National Arbitration Forum Decision
Diners Club International Ltd. v. Weber & Partners Consult SRL
Claim Number: FA0604000676676
Complainant is Diners Club International Ltd. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is Weber & Partners Consult SRL (“Respondent”), represented by Oana Grigorescu, of Weber & Partners Consult SRL, Reconstructiei nr. 10, bl. 29, sc. B, et. 3, ap. 5, Sector 3, Bucharest RO-031725.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dinersclub.ro>, registered with Research Institute for Informatics, Romanian National R&D Computer Network RNC.ro.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 12, 2006.
On April 19, 2006, Research Institute for Informatics, Romanian National R&D Computer Network RNC.ro confirmed by e-mail to the National Arbitration Forum that the <dinersclub.ro> domain name is registered with Research Institute for Informatics, Romanian National R&D Computer Network RNC.ro and that the Respondent is the current registrant of the name. Research Institute for Informatics, Romanian National R&D Computer Network RNC.ro has verified that Respondent is bound by the Research Institute for Informatics, Romanian National R&D Computer Network RNC.ro 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 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 10, 2006 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on May 9, 2006.
An Additional Submission from Complainant was timely received on May 15, 2006.
On May 15, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant asserts that:
· Since 1965, it has been a leading provider of financial services to individuals, small businesses, and large corporations through many channels of trade, including but not limited to, credit card services which are accepted in over 200 countries and at over 7.6 million locations around the world;
· It registered trademarks and service marks which incorporate the element DINERS CLUB in US as federal marks and all over the globe, including Romania;
· It has made extensive use of these marks by providing its services throughout the United States, in România, and around the world and these marks became notorious under the laws of the United States and many other relevant jurisdictions;
· The disputed domain name is nearly identical and confusingly similar to the DINERS CLUB trademarks and service marks, because it fully incorporates these marks;
· It has not given Respondent any license, permission, or authorization by which Respondent could make any use of any of its marks. Currently, the Offending Domain does not resolve to any content;
· Respondent lacks rights or legitimate interests in the disputed domain name;
· Respondent has never operated any bona fide or legitimate business under the
disputed domain name and it is not making a protected non-commercial or fair use of it;
· Respondent registered and is using the disputed domain name in bad faith with actual or constructive knowledge of Complainant’s trademarks;
· Respondent is passively holding the domain name which is also evidence
of bad faith registration and use;
· Respondent is opportunistically attempting to trade on the goodwill built up in Complainant's marks also because the disputed domain name is confusingly similar with the well-known domain name of Complainant, <dinersclub.com>.
The Respondent contends that:
· The services offered by Complainant are not known in Romania;
· The name DINERS CLUB is in the conscience of Romanian consumers connected to “dinner” and herewith with restaurants;
· Its rights to use the domain name <dinersclub.ro> have been acquired for the hosting of an online restaurants guide for Bucharest and other Romanian major cities;
· It has already started the preparation works for the restaurants guide and depending on resolution of this proceeding by the National Arbitration Forum, this online guide will be available in five (5) months time from now;
· It has no intention of creating a misleading connection either to the financial or other services offered by Complainant, because the information available at the disputed domain names will be referring to services offered by Romanian restaurants and no mark has been registered so far by the Complainant for this type of services.
C. Additional Submissions
The Complainant asserts further in its additional submissions that:
· Respondent is purposefully misleading the Panel, because diners club is registered as a trademark in Romania, and the DINERS CLUB card has been accepted throughout România by various establishments for many years, as early as 1992;
· It is far more likely that a Romanian consumer would be exposed to the English language mark DINERS CLUB in România as a service mark which the consumer notices on menus, doors to restaurants and retail establishments, or when paying for hotel, rental car, or travel services and therefore would associate that English language mark with Complainant and its services;
· Respondent provides no documents or evidence showing that it has acquired "rights to the domain name <dinersclub.ro> for the hosting of an online restaurants guide for Bucharest and other Romanian cities.";
· Respondent ignores Complainant's Romanian attorneys who wrote to it in connection with the disputed domain name;
· Respondent merely manufactured this "business plan" after the fact in an attempt to retain rights to this domain name;
· Respondent admitted its intent to use the domain name to compete directly in an area with an obvious connection to Complainant's business and this highlights Respondent's bad faith.
The question raised to the Panel is the generic character of the terms used in the disputed domain name, which also represents Complainant’s mark.
The Panel does not agree with Respondent’s claim that the terms “diners” and “club” are commonly used to refer to the restaurants business in Romania and this has nothing in common with Complainant’s mark.
In Romania, the two terms are not used to refer to the restaurants business in Romania restaurants.
At the same time, Complainant has protected its rights in the DINERS CLUB mark all over the world by registration and made extensive use and marketing of said mark, which has transformed the said mark into a famous one. See Diners Club International Ltd. v. SPS, FA 149414 (Nat. Arb. Forum Apr. 21, 2003) (recognizing that Complainant's extensive marketing of the DINERS CLUB FAMILY marks have made those marks famous).
It is the Panel’s opinion that the DINERS CLUB marks have acquired a distinctive meaning in connection with the services provided by Complainant and that the registration of such marks as domain names by a third party represents a strong indication of bad faith.
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.
Identical and/or Confusingly Similar
Complainant has registered the DINERS CLUB marks in numerous countries around the world, including Romania, where Respondent resides (Reg. No. 23,477 issued September 29, 1997), and in the United States with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 828,013 issued April 25, 1967). This is, in the opinion of the Panel, strong evidence supporting Complainant’s rights in these marks.
In addition, the Complainant’s marks have developed into famous ones, as found above.
As well, it is the Panel’s opinion that the <dinersclub.ro> domain name is identical to Complainant’s mark because it includes the entire mark and merely adds a country-code top-level domain (“ccTLD"). Such addition does not sufficiently distinguish the domain name from Complainant’s DINERS CLUB mark under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”)
Rights or Legitimate Interests
It is the opinion of the Panel, that Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
By providing the Response, the Panel finds that Respondent did not show that it does have rights or legitimate interests.
In this finding, the Panel considered that there is no evidence in the record suggesting that Respondent is commonly known by the <dinersclub.ro> domain name, including the WHOIS information.
In addition, the non-use of the disputed domain name by Respondent does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Services and Information SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that passive holding of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
And finally, the assertion of Respondent that it has plans to operate a website at the <dinersclub.ro> domain name providing information on restaurants in major Romanian cities, including Bucharest, cannot constitute proof of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as there is no evidence supporting such an assertion.
Registration and Use in Bad Faith
The Panel finds that Respondent’s registration and use of the <dinersclub.ro> domain name indicates bad faith under Policy ¶ 4(a)(iii).
The bad faith in registration is supported by the similarity of the disputed domain name with the DINERS CLUB mark, which is a famous mark, well-known all over the world and registered and used even in Romania.
The declared purpose of registration of the disputed domain name for the use in connection with restaurants in major Romanian cities, including Bucharest, represents, in the Panel’s view, evidence of the fact that Respondent intended to use Complainant’s mark for its own benefit in an area with a connection to Complainant's business.
Furthermore, it is the opinion of the Panel that, even if the purpose was not declared expressly by Respondent, the registration and passive holding of a domain name of a famous mark of somebody else, together with all the other elements discussed above, would represent bad faith in registration and use.
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.ro> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: May 29, 2006