WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mastercard International Incorporated v. Eric Hochberger
Case No. D2006-1050
1. The Parties
The Complainant is Mastercard International Incorporated, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is Eric Hochberger, Michigan, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with R.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2006. On August 18, 2006, the Center transmitted by email to R a request for registrar verification in connection with the domain name at issue. On August 22, 2006, R transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August�23,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September�12,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September�13,�2006.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September�27,�2006. 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
Complainant, through its predecessors-in-interest, has been in the payment card business since 1966 and has operated under the name and mark MASTERCARD since at least as early as 1980.
In addition to its trademark registrations, Complainant has registered numerous domain names containing the name and mark MASTERCARD or variants thereof, including, inter alia, , , , , , and . The earliest of these registered domain names, , was registered on July�27,�1994.
MasterCard owns at least twelve (12) U.S. registrations for its MASTERCARD mark, the earliest of these registrations is Registration No. 1,186,117 for the mark MASTERCARD, registered on January 12, 1982.
MasterCard also owns over 100 additional U.S. registrations and applications for other marks incorporating the term MASTERCARD, as well as numerous registrations and applications in various jurisdictions worldwide.
According to the Whois record, the domain name was registered on November 6, 2003.
On August 10, 2005, MasterCard sent a letter to Respondent by email and first class mail advising it of MasterCard’s rights in the MASTERCARD marks and demanding that the Infringing Domain Name be transferred to MasterCard.
5. Parties’ Contentions
A. Complainant
With respect to Paragraph 4(a)(i) of the Policy, Complainant contends that:
Complainant owns the MASTERCARD mark by virtue of long and extensive worldwide use, and ownership of trademark registrations for the marks in various countries.
The Domain Name is confusingly similar to the MASTERCARD mark because the Domain Name incorporates the entirety of Complainant’s MASTERCARD mark and adds only the non-distinctive term “offers.”
The most dominant feature of the domain name is Complainant’s famous and registered MASTERCARD mark.
Therefore, the Infringing Domain Name is identical or confusingly similar to a mark owned by Complainant.
With respect to Paragraph 4(a)(ii) of the Policy, Complainant contends that:
Respondent is not affiliated or related to Complainant in any way.
Complainant has not licensed or otherwise permitted Respondent to use the MASTERCARD mark in connection with the Respondent’s website.
Respondent is not generally known by the Domain Name, and has not acquired any trademark or service mark rights in that name or mark.
Respondent is not offering the goods or services at issue, but is merely using the domain name in connection with a website displaying information on the Complainant’s services as well as commercial links to different websites, some of which are direct competitors of the Complainant.
Using the Complainant’s MASTERCARD Mark to bring Internet users to a website that contains links to both the Complainant’s products and the products of the Complainant’s competitors does not constitute a bona fide offering of goods or services.
Respondent’s use of the Domain Name to intentionally attract, for commercial gain, Internet users to a website containing links to businesses and products that compete with the Complainant, also creates a likelihood of confusion with the Complainant’s use of the MASTERCARD marks.
Thus, Respondent has registered and used the Infringing Domain Name to unlawfully divert and siphon off visitors seeking Complainant’s MASTERCARD websites.
Therefore, Respondent does not have rights or a legitimate interest in the Domain Name.
With respect to Paragraph 4(a)(iii) of the Policy, Complainant contends that:
The Domain Name is deliberately used for commercial gain to attract Internet users to Respondent’s website based on a likelihood of confusion with Complainant’s MASTERCARD mark.
Respondent acquired and began unauthorized use of the Domain Name for commercial benefit long after Complainant’s adoption, use and registration of its MASTERCARD mark. In addition, at the time the Domain Name was registered, Complainant had made substantial use of its MASTERCARD mark and its domain name.
The widespread use and fame of the MASTERCARD mark in the credit card industry, the inherent distinctiveness of the mark, and Complainant’s prior domain name registrations and trademark registrations, lead to the necessary conclusion that Respondent registered and used the Domain Name with actual knowledge of Complainant’s rights.
There is no plausible reason for Respondent’s selection of the Infringing Domain Name other than as a deliberate attempt to profit unfairly from confusion with MasterCard’s MASTERCARD mark.
Such conduct demonstrates bad faith registration and use of the Infringing Domain Name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).
A. Identical or Confusingly Similar
Given the 26 years of use of the MASTERCARD mark and the existence of the United States and foreign trademark registrations for MASTERCARD and other registrations incorporating the MASTERCARD mark, the Panel finds that Complainant has trademark rights in the MASTERCARD mark.
The Panel also finds that is confusingly similar to the MASTERCARD marks since the dominant portion of Complainant’s registered marks and of the disputed Domain Name is “MASTERCARD.” The Domain Name differs from Complainant’s registered MASTERCARD marks only in that it contains the generic element “offers.” The addition of a generic term such as “offers” is insufficient to avoid confusion. See Chanel, Inc. AG v. Designer Exposure, WIPO Case No.�D2000-1832 (transfer of two domain names, including ) and Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896 (“if the addition is a term associated with the business of the Complainant… it can even add to the similarity between the domain name and the trademark in question”).
The Panel finds that the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights. Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
With respect to 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
With respect to 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the domain name.
With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the Domain Name and has not used the Domain Name, or a name corresponding to it, in connection with a bona fide offering of goods or services. At the time the UDRP complaint was filed, the Domain Name provided, in part, links to websites that were in direct competition with Complainant.
Moreover, the Domain Name as of the date of this decision still resolves to a page that displays links to Complainant’s competitors. This is not a bona fide use. TM Acquisition Corp. v. Sign Guards, FA132439 (National Arbitration Forum, December�31, 2002). (Finding that the Respondent’s use of complainant’s marks to divert Internet users to a website which displayed a series of links, some of which were links to sites of complainant’s competitors, was not a bona fide offering of goods or services).
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph�4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO�Case�No. D2003-0455 (Transfer); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (Transfer).
The Panel finds that the circumstances enumerated above establish a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name at issue.
C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy parargraph 4(b)(iv).
The Panel finds that the Respondent registered the Domain Name in bad faith. Complainant’s allegations of bad faith are not contested. The trademark registrations of record confirm Complainant’s allegations that it had long been using its MASTERCARD marks when the Domain Name that is the subject of this Complaint was registered. The Panel finds persuasive Complainant’s allegation that there is no plausible reason for Respondent’s selection of the Domain Name other than as a deliberate attempt to profit unfairly from confusion with MasterCard’s MASTERCARD mark.
Under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Policy � 4(b)(iv). Respondent used the Complainant’s known trademark in the financial services industry to attract users to Respondents’ website where they are offered links to competing financial services websites. This is evidence of Respondent’s intent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website or of a product or service on the Respondents’ website.
At the time the Complaint was filed and at the time of this Decision, the Domain Name resolves to a page that offers visitors links to sites of other companies, including Complainant’s competitors. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan,WIPO Case No. D2004-0537 (“the Panel is persuaded that Respondent’s registration and use of the Disputed Domain Name for re-directing Internet users, particularly customers and potential customers of Complainant, from Complainants’ website to the website of OfficeMax, a company which directly competes with Complainant, constitutes bad faith and use. Prior WIPO UDRP decisions also support this conclusion.”) See also E, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Lawrence K. Nodine
Sole Panelist
Dated: October 11, 2006
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