety of the mark and adding a competitor’s mark MASTERCARD. Therefore, the disputed domain name and the Complainant’s DINERS CLUB trademarks are confusingly similar to each other. See Mastercard International Incorporated v. Indy Web Productions, WIPO Case No. D2008-0198 (“The Complainant’s many United States trademark registrations for MASTERCARD, and its registrations in the United States and other countries for PAYPASS, establish Complainant’s rights in these terms in connection with its financial services and ancillary products and services. Respondent’s domain names each have reproduced exactly the word component of Complainant’s
MASTERCARD trademarks. The Panel finds that the addition of third party marks to Complainant’s marks incorporated in the domain names at issue does not decrease the likelihood of confusion with Complainant’s marks. The Panel finds that Complainant has provided sufficient evidence to establish element 4(a)(i) of the Policy.”)
Furthermore the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name because it has never operated any bona fide or legitimate business under the disputed domain name, and is not making a protected noncommercial or fair use of the disputed domain name. The disputed domain name has been put to use in a pay-per-click advertising scheme, some of which ads promote the Complainant’s competitors. The Respondent is not commonly known as “dinersclubmastercard.com”. The WhoIs record reveals that the Respondent is commonly known as “Privacy--Protect.org”. The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the Complainant’s marks (Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102).
The Complainant further contends that the disputed domain name was registered in bad faith (Policy, paragraphs 4(a)(iii) and 4(b); Rules, paragraph 3(b)(ix)(3)) as the Respondent is located in China where the Complainant has trademark rights on the national trademark registrations which pre-exist the registration date of the disputed domain name (XS4ALL Internet B.V. v. Usenet Nomads, WIPO Case No. D2003-0467). The totality of the circumstances indicate that the Respondent knew of the Complainant at the time of registration of the disputed domain name since the disputed domain name is nearly identical to the Complainant’s DINERS CLUB mark and is being used in conjunction with related services (Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case. No. D2007-1193). Moreover, the Respondent’s website makes direct reference to the Complainant on its home page. This proves the Respondent’s actual knowledge of the Complainant and its marks.
Furthermore the Complainant argues that the disputed domain name has been used in bad faith as it is used by the Respondent to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Respondent’s pay-per-click scheme to convert traffic to the Respondent’s commercial website is one of the four explicit examples of bad faith use found in the Policy.
In accordance with paragraph 4(i) of the Policy, the Complainant requests the Panel in this administrative proceeding issue a decision that the disputed domain name be transferred to the Complainant. The Complainant understands that because the disputed domain name also contains the mark of another, any such transfer will be without prejudice to the rights of any other legitimate trademark owners (Canadian Tire Corporation Limited v. Digi Real Estate Foundation, WIPO Case No. D2006-1117).
The Respondent did not reply to the Complainant’s contentions.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.
The Complainant owns trademark registrations for the DINERS CLUB trademarks throughout the world in connection with its business activities, covering credit card services, credit card user loyalty programs, assistance to travelers in the form of providing medical and legal referrals, recovery or replacement of lost or stolen travel documents and travelers checks and credit cards. For example, the Complainant has been granted for the United States trademark DINERS CLUB, No. 828,013 on April 25, 1967. The same trademarks have been registered in about 200 jurisdictions.
The Panel finds that the disputed domain name <dinersclubmastercard.com> exactly reproduces the Complainant’s trademarks DINERS CLUB. The Respondent has simply taken the “diners club” element, and added a second word (“mastercard”) that is a competitor’s mark MASTERCARD and added the gTLD indicator “.com”.
Addition of the competitor’s mark MASTERCARD does not avoid the confusing similarity of the disputed domain name and trademarks (Mastercard International Incorporated v. Indy Web Productions, WIPO Case No. D2008-0198; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; Sanofi-aventis v. Brad Hedlund, WIPO Case No. D2007-1310; Fondation Le Corbusier v. Mercado M., WIPO Case No. D2004-0723; Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244; Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar, WIPO Case No. D2006-0136; Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658). Further, the Panel subscribes to the principle that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone (Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812).
Addition of the gTLD “.com” in this case is without legal significance. Therefore, for purposes of trademark use, “.com” is a generic term with no significance relative to the identification of the source of a good or service per se.
For all the above cited reasons, the Panel concludes that the disputed domain name <dinersclubmastercard.com> is identical or confusingly similar to the Complainant’s trademarks, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
The Panel accepts the arguments of the Complainant that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name and that none of the circumstances mentioned in Policy, paragraph 4(c), are met. The Respondent has not obtained the Complainant’s permission or consent to use the trademarks DINERS CLUB and it is not a licensee of the Complainant nor is the Respondent otherwise authorized by the Complainant to use the DINERS CLUB trademarks. Moreover, the Respondent is not authorized to apply for or use any domain name incorporating the Complainant’s trademarks. Furthermore the Respondent has no rights or legitimate interests in respect of the disputed domain name because it has never operated any bona fide or legitimate business under the disputed domain name, and is not making a protected noncommercial or fair use of the disputed domain name. The Panel accepts the arguments of the Complainant that the disputed domain name has been put to use in a pay-per-click advertising scheme, some of which ads promote the Complainant’s competitors. The Respondent is not commonly known as “dinersclubmastercard.com”. The WhoIs record reveals that the Respondent is commonly known as “Privacy--Protect.org”. The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the Complainant’s marks (Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102; PRL USA Holdings Inc. v. LucasCobb, WIPO Case No. D2006-0162; Fresh Intellectual Properties, Inc. v. Matt Braska, WIPO Case No. D2005-0096; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819). The Respondent uses the disputed domain name to misdirect Internet users looking for the Complainant’s website to the Respondent’s own infringing website, but it also redirects users to third-party websites that are not affiliated with the Complainant. The Respondent’s use of the disputed domain name to redirect traffic through links to unrelated third-party websites cannot be considered a fair use of the disputed domain name. The use of a domain name to point to other sites to collect referral fees cannot be considered a bona fide offering of goods or services for a noncommercial or fair use
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Respondent has registered and used the disputed domain name in bad faith (Policy, paragraphs 4(a)(iii) and 4(b); Rules, paragraph 3(b)(ix)(3)) as the Respondent is located in China where the Complainant has trademark rights on the national trademarks registry which pre-exist the registration date of the domain name (XS4ALL Internet B.V. v. Usenet Nomads, WIPO Case No. D2003-0467). The Panel accepts the arguments of the Complainant that the totality of the circumstances indicate that the Respondent must have known of the Complainant at the time of registration of the disputed domain name since the disputed domain name is nearly identical to the Complainant’s DINERS CLUB mark and is being used in conjunction with related services (Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case. No. D2007-1193. Based on the look and feel of the website, the Respondent appears to wish to mislead the public by using the Complainant’s trademarks and trade name on the website. Such conduct has been found to signal bad faith (Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658).
The disputed domain name has been used in bad faith as it is used by the Respondent to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Respondent’s pay-per-click scheme to convert traffic to the Respondent’s commercial website is one of the four explicit examples of bad faith use found in the Policy.
For the above cited reasons the Panel finds that the disputed domain name was registered and used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of the paragraph 4(a)(iii) of the Policy are fulfilled in this case.
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 <dinersclubmastercard.com> be transferred to the Complainant.
Ales Vokálek
Sole Panelist
Dated: June 14, 2011