Diners Club International
Ltd. v. N.A. a/k/a Amer Bakri
Claim Number: FA0709001079846
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@dinersclubuae.net 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends that it owns trademarks and service marks for
DINERS, DINERS CLUB, and DINERS CLUB INTERNATIONAL in the
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.
FINDINGS
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>.
DISCUSSION
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.
DECISION
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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