WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International Incorporated v. Unicorn Multi-Media, Inc.
Case No. D2007-0688
1. The Parties
Complainant is MasterCard International Incorporated, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
Respondent is Unicorn Multi-Media, Inc., Carson City, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Omnis Network.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2007. On May 10, 2007, the Center transmitted by email to Omnis Network a request for registrar verification in connection with the domain name at issue. On May 10, 2007, Omnis Network transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on May 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 6, 2007.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on July 10, 2007. 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 is a leading global payments solutions company providing a broad variety of innovative services in support of its global members’ credit, deposit access, electronic cash, business-to-business and related payment programs. 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 April of 1980, Complainant’s predecessor filed an application with the United States Trademark Office to register the trademark MASTERCARD. Since then, Complainant has gone to great lengths to protect the valuable goodwill in its name and mark MASTERCARD and has registered its mark in practically every nation around the world.
Complainant owns over 100 United States registrations and applications for marks incorporating the term MASTERCARD, as well as a number of registrations and applications in various jurisdictions worldwide.
In addition to its trademark registrations in numerous jurisdictions worldwide, 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, long prior to Respondent’s registration of the domain name at issue.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name is confusingly similar to Complainant’s MASTERCARD trademark, that Respondent lacks any legitimate right or interest in the domain name, and that Respondent has registered and used the domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith.
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”.
A. Identical or Confusingly Similar
The disputed domain name incorporates Complainant’s registered MASTERCARD trademark in its entirety. The domain name adds only the non-distinctive term “applications”. The most dominant feature of the domain name is Complainant’s registered MASTERCARD mark. The addition of a non-distinctive, descriptive or generic term, such as “applications”, does not change the overall impression of the mark.
Accordingly, the Panel finds that the domain name is identical and confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Respondent is not affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use the MASTERCARD mark.
Respondent is not generally known by the domain name and has not acquired any trademark or service mark rights in that name or mark. The Respondent uses the domain name in connection with a website which contains a link to “www.cP”, a hosting automation company.
Respondent is not offering goods or services, but is merely using the domain name to link to a different website which does not pertain to services offered by Complainant. It is therefore unnecessary for Respondent to use Complainant’s trademark as part of a domain name and the use is not nominative.
Rather, Respondent is using the domain name to divert visitors seeking Complainant’s websites. Respondent’s use of the domain name for such purposes is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. In failing to submit a response, moreover, Respondent has not put forward any evidence that would rebut Complainant’s case or support a finding that it has rights or legitimate interests in the domain name.
In light of the foregoing, the Panel finds that Respondent has no rights or legitimate interests with regard to the domain name at issue.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s website or location of a product or service on Respondent’s website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
Here, it is apparent that the domain name is being 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 profits from use of the domain name by receiving referral fees for redirecting Internet users from its site to other websites. Because Internet users will mistakenly go to Respondent’s site at the domain name when seeking Complainant’s site or goods and services sold under Complainant’s MASTERCARD mark, and because Respondent will then profit from the referrals of these users, Respondent’s use of the domain name is in bad faith.
Respondent acquired and began unauthorized use of the domain name 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 widespread substantial use of its MASTERCARD mark and domain name for many years. The widespread fame of the MASTERCARD mark in the credit card industry 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 trademark rights. There is no plausible reason for Respondent’s selection of the domain name other than as a deliberate attempt to profit from the confusion generated with Complainant’s MASTERCARD mark.
Accordingly, the Panel finds the disputed domain name to be registered and used in bad faith.
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.
Lynda J. Zadra-Symes
Sole Panelist
Dated: July 26, 2007
Full & Egal Universal Law Academy