Diners Club International
Ltd. v. Mark de Jager a/k/a M. de Jager
Claim Number: FA0701000886529
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 <dinersclub.mobi>, registered with eNom, Inc.
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.
David S. Safran as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 10, 2007; the
National Arbitration Forum received a hard copy of the Complaint on January 11, 2007.
On January 15, 2007, eNom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <dinersclub.mobi> domain name is
registered with eNom, Inc. and that the
Respondent is the current registrant of the name. eNom, Inc.
has verified that Respondent is bound by the eNom,
Inc. 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 January 18, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 7, 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@dinersclub.mobi by
e-mail.
A Response was received electronically on February 7, 2007. Because no
hard copy of the Response was received, the National Arbitration Forum has determined
the Response to be deficient pursuant to Supplemental Rule 5(a). Nonetheless, it has been taken into
consideration.
On February 12, 2007, an Additional Submission was received from
Complainant in a timely manner with the requisite fee, and has been considered.
On February 14, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David S. Safran as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain name <dinersclub.mobi> is confusingly similar to its trademarks
because it fully incorporates Complainant’s DINERS CLUB mark. Complainant also contends that Respondent has
no rights or legitimate interests in the domain name <dinersclub.mobi> since Respondent has never been commonly known
by any of Complainant’s marks or variations thereof and has never operated any bona fide or legitimate business under
the domain name <dinersclub.mobi>
and that operation of a passive website is not a bona fide business use or a legitimate noncommercial or fair use. Further, Respondent registered the domain
name <dinersclub.mobi> with
actual or constructive knowledge of Complainant’s trademarks. Still further, Complainant asserts that the
fact that Respondent has also registered another domain name which is
associated with a trademark of another company and the fact that the domain
name resolved to an unauthorized duplicate of Complainant’s website is evidence
of bad faith.
B. Respondent
Respondent contends that the domain name <dinersclub.mobi> was not registered for the purpose of reselling
it and that Respondent has never re-sold a domain name. Respondent further contends that his
registration of the domain name after the sunrise period indicates that he did
not prevent Complainant from obtaining the domain and that instead of
disrupting the business of Complainant, his having the domain forward to a
Diners Club web page did nothing more than promote Complainant and no means to
financially benefit there from can be derived from this use of the domain name
<dinersclub.mobi>. Still further, Respondent contends that it was
his intent to use the website for displaying of personal photographs.
C. Additional Submissions
Complainant contends that Respondent has not rebutted its positions
with respect to the first two of the three elements of the UDRP and that no
evidence has been provided to support Respondent’s position that his use of the
domain is a noncommercial or fair use. Furthermore, that the offer to transfer
the domain for 150 Euros is evidence of bad faith since it is substantially in
excess of Respondent’s $14.95 cost to obtain the name.
FINDINGS
The domain <dinersclub.mobi> is confusingly similar to Complainant’s
trademarks in which Complainant has rights. Respondent has no rights or legitimate
interests in respect of the domain name.
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.
It is uncontested that the domain name at
issue fully incorporates Complainant’s DINERS CLUB trademark and thus is
confusingly similar. See Citigroup Inc. v. Acme Mail, FA 241987
(Nat. Arb. Forum Apr. 12, 2004) (finding the domain name <citiban.com>
confusingly similar to Complainant’s CITI mark because the domain name
incorporates the Complainant’s CITI mark its entirety).
Respondent has failed to provide any evidence
which would demonstrate he possesses rights or legitimate interests in respect
of the domain name, or that Respondent was ever known or otherwise associated
with the Diners Club. To the contrary,
Complainant has shown that, initially, the domain was used merely to forward to
a web page of Complainant and then was changed to a passive site containing the
single word “Hello” and that it never authorized use of any of its trademarks
by Respondent. See Citigroup, Inc. v.
Horoshiy, Inc., FA 290633 (Nat. Arb. Forum Aug. 11, 2004) (finding that
Respondent had not established rights or legitimate interests in the disputed
domain name where there was no evidence that Respondent was commonly known by
the domain names); see also DCI S.A. v.
Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
respondent’s non-use of the domain name satisfies the requirement of Paragraph
4(a)(iii) of the Policy); see also Amazon.com,
Inc. v. Rayaneh Net, FA 196217 (Nat. Arb. Forum October 28, 2003) (finding
no legitimate rights in the <amazoniran.com> domain, in part, because
complainant did not grant respondent a license to use the AMAZON.COM mark).
Given the famous nature of Complainant’s mark
and the fact that the domain was initially linked to a page of Complainant’s
website, Respondent had to have known of Complainant’s mark at the time that
the domain <dinersclub.mobi>
was registered, which evidences that the domain was registered and used in bad
faith within the meaning of Paragraph 4(a)(iii) of the Policy. See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11,
2002) (finding that "[w]here an alleged infringer chooses a mark he knows
to be similar to another, one can infer an intent to confuse").
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 <dinersclub.mobi> domain name be TRANSFERRED
from Respondent to Complainant.
David S. Safran, Panelist
Dated: February 27, 2007
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