WIPO Domain Name Decision D2018-0857 for masterpay.pro
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mastercard International Incorporated v. Nirmal Patel, Champion Software Technologies Ltd. Case No. D2018-0857 1. The Parties
The Complainant is Mastercard International Incorporated of Purchase, New York, United States of America, represented by AZB & Partners, India.
The Respondent is Nirmal Patel, Champion Software Technologies Ltd. of Rajkot, India, represented by Shantanu. R. Phanse & Kamlesh Y. Mali, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2018. On April 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 3, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2018. The Response was filed with the Center on May 28, 2018.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 14, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a multinational corporation and is renowned for its financial services. It is active in more than 210 countries and territories. Its core area of business is the provision of payment processing services. The Complainant also provides allied goods and services, such as secure payment gateways and online or mobile wallet services through collaboration with various banks.
The Complainant’s roots can be traced back to 1966, when a group of bankers known as Interbank Card Association (“ICA”) came together to launch “Master Charge: The Interbank Card”, renamed as MasterCard in 1979. The Complainant launched a contactless card under the name “PayPass” in 2012. The Complainant launched a digital wallet service under the name “MasterPass” in 2013 which is currently available in 37 countries worldwide. “MasterPass” was launched in India, where the Respondent is based, in association with Citibank under the name “Citi MasterPass”. The Complainant describes this as the launch of “the first global wallet to enter India”. The Complainant provided its corresponding press release in evidence. While this was undated, the Panel was able to identify its date from the Complainant’s website as being July 30, 2015.
The Complainant is the owner of a variety of registered trademarks for the word mark MASTERCARD including Indian registered trademark no. 842950 registered in class 9 with an application date of February 26, 1999. The Complainant is the owner of a variety of registered trademarks for the word mark PAYPASS including Indian registered trademark no. 1236582 registered in class 36 with an application date of September 15, 2003. The Complainant is the owner of a variety of registered trademarks for the word mark MASTERPASS including Indian registered trademark no. 2499438 registered in classes 9, 16, 35, 36, 38, and 42 with an application date of March 20, 2013.
The Respondent is a company incorporated under Indian companies legislation on December 10, 2013. The Respondent is engaged using the marks “MasterPay” and “ChampRecharges” in the business and provision of services with respect to mobile recharge, DTH recharge, utility bill payment and domestic money transfer via retailers. The Respondent provides its services via websites at “”, the corresponding domain name for which was registered on August 2, 2014, “”, the corresponding domain name for which was registered on October 15, 2015, “”, the corresponding domain name for which was registered on February 19, 2016, and the website at the disputed domain name which was registered on November 15, 2017.
The Respondent holds an Indian registered trademark in respect of a device mark featuring the words “ChampRecharge” registered on May 5, 2017. The Respondent also applied for an Indian registered trademark in respect of a device mark featuring the words “Master Pay / SAVE YOUR TIME” on May 5, 2017. This mark has not proceeded to grant as it has been opposed by the Complainant. A screenshot from the administration panel of the Respondent’s online platform dated April 21, 2018 showed total users of its system amounting to over 60,000, the majority of whom were listed as retailers.
The Complainant’s counsel issued a formal cease-and-desist notice to the Respondent dated March 16, 2017 regarding the Respondent’s use of the term “MasterPay”. The Respondent’s counsel in the person of two different firms responded by letters of March 23, 2017 and April 7, 2017. The general approach of the Complainant’s counsel was that the Respondent had adopted the term “MasterPay” not by a mere coincidence but to take advantage of the Complainant’s reputation and goodwill in the MASTERCARD and MASTERPASS trademarks. The general approach of the Respondent’s counsel was that the Complainant does not have rights in a trademark or formative mark in respect of the word “Master”, being devoid of any distinctive character, that the Respondent’s website is for duly authenticated distributors, that there is no possibility for confusion and that the Parties’ services are different being on the one hand a payment gateway and on the other a common access for recharge in respect of the services of varying providers.
The Complainant brought a complaint against the Respondent in respect of the domain name in terms of the .IN Domain Name Dispute Resolution Policy (“INDRP”) in respect of which an arbitration award was made on May 14, 20181. The arbitrator rejected the said complaint on the basis that the case was not suited to the INDRP, noting that arbitration under the INDRP is intended for clear cases of cybersquatting and not for resolving significant factual and legal issues which are better addressed through the courts. The Complainant also brought a complaint against the Respondent under the INDRP concerning the domain name in respect of which an arbitration award was made on June 18, 20182. The arbitrator rejected the said complaint on a similar basis to the reasoning expressed in the previous INDRP case.
The Panel notes that in addition to using the Parties’ submissions and evidence to compile the above factual background, the Panel also made limited factual research into matters of public record by way of (1) the official Indian Trademarks Registry website, to review certain of the Parties’ trademarks and trademark applications; (2) the National Internet eXchange of India’s .IN Registry website to review the INDRP decisions referred to; and (3) the Complainant’s website from which its press release at the Complainant’s Annex 5 was derived in order to determine the date of said release (see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) for a discussion of independent panel research). 5. Parties’ Contentions
The Panel first notes in this section that many of the Parties’ allegations and counter allegations appear to relate to the wider dispute between them and not directly to the disputed domain name. The Panel has therefore endeavored to summarize only the majority of the most relevant contentions to the matter in hand. A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that the Respondent provides or intends to provide goods and services associated with financial business, including equipment/platforms used to facilitate transfer of money, which is the Complainant’s core area of business. The Complainant states that the Respondent has adopted a deceptively similar mark to that of the Complainant, adding that the Respondent has no right nor has provided any reason why it would be entitled to adopt a “Master” formative mark for the same services as those of the Complainant, in circumstances where the Respondent had prior knowledge of the Complainant’s reputation in the corresponding field of financial business. The Complainant asserts that it is the prior adopter of “Master” formative marks both in India and globally. The Complainant contends that the use of the disputed domain name is an infringement of the Complainant’s trademark rights and constitutes passing off due to the Respondent’s misrepresentation.
The Complainant asserts that the Respondent has begun to advertise the launch of mobile point of sale systems, debit and credit cards despite the Respondent’s counsel informing the Complainant in corresponden