Diners Club International Ltd. v. Wei Zuo a/k/a zuowei
Claim Number: FA0902001246477
Complainant is Diners
Club International Ltd. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP,
Illinois, USA. Respondent is Wei Zuo aka zuowei (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <dinersclub-nu.com>, <dinersme.net>, <dinersclubsaudi.net>, <dinersclubus.net>, <dinersclubusa.net>, <dinersclubcanada.net>, and <dinersclubnorthamerica.net>, registered with Key-Systems Gmbh.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dinersclub-nu.com>, <dinersclubsaudi.net>, <dinersclubus.net>, <dinersclubusa.net>, <dinersclubcanada.net>, and <dinersclubnorthamerica.net> domain names are confusingly similar to Complainant’s DINERS CLUB mark. Respondent’s <dinersme.net> domain name is confusingly similar to Complainant’s DINERS mark.
2. Respondent has no rights to or legitimate interests in the <dinersclub-nu.com>, <dinersme.net>, <dinersclubsaudi.net>, <dinersclubus.net>, <dinersclubusa.net>, <dinersclubcanada.net>, and <dinersclubnorthamerica.net> domain names.
3. Respondent registered and used the <dinersclub-nu.com>, <dinersme.net>, <dinersclubsaudi.net>, <dinersclubus.net>, <dinersclubusa.net>, <dinersclubcanada.net>, and <dinersclubnorthamerica.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Diners Club International Ltd., conducts most
of its business in the credit card and financial industry, having more than 8
million individual cardholders.
Complainant holds many registrations around the world in its DINERS CLUB
and DINERS marks. The United States
Patent and Trademark Office (“USPTO”) issued Complainant a registration for the
DINERS CLUB mark
Respondent registered the disputed domain names November 10, 2008. In May 2008, Complainant contacted Respondent, asking that Respondent transfer four domain names using Complainant’s DINERS CLUB mark and the country-code top-level domain (ccTLD) “.cn.” After registering the <dinersclub-nu.com>, <dinersme.net>, <dinersclubsaudi.net>, <dinersclubus.net>, <dinersclubusa.net>, <dinersclubcanada.net>, and <dinersclubnorthamerica.net> domain names, Respondent contacted Complainant, offering to sell these disputed domain names for as much of $500. per name. Not one of the disputed domain names resolves to an active website.
Paragraph 15(a) of 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."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that Complainant established rights in the
DINERS CLUB and DINERS marks under
Policy ¶ 4(a)(i) through registration of the marks with the USPTO. See Intel
Corp. v. Macare, FA 660685 (Nat. Arb. Forum
The <dinersclubsaudi.net>, <dinersclubus.net>, <dinersclubusa.net>,
<dinersclubcanada.net>, <dinersclub-nu.com>, and <dinersclubnorthamerica.net>
domain names incorporate Complainant’s DINERS CLUB mark followed by a
geographic designation, the generic top-level domains (gTLD) “.net” or “.com,”
and/or a hyphen. Addition of a
geographic indicator or abbreviation may be particularly confusing for Internet
users as Complainant also uses the pattern of combining its DINERS CLUB mark
with a geographic designation to resolve to the website of authorized
representatives in those areas. For
example, the website for the authorized representative in the
Complainant contends that the <dinersme.net> domain name contains the DINERS mark combined
with an element that is either a geographic indicator or a generic word. The
“me” element added after Complainant’s DINERS mark could stand for Middle East,
Maine, the ccTLD for Montenegro (i.e. “me”), or merely the English word
“me.” Irrespective of what Respondent
intended, the Panel finds that the <dinersme.net> domain name is
confusingly similar to Complainant’s DINERS mark under Policy ¶ 4(a)(i). See
Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain
names. If the Panel finds that
Complainant’s allegations establish such a prima facie case, the burden
shifts to Respondent to show that it does indeed have rights or legitimate
interests in the disputed domain names pursuant to the guidelines in Policy ¶
4(c). The Panel finds that
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate
interests in the disputed domain names
pursuant to Policy ¶ 4(a)(ii). Since no response was submitted in this
case, the Panel may presume that Respondent has no rights or legitimate
interests in the disputed domain names.
However, the Panel will still examine the record in consideration of the
factors listed in Policy ¶ 4(c). See
Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum
The Panel finds no evidence in the record to suggest that
Respondent is commonly known by any of the disputed domain names. Complainant asserts that Respondent has no
license or agreement with Complainant authorizing Respondent to use the DINERS
CLUB or DINERS marks, and the
WHOIS information identifies Respondent as “Wei Zuo a/k/a zuowei.” Thus, the Panel finds that Respondent has not
established rights or legitimate interests in any of the disputed domain names
under Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
None of the disputed domain names resolves to an active
website. The Panel finds that
Respondent’s failure to use the disputed domain names does not constitute a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See
Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO
Respondent’s offer
to sell the disputed domain
names to Complainant for an amount in
excess of its registration costs is further evidence that Respondent lacks rights
and legitimate interests in the disputed domain names pursuant to Policy ¶
4(a)(ii). See Mothers Against
Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and
Use in Bad Faith
Respondent’s
offer to sell the disputed domain names to Complainant for up to $500 each
exceeds Respondent’s out-of-pocket expenses in registering the disputed domain
names. The Panel finds that this offer
to sell the disputed domain names to Complainant for more then the
out-of-pocket costs related to the registration of the disputed domain names
constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb.
Forum
Respondent’s failure to actively use the disputed domain
names is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dinersclub-nu.com>, <dinersme.net>, <dinersclubsaudi.net>, <dinersclubus.net>, <dinersclubusa.net>, <dinersclubcanada.net>, and <dinersclubnorthamerica.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 2, 2009.
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