Dinersclubdiningguide.com

The timeline behind dinersclubdiningguide.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Diners Club International Ltd. v. Al Powell Claim Number: FA0303000148166 PARTIES Complainant is Diners Club International, Chicago, IL (“Complainant”) represented by Paul D. McGrady of Ladas & Parry, Digital Brands Practice. Respondent is Al Powell, Laguna Hills, CA (“Respondent”). REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <dinersclubdiningguide.com> registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Tyrus R. Atkinson, Jr., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 7, 2003; the Forum received a hard copy of the Complaint on March 10, 2003. On March 10, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <dinersclubdiningguide.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 March 11, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 31, 2003 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@dinersclubdiningguide.com by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default. On April 8, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <dinersclubdiningguide.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark. 2. Respondent does not have any rights or legitimate interests in the <dinersclubdiningguide.com> domain name. 3. Respondent registered and used the <dinersclubdiningguide.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the DINERS CLUB mark (Reg. No. 828,013 registered on April 25, 1967) related to the extension of credit to customers who purchase at subscribing retail establishments. Complainant also holds numerous trademark registrations that incorporate the DINERS CLUB mark in relation to various services, including a program of restaurant discounts and dining guides. Complainant operates a website at <dinersclub.com> where Complainant’s customers can access restaurant reviews or “dining guides” through this website. Respondent registered the <dinersclubdiningguide.com> domain name on July 7, 2000. Respondent is not using the domain name to resolve to a website. DISCUSSION 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." In view of 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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Paragraph 4(a) of the Policy requires that 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 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. Identical and/or Confusingly Similar Complainant has established its rights in the DINERS CLUB mark through registration with the USPTO and continuous use in commerce for over 35 years. Respondent’s <dinersclubdiningguide.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark because the disputed domain name appropriates Complainant’s entire mark, adds the generic term “dining guide” and adds the generic top-level domain (“gTLD”) “.com” to the end of the mark. The addition of the generic term “dining guide” to the end of Complainant’s registered mark creates a confusing similarity to the mark because the term “dining guide” has an obvious relationship with Complainant’s services. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). Moreover, the addition of a gTLD such as “.com” is not relevant to the confusingly similar analysis pursuant to Policy ¶ 4(a)(i). See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"). The Panel finds that Policy ¶ 4(a)(i) has been established. Rights or Legitimate Interests Respondent has not presented the Panel with a Response in this proceeding. Thus, the Panel may accept all reasonable inferences and allegations in the Complainant as true. See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence). Furthermore, the Panel may presume Respondent lacks any rights to or legitimate interests in the disputed domain name when Respondent refuses to answer the Complainant’s assertions that Respondent lacks any such rights or interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist). Respondent is not using the <dinersclubdiningguide.com> domain name. The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) because there is no evidence in the record to establish Respondent’s rights to or legitimate interests in the domain name and Respondent has made no use of the domain name since its registration on July 7, 2000. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”). The Panel finds that Policy ¶ 4(a)(ii) has been established. Registration and Use in Bad Faith It can be inferred from the fame of Complainant’s mark that Respondent had knowledge of the mark when Respondent registered the <dinersclubdiningguide.com> domain name. Despite the fact that Respondent has not used the disputed domain name, Respondent’s registration of the domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent knew or should have known of Complainant’s DINERS CLUB mark. See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent failed to use the domain name and (2) it is clear that Respondent registered the domain name as an opportunistic attempt to gain from the goodwill of the Complainant); see also E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of the Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>). Moreover, when contacted by Complainant, Respondent offered to sell the disputed domain name registration for more than its out-of-pocket expenses. Respondent’s communications indicate that it registered the <dinersclubdiningguide.com> domain name primarily for the purpose of selling it to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where the Respondent made no use of the domain names except to offer them for sale to the Complainant). The Panel finds that Policy ¶ 4(a)(iii) has been established. DECISION Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <dinersclubdiningguide.com> domain name be TRANSFERRED from Respondent to Complainant. Tyrus R. Atkinson, Jr., Panelist Dated: April 14, 2003 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.