Its rare you see a big name trademark holder lose a UDRP against one defendant for several similar domain names, but that’s just what happened to Diners Club when they filed a UDRP against Green Free who owned several .NL domain names having the words “diner” and “card” in them:
dinercadeaucard.nl dinercadeaukaart.nl, diner-giftcard.nl, dinergiftcard.nl, and dinergift.nl
Here are the relevant facts and conclusions by the one person panel:
“The defendant denies that the DINERS Brands in its entirety in the Domain names are incorporated.”
“The word “dinner” (ie the “s”) is not entirely in the domain. Respondent points to the fact that all the domain names very common Dutch word “dinner” (without “s”) as a starting point is taken. According to the Van Dale Dutch dictionary this word means “full hot meal,” and the word is phonetically pronounced “dienee”.
“Respondent further points out that he include “leisure loyalty” programs developed. The defendant has previously been the National Golfbon concept in the market placed using the domain names and <golf-giftcard.nl> <golfbon.nl>. Another potential concept is based on the Dutch restaurant / dining market. In order to develop this concept, Respondent registered the domain names, like other domains as <nationale-dinercard.nl> and <nationaledinercard.nl>.”
“Respondent thus seeks a similar gift to the National Golfbon / gift card concept to the Dutch “dinner” market to offer.”
“The term “gift card” is general in nature and is used to replace the famous “bon”. Difference in voucher and gift card lies in the possibility of a plaintiff gift card through pinterminals up and down to value. This is the reason for the combination of the Dutch word “dinner” and the term “gift card”.
“In any event, at the discretion of the Panelist, the sign DINNERS at least one character reference in relation to certain services for which it is registered. Given the American backdrop, the Plaintiffs Panelist in principle, the Anglo-American sense of the word “dinner”, being “eaters” or “little (way) restaurant.” These meanings as related to the services of Complainant should point to one of the (possibly most common) goals of the services of Complainant, namely the possibility to pay by credit card at restaurants.”
“Besides the Panelist notes that Plaintiff has not stated as such that the domain names confusingly match the invoked Brands. Plaintiff has only argued that the Trademark in its entirety in the Domain names are incorporated, so the domain would vote in accordance with the Marks. ”
“The Panelist notes, however, that the marks are not in its entirety in the Domain names are incorporated, in all domain names, there is use of the word ‘dinner’ – ie without the “S” of the sign DINERS.”
“In this case it makes a big difference. ”
“Panelist follow the defendant in his claim that the element “dinner” in the domain name is used descriptively as a Dutch word for the evening meal, sometimes combined with descriptive English words like “gift” and “card”.
“This means that there is a conceptual and aural differences between the American English word “dinner”, that “eaters” or “little (way) restaurants” and is pronounced as [dai-ners], and the Dutch word “dinner” that means dinner and is pronounced as [so-no]. Based on these differences, the Panelist considers that the Domain Name confusingly may not correspond to the marks of Complainant.”
“Claim this does not meet the first under Article 2.1 sub a of the Regulations.”