DECISION

Diners Club International, Ltd. v. Havec Lis

Claim Number:  FA0304000155462

PARTIES

Complainant is Diners Club International, Ltd, Chicago, IL, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry, Digital Brands Practice. Respondent is Havec Lis, Stankov, CZ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dinersclubespanol.com>, registered with Network Solutions, 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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 24, 2003; the Forum received a hard copy of the Complaint on April 24, 2003.

On April 25, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <dinersclubespanol.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 April 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 15, 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@dinersclubespanol.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 May 28, 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 <dinersclubespanol.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark.

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

3. Respondent registered and used the <dinersclubespanol.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 the DINERS CLUB mark, and has registered this mark in over 17 nations worldwide (e.g., U.S. Reg. No. 828,013, registered on April 25, 1967). Complainant’s mark covers, inter alia, credit card services, credit card user loyalty programs and travelers checks. Complainant has over eight million individual card holders, while over half of the Fortune 500 companies in the world hold corporate cards issued by Complainant. As a result of Complainant’s investments in the DINERS CLUB mark, Complainant’s annual sales reached $31 billion in 2001.

Respondent, Havec Lis, registered the <dinersclubespanol.com> domain name on January 13, 2001, and is not licensed or authorized to use Complainant’s DINERS CLUB mark for any purpose. Respondent posts an “Under Construction” webpage at the disputed domain name.

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 with the U.S. Patent and Trademark Office, registration of the mark with the appropriate governmental agencies in over 17 countries worldwide and through widespread and continuous use of the mark in commerce.

Respondent’s <dinersclubespanol.com> domain name is confusingly similar to Complainant’s DINERS CLUB mark. Respondent’s addition of the word “espanol” to Complainant’s mark is unable to disguise the fact that Complainant’s mark is the dominant feature of the domain name. See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

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

Rights or Legitimate Interests

Complainant can make a prima facie case against Respondent having rights or legitimate interests in the <dinersclubespanol.com> domain name by showing that the “safe harbor” provisions of Policy ¶¶ 4(c)(i)-(iii) do not apply to Respondent. With such a showing, Complainant’s burden of demonstrating rights or legitimate interests in the domain names shifts to Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding 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 currently has a webpage posted at the subject domain name, claiming that the website is “under construction.” The evidence before the Panel indicates that this page has been displayed since Respondent’s registration of the disputed domain name over two years ago. For all intents and purposes, Respondent is not using the disputed domain name. Without any demonstrable preparations to use a domain name apparent, the Panel finds that Respondent’s non-use of the <dinersclubespanol.com> domain name does not evidence a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of a domain name pursuant to Policy ¶ 4(c)(iii). 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 Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

Given the fame of Complainant’s DINERS CLUB mark and the information provided to the Registrar in the disputed domain name’s WHOIS contact information, the Panel concludes that Respondent is not “commonly known by” the name DINERS CLUB ESPANOL or <dinersclubespanol.com>. Thus, Policy ¶ 4(c)(ii) does not apply to Respondent. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

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

Registration and Use in Bad Faith

Respondent registered and used the <dinersclubespanol.com> domain name in bad faith. While Respondent has nominally posted content at the disputed domain name, its “under construction” webpage amounts to little more than passive holding of the domain name. Considering that Respondent deliberately chose to register a domain name that entirely incorporates Complainant’s famous DINERS CLUB mark, the Panel concludes that Respondent’s passive holding of the disputed domain name for almost two and a half years is evidence of bad faith registration and use of the domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).

The Panel thus finds that Respondent registered and used the <dinersclubespanol.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

Tyrus R. Atkinson, Jr.,  Panelist

Dated:  June 2, 2003

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