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Diners Club International Ltd. v. Planet Explorer Inc., British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00016 - by Eric Macramalla

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Domain Name: diners-club.ca, dinerscard.ca
OutCome: Transfer Granted
Response Filed: Yes
Panellist: Edward C. Chiasson, Q.C., Roger Kerans, and David Haigh

The Complainant licensed banks and financial institutions the right to issue credit cards under the trade-mark DINERS CLUB, which according to the Complainant was commonly known as DINERS CLUB credit cards, The Complainant was the owner of the trade-mark DINERS CLUB, registration No. TMA 174, 910, and had common law rights arising from its use of DINERS CLUB INTERNATIONAL.

According to the Complainant, the Respondent, a wilderness tour operator, was the holder of a merchant account which was cancelled by the Complainant. The Respondent registered the impugned domain names diners-club.ca and dinerscard.ca. While the latter domain name was inactive, the domain name diners-club.ca resolved to a website dedicated to criticising the Complainant. In particular, the domain name resolved to a website used as a vehicle to elicit support for a class-action suit against the Complainant and to warn existing and potential consumers of the Complainant's practices.

Under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), Complainants must establish three key elements. Firstly, the disputed domain name must be confusingly similar to a mark in which the Complainant had, and continues to have, rights. Secondly, the domain name must have been registered in bad faith. Finally, the Registrant must have no legitimate interest in the domain name.

The Panel held that the Complainant's DINERS CLUB trade-mark was identical to the diners-club.ca domain name, noting the well-established principle that the addition of a dash and the dot-ca suffix is immaterial to the confusion analysis. Further, the Panel held that the domain name dinerscard.ca was confusingly similar to the Complainant's trade-mark, given that it incorporated the distinctive element of the Complainant's trade-mark. The fact that the domain name contained descriptive terms which linked it to the Complainant also contributed to the Panel's finding of confusion.

On the issue of legitimate interest, the Panel found against the Respondent. The Panel held that the claim of legitimacy was undermined by the domain name, on its face, suggesting an affiliation with the trade-mark owner.

It is clear that the use of a domain name or a mark for criticism is legitimate. The issue often is the extent to which the use encroaches on the proprietary rights of the Complainant.

Criticizing domain names in which respondents have been found to have a legitimate interest, generally contain language that identifies the domain name as being used for criticism. Domain names which merely use the mark of another have not been upheld.

The owner of a mark is entitled to decide who and how its mark will be used insofar as the mark is being used without qualification in relation to the Respondent or its commercial activities.

...The issue is whether the unqualified use of a mark in relation to its owner or its owner's commercial activities is legitimate. It is not.

In ordering the domain name transferred, the Panel did not consider the issue of bad faith registration, holding that the Panel "makes no finding concerning the allegation of bad faith". This is not consistent with the requirements of the CDRP, which requires findings on all three prongs (i.e., confusion, legitimate interest and bad faith).

The Panel erred in not considering the issue of bad faith, although the ultimate decision to order the domain name transferred is sound. In the first CDRP case dealing with a critical commentary website, the Panel adopted what is a debated point under the Uniform Domain Name Dispute Resolution Policy, namely, that a domain name that suggests some sort of affiliation or sponsorship by the trade-mark owner will generally not be considered a legitimate registration. On the issue of bad faith registration, the case law would have supported a finding that the Respondent had engaged in a pattern of abusive registration in light of his two dot-ca domain name registrations.

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