{
    "case_number": "CAC-ADREU-005646",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "The Complainant, Discover Financial Services (UK) Limited, is part of the Diners Club group and is licensed by Diners Club International Ltd. (“Diners Club”). Under an Intercompany License Agreement dated 21 September 2009 between Diners Club and the Complainant (the “License Agreement”), the Complainant has been granted the right to litigate, arbitrate and otherwise make enforcement efforts against any third party relevant to the trade marks and domain names set out in that agreement on behalf of Diners Club. Under the Agreement, the Complainant is authorised to take enforcement action in respect of the following trade marks owned by Diners Club: \r\n- CTM No. 3777621 DINERS, with a filing date of 5 September 2003 and registration date of 29 August 2005;\r\n- CTM No. 111906 DINERS CLUB with a filing date of 1 April 1996 and registration date of 7 October 1998;\r\n- CTM No. 2903045 DINERS CLUB and design with a filing date of 23 October 2002 and registration date of 25 May 2004;\r\n- CTM No. 173211 DINERS CLUB INTERNATIONAL and design with a filing date of 1 April 1996 and registration date of 7 January 1999; and\r\n- CTM No. 5426416 DINERS SAFE with a filing date of 30 October 2006 and registration date of 18 October 2007 (the \"DINERS trademarks\").\r\n\r\nThe Complainant’s group also owns the following domain names:\r\n\r\n- <dinerscards.com>, registered on 17 May 2003;\r\n- <dinerscard.com>, registered on 9 August 1999;\r\n- <dinerscard.org>, registered on 28 July 2000;\t\t\r\n- <dinerscard.biz>, registered on 23 August 2004;\r\n- <dinerscard.net>, registered on 17 May 2009; and\r\n- <dinerscard.co.uk>, registered on 3 March 2008.\r\n\r\nThe Domain Name was registered on April 7, 2006.",
    "other_legal_proceedings": "The Panel is not aware of any legal proceedings, pending or decided, which relate to the disputed domain name DINERSCARDS (the \"Domain Name\").",
    "discussion_and_findings": "According to Article B11(d)(1) of the ADR Rules, the Panel shall issue a decision granting the remedies requested under the Procedural Rules in the event that Complainant proves in the ADR proceeding that:  \r\n(i) the domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and\/or Community law and; either  \r\n(ii) the domain name has been registered by the Respondent without rights or legitimate interest in the name; or  \r\n(iii) the domain name has been registered or is being used in bad faith.\r\n\r\nIdentical or confusingly similar \r\n \r\nThe Panel finds from the evidence submitted with the Complaint that the Complainant’s affiliated company, Diners Club International Ltd., is the proprietor of the DINERS trademarks, details of which are given above. These trademark registrations give rise to rights in the name DINERS within the meaning of Article 10 of the Commission Regulation ( EC) 874\/2004, i.e., rights established by Community law. As further evidenced with the Complaint, Diners Club International Ltd. has licensed the Complainant to use the DINERS trademarks on its own behalf with regards to their enforcement, which is to be carried out by the Complainant. Therefore, the Panel finds that the Complainant has proven that it has rights in the name DINERS, in respect of which trademark rights are established by Community law.\r\n \r\nThe Panel finds that the Domain Name is confusingly similar to the DINERS trademarks. The dominant feature of both the Domain Name and the trademarks is the word DINERS, and their other elements, being descriptive or generic, do not detract from that dominance. As to the suffix “.eu”, it is widely accepted that this element is not relevant for the purposes of the test for identity or confusing similarity. Therefore, the condition set forth under Article B11(d)(1)(i) of the ADR Rules is fulfilled.\r\n\r\nRights and Legitimate Interests\r\n\r\nUnder the ADR Rules, the burden of proof for the lack of rights and legitimate interests of the Respondent lies with the Complainant. However, the existence of negative facts is difficult to prove, and the relevant information for the Respondent is mostly in its sole possession. Therefore, the Panel holds that it is sufficient for the Complainant to make a prima facie demonstration that Respondent lacks rights or legitimate interests in the Domain Name. The burden of proof then shifts to Respondent to substantiate its rights or legitimate interests in the Domain Name. \r\n\r\nIn this case, Complainant has submitted that Respondent is not using the Domain Name in connection with the offering of goods and services, and has made no demonstrable preparation to do so. The Domain Name has not been used since its registration, and there are no indications of a connection between the Respondent and the Domain Name. The Respondent has never been licensed by the Complainant to register or use the Domain Name. In this way, Complainant has made the prima facie showing discussed above. \r\n\r\nThe Panel is of the opinion that the Respondent has failed to rebut the prima facie case established by the Complainant. As explicitly conceded by the Respondent, he was the beneficial owner of the Domain Name from its registration. The Domain Name was chosen and registered specifically in view of the Complainant and its financial products and services. This makes clear that the Respondent's plans related to the Domain Name (even if never substantiated, as he conceded himself) were based on the goodwill of the Complainant and its name DINERS. The eventual operation of a website under the Domain Name is likely to extract benefit from this goodwill without the consent of the Complainant, especially if such website is used for commercial purposes (it is noted that the Respondent has not claimed to have planned to use the Domain Name solely for non-commercial purposes). In the Panel's view, these circumstances cannot be regarded as giving rise to rights and legitimate interests of the Respondent in the Domain Name.\r\n\r\nAs to the entity named Dinerscards Ltd. which appears in WhoIs information in respect of the registrant of the Domain Name, the Panel notes that the Respondent has not mentioned it in his response. Rather, it is clear from the Respondent's submission that he is acting as a physical person. In addition, the Panel has not found information of any company with such name registered in Bulgaria. Therefore, the Respondent has not established that it is commonly known by the Domain Name.\r\n\r\nTaking the above circumstances into account, the Panel finds that the Respondent has registered the Domain Name without rights or legitimate interests in it.The condition set forth under Article B11(d)(1)(ii) of the ADR Rules is therefore fulfilled as well.\r\n\r\n\r\nBad Faith  \r\n\r\nThe Panel notes that, in case Respondent is found to have registered the Domain Name without rights or legitimate interests in it, it is not necessary to investigate Respondent’s possible bad faith under Article B11(d)(1)(iii) of the ADR Rules.  However, for the sake of completeness, the Panel decided to rule on this issue as well.  \r\n\r\nAs noted in ADR Case No.02235: “Given the Complainant’s rights to the use the name “Palmer’s Cocoa Butter” in Europe, there are only a limited number of ways in which the Respondent could use the domain name that would not be in bad faith. ... If the domain name was used for any commercial purpose (including the offering of the domain name for sale, or for sponsored links or affiliate sales) this would therefore be evidence of bad faith.” The Panel finds that the same reasoning applies here as well. Complainant has established its rights in the name “DINERS” for the territory of the European Union, and this name is obviously well-known and easily recognized by consumers of financial services related to credit cards. The Domain Name is confusingly similar to the DINERS trademarks, so it is likely that Internet users would expect it to be affiliated to or approved by Diners Club, especillay given the numerous similar domain names registered by the Diners Club group. The Respondent has himself stated that the purpose of the registration of the Domain Name was to make a web portal dedicated to the Diners Club cards, and the Complainant has never given its approval to such project. In these circumstances, it is difficult to conceive of any good faith use of the Domain Name by the Respondent that would be legitimate. Rather, it is more likely than not that the Respondent has either registered the Domain Name with the intent to extract commercial gain from the goodwill of the DINERS trademarks and of the Diners Club group, by attracting Internet users to his website, or has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant.\r\n\r\nTherefore, the Panel accepts that the Respondent has registered the Domain Name in bad faith, and the condition set forth under Article B11(d)(1)(iii) of the ADR Rules is also fulfilled.\r\n\r\nNow, the Panel turns to the Respondent's argument that the Complainant has not registered the Domain Name itself during the Sunrise Period, and has not carried out any actions against the Respondent for four years thereafter, as a result of which the Complainant was not eligible to bring the present proceeding against the Respondent. The Panel does not accept these arguments. To do so would mean that, in order to protect its rights, a company would have to register all imaginable variants of its trademarks combined with terms descriptive of its business. As to the four years of inaction by the Complainant, the Panel notes that under Article 53 of Council Regulation (EC) No.40\/94, the period of acquiescence should be at least five years, and it has not expired yet.\r\n\r\nAs the Complainant is a company established in the United Kingdom, it satisfies the general eligibility criteria for registration of the Domain Name set out in Paragraph 4(2)(b) of Regulation (EC) No 733\/2002. Therefore, Complainant is entitled to request the transfer of the Domain Name to itself.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the domain name DINERSCARDS be transferred to the Complainant.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2010-05-20 00:00:00",
    "informal_english_translation": "This Decision relates to the domain name DINERSCARDS (the \"Domain Name\").\r\n\r\nThe Complainant Discover Financial Services (UK) Limited is part of the Diners Club group and is licensed by Diners Club International Ltd. (“Diners Club”) - a leading provider of financial services, including but not limited to, credit and charge card services. The Complainant requests the transfer of the Domain Name.\r\n\r\nThe Panel has made the following findings:\r\n- the Domain Name is confusingly similar to the Complainant’s DINERS trademarks, as it incorporates their distinctive element DINERS in its entirety;\r\n- the Respondent has no rights or legitimate interests in the Domain Name, as the Domain Name was chosen and registered specifically in view of the Complainant and its financial products and services, the Respondent's plans related to the Domain Name were based on the goodwill of the Complainant and its name DINERS, and the eventual operation of a website under the Domain Name is likely to extract benefit from this goodwill without the consent of the Complainant, especially if such website is used for commercial purposes; \r\n- the Domain Name was registered in bad faith, as it is more likely than not that the Respondent has either registered the Domain Name with the intent to extract commercial gain from the goodwill of the DINERS trademarks and of the Diners Club group, by attracting Internet users to his website, or has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant.\r\n\r\nOn these grounds, and in view of the fact that the Complainant is established in the European Union, the Panel has ordered the transfer of the Domain Name to the Complainant.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}