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,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dinersclubuae.net>, registered with Domainsouffle.com 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, Domainsouffle.com LLC confirmed by e-mail to the National Arbitration Forum that the <dinersclubuae.net> domain name is registered with Domainsouffle.com LLC and that the Respondent is the current registrant of the name. Domainsouffle.com LLC has verified that Respondent is bound by the Domainsouffle.com 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 firstname.lastname@example.org 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.
Complainant contends that it owns trademarks and service marks for
DINERS, DINERS CLUB, and DINERS CLUB INTERNATIONAL in the
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
Respondent has indicated that s/he is Amer Bakri whose address is given
as located in
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 <dinersclubuae.net>.
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.
Respondent’s domain name is identical and/or confusingly similar to
Complainant’s mark. Complainant’s
trademark registrations in the
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 <verisignindia.com> and <verisignindia.net> 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 <mfiuk.com> 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.
Respondent has no rights or legitimate interests in the disputed domain. Respondent is not commonly known by the <dinersclubuae.net> 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 [<awvacations.com>] 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.
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
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 <dinersclubuae.net> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 1, 2007
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