National Arbitration Forum




Diners Club International Ltd. v. N.A. a/k/a Amer Bakri

Claim Number: FA0709001079846



Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601.  Respondent is N.A. a/k/a Amer Bakri (“Respondent”), P O BOX 616, Safat, Kuwait 13007, KW.




The domain name at issue is <>, registered with LLC.



The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.


Darryl C. Wilson as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on September 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 18, 2007.


On September 17, 2007, LLC confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with LLC and that the Respondent is the current registrant of the name. LLC has verified that Respondent is bound by the LLC 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 September 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 10, 2007 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 by e-mail.


A timely Response was received and determined to be complete on October 10, 2007.


On October 18, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A.     Complainant


Complainant contends that it owns trademarks and service marks for DINERS, DINERS CLUB, and DINERS CLUB INTERNATIONAL in the U.S. and internationally.  Complainant asserts that its Diners Club Family of marks are known worldwide and that Respondent’s offending domain name was registered well after Complainant’s trademark registrations had taken place.  Complainant further contends that Respondent’s domain name <> is nearly identical and confusingly similar to its registered marks.  Complainant also states that Respondent has no rights or legitimate interests in the disputed domain and that Respondent registered the domain name and is using the same in bad faith.


B.     Respondent


Respondent contends that the National Arbitration Forum does not have jurisdiction to rule on the disputed domain.  Respondent also states that s/he wishes “to settle this matter so as to dispose of it without further delay . . .” but makes no substantive response to Complainant’s assertions nor indicates how he proposes to reach the goal of settling the instant dispute.



Complainant is the owner of the Diners Club Family of trademarks and service marks having registered the mark DINERS CLUB and variations thereon in the U.S. dating back to U.S. Registration 0828013 for DINERS CLUB that indicates a date of first use of November 1, 1965.  Complainant is a leading international provider of financial services carrying on business in over 200 countries with sales in the tens of billions of dollars.  Complainant’s services include conducting business over the Internet through its own registered domain names which, coupled with its thousands of physical locations, has given Complainant a degree of global fame and notoriety.  Complainant has registered and/or filed for registration of more than 800 marks from the Diners Club Family around the world, including registrations and filings throughout the Middle East in countries such as Kuwait, Yemen, Oman, Saudi Arabia and the United Arab Emirates.


Respondent has indicated that s/he is Amer Bakri whose address is given as located in Kuwait and who registered the disputed domain <> through, an ICANN accredited registrar.  Respondent has not asserted that it has any authorization to use any mark in the Diners Club Family and the disputed domain website does not resolve to any further information about Respondent or to any type of good, service or business to which <> might attach or otherwise be asociated.


Respondent’s contention that he denies the jurisdiction of the National Arbitration Forum to adjudicate or rule upon any pertinent matter is without merit.  Respondent registered the disputed domain with an accredited domain name registrar, who, pursuant to the regulations for all such parties, has adopted the UDRP Policy which is binding on registrars and domain holders such as Respondent.  The UDRP sets forth the responsibilities of registrants and outlines the policy for resolving disputes including a listing of the administrative dispute-resolution service providers of which the National Arbitration Forum is one of the entitites so designated. The UDRP requires that parties submit to a mandatory administrative proceeding in the case of certain disputes and Respondent agreed to all the provisions in the UDRP when Respondent registered the disputed domain <>.



Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”


Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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


Respondent’s domain name is identical and/or confusingly similar to Complainant’s mark.  Complainant’s trademark registrations in the U.S. and throughout the world are sufficient to establish rights in the DINERS CLUB mark under Policy ¶ 4(a)(i).  See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding “that Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”).


 Respondent’s addition of the geographical indicator “uae” does not distinguish the domain name sufficiently from Complainant’s mark to prevent confusion.  See VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s VERISIGN mark and the <> and <> domain names where the respondent added the word “India” to the complainant’s mark); see also MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom).  Nor does Respondent’s addition of the generic top level domain “.net” to the mark prevent the disputed domain name from being deemed identical and/or confusingly similar.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). 


Complainant has proven this element.


Rights or Legitimate Interests


Respondent has no rights or legitimate interests in the disputed domain.  Respondent is not commonly known by the <> domain name.  Respondent’s WHOIS information identifies Respondent as “N.A. aka Ameri Bakri.”  Respondent’s response to the complaint refers to no business, is unsigned, and simply ends with the typed name Amer Bakri.  Respondent has asserted no trademark rights of any type in the disputed domain.  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<>] domain name.”).


Respondent’s domain resolves to a website that displays links to third-party websites offering competing financial services to those of the Complainant.  Respondent does not deny Complainant’s assertions that Respondent has never operated any bona fide or legitimate business under the disputed domain.  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).


Complainant has proven this element.


Registration and Use in Bad Faith


Respondent has registered and is using the disputed domain in bad faith.  Respondent knew or should have known of the Complainant’s marks based on Complainant’s registration of its marks with the USPTO.  See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (Complainant’s OXYCLEAN mark is listed on the Principal Register of the U.S.P.T.O., a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).  Had the Respondent done a trademark search or domain name search prior to registration of the disputed domain Respondent would have seen Complainant’s mark.  Further, due to Complainant’s degree of global fame and notoriety including the Middle East nations of Kuwait and the United Arab Emerates, Respondent could not possibly have registered the disputed domain in good faith.  Failure to reasonably search the availability of a domain name or to restrain from registration of a domain name that is identical or confusingly similar to a registered or famous mark also exemplifies bad faith by a registrant.  Internet users seeking Complainant’s financial services may become confused as to Complainant’s affiliation with Respondent’s <> domain name.  Respondents redirection of Internet users to competing third-party websites for Respondent’s own commercial benefit is further evidence of bad faith registration and use.  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).


Complainant has proven this element.



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.



Darryl C. Wilson, Panelist
Dated: November 1, 2007




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