Dinersclub-nu.com + 6 more domains

The timeline behind dinersclub-nu.com

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

How each disputed name was decided in this proceeding.

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

NATIONAL ARBITRATION FORUM DECISION Diners Club International Ltd. v. Wei Zuo a/k/a zuowei Claim Number: FA0902001246477 PARTIES 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”), China. 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. PANEL 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. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically February 6, 2009; the National Arbitration Forum received a hard copy of the Complaint February 9, 2009. On February 11, 2009, Key-Systems Gmbh confirmed by e-mail to the National Arbitration Forum that the <dinersclub-nu.com>, <dinersme.net>, <dinersclubsaudi.net>, <dinersclubus.net>, <dinersclubusa.net>, <dinersclubcanada.net>, and <dinersclubnorthamerica.net> domain names are registered with Key-Systems Gmbh and that Respondent is the current registrant of the names. Key-Systems Gmbh verified that Respondent is bound by the Key-Systems Gmbh 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 February 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 12, 2009, 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-nu.com, postmaster@dinersme.net, postmaster@dinersclubsaudi.net, postmaster@dinersclubus.net, postmaster@dinersclubusa.net, postmaster@dinersclubcanada.net, and postmaster@dinersclubnorthamerica.net by e-mail. 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. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS 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. FINDINGS 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 April 25, 1967 (Reg. No. 828,013) and for the DINERS mark October 20, 1987 (Reg. No. 1,462,209). 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. 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." 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. Identical to and/or Confusingly Similar 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 Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). 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 United States resolves from the <dinerclubus.com> domain name. Moreover, the Panel finds that the additions of a hyphen and/or top-level domain are irrelevant when analyzing whether a name is identical to or confusingly similar to a protected mark. The Panel therefore finds the <dinersclubsaudi.net>, <dinersclubus.net>, <dinersclubusa.net>, <dinersclubcanada.net>, <dinersclub-nu.com>, and <dinersclubnorthamerica.net> domain names to be confusingly similar to Complainant’s DINERS CLUB mark under Policy ¶ 4(a)(i). 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); see also JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by the respondent, <jvc-america.com>, is substantially similar to, and nearly identical to the complainant's JVC mark); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). 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 Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Wal-Mart Stores, Inc., supra. The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). Rights to or Legitimate Interests 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 Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). 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 Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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.”). 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 Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the 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 commercial use of the domain names has been established). 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 May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use). 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 Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website”). 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 Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to use a domain name permits an inference of registration and use in bad faith); see also Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (“Mere [failure to use] a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale.”). The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii). 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-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. Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

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