DECISION

Diners Club International Ltd. v. Domain Admin******It's all in the name******

Claim Number:  FA0305000156839

PARTIES

Complainant is Diners Club International Ltd., Chicago, IL (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry, Digital Brands Practice. Respondent is Domain Admin******It's all in the name*****, LIC, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwdinersclub.com>, 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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 8, 2003; the Forum received a hard copy of the Complaint on May 9, 2003.

On May 15, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <wwwdinersclub.com> is registered with Enom, Inc. and that 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 May 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 5, 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@wwwdinersclub.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 June 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 <wwwdinersclub.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark.

2. Respondent does not have any rights or legitimate interests in the <wwwdinersclub.com> domain name.

3. Respondent registered and used the <wwwdinersclub.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Diners Club International Ltd., is the owner of many tradmark registrations incorporating elements of the DINERS CLUB mark, including the DINERS CLUB mark itself (e.g., U.S. Reg. No. 828,013, registered on the Principal Register of the U.S. Patent and Trademark Office on April 25, 1967). Complainant uses its mark in connection with, inter alia, credit card and related services and a program of restaurant discounts and dining guides.

Respondent, Domain Admin******It's all in the name******, registered the <wwwdinersclub.com> domain name on April 16, 2000, and is not licensed or authorized to use Complainant’s DINERS CLUB mark for any purpose. Respondent uses the disputed domain name to host a website which informs Internet users that the disputed domain name “is available for lease or sale!” The disputed domain name also provides a limited list of links to other websites, with titles such as “Cars,” “Finance & Mortgage” and “Buy Candles.”

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 rights in the DINERS CLUB mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread and continuous use of the mark in commerce.

Respondent’s <wwwdinersclub.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark. Respondent’s addition of the world-wide web abbreviation (“www”) as a prefix to Complainant’s mark exemplifies the type of situation that the Policy was designed to rectify. Such a domain name is confusingly similar to the mark it attempts to modify under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark).

Accordingly, the Panel finds that the <wwwdinersclub.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has the initial burden of showing that Respondent lacks rights or legitimate interests in the <wwwdinersclub.com> domain name. Complainant is able to meet this burden, hence shifting it to Respondent, by demonstrating that Respondent does not qualify for the protetions afforded domain name registrants under the UDRP outlined in Policy ¶¶ 4(c)(i)-(iii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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).

Respondent’s <wwwdinersclub.com> domain name is a typosquatted version of Complainant’s DINERS CLUB mark, evidence in and of itself that Respondent lacks rights or legitimate interests in the disputed domain name vis á vis Complainant. See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (stating that “[t]yposquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site”); see also Black & Decker Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where Respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the Complaint).

Respondent’s conduct, purporting to sell its domain name registration to any interested buyers, is also evidence that Respondent lacks rights or legitimate interests in the disputed domain name. Sale of a domain name registration can be considered to be a bona fide offering of goods or services in some circumstances, but not in those where the domain name is obviously dependant upon the goodwill surrounding Complainant’s registered mark. Hence, Respondent would not be able to avail itself of the provisions of Policy ¶¶ 4(c)(i) or (iii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by Complainant).

Finally, there is no evidence before the Panel to rebut the conclusion that Respondent, known as “******It’s all in the name******,” is “commonly known by” the disputed domain name. Thus, Policy ¶ 4(c)(ii) does not apply to Respondent. See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”); see also 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).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwdinersclub.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

As stated above, Respondent has no rights or legitimate interests in the <wwwdinersclub.com> domain name. Moreover, Respondent registered the domain name for the purpose of marketing its registration for profit. As the sole value of the domain name is dictated by its relation to Complainant’s registered DINERS CLUB mark, the Panel infers that Respondent registered the domain name for the primary purpose of selling its registration to Complainant, evidence that the domain name was registered and used in bad faith 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 Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).

Further evidence of Respondent’s bad faith can be deduced from the nature of the domain name itself. Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL. Such knowing registration and deceiving use of a domain name are evidence of bad faith under Policy ¶ 4(a)(iii). See RE/MAX Int’l., Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that Respondent’s registration of the <wwwremax.com> domain name, incorporating Complainant’s entire mark, was done with actual notice of Complainant’s rights in the mark prior to registering the infringing domain name, evidencing bad faith); see also Black & Decker Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwdinersclub.com> domain name under Policy ¶ 4(a)(ii).

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <wwwdinersclub.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  June 23, 2003

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