WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International Incorporated v. Domain Services Pty Ltd., Buy This Domain
Case No. D2007-1122
1. The Parties
The Complainant is MasterCard International Incorporated, of Purchase, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, of United States of America.
The Respondent is Domain Services Pty Ltd., Buy This Domain, of Melbourne, Victoria, Australia.
2. The Domain Name and Registrar:
The disputed domain names and are registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2007. On August 2, 2007, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain names at issue. On August 2, 2007, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 9, 2007. The Center verified that the Complaint together with the amendment to 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 9, 2007. A Request for Suspension was filed by the Complainant on August 27, 2007, and a Notification of Suspension was issued on August 28, 2007. The Complainant then filed a Request for Reinstatement of Proceedings on September 20, 2007 and a Notification of Reinstatement of Proceedings was issued on September 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2007.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on October 4, 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
The Complainant is a financial services company providing a wide variety of services including members’ credit cards, deposit access, electronic cash, business-to-business and related payment programs. The Complainant, through its predecessors in title, has been operating in the payment card business since at least as early as 1966 and has operated under the name and trademark MASTERCARD since at least as early as 1980. The Complainant offers payment card services to financial institutions, consumers and businesses in over 210 countries and territories around the world.
The Complainant owns a U.S. trademark registration (No. 1,257,853) for the trademark MASTERCARD, which was registered on August 23, 1983. The Complainant also owns many U.S. trademark registrations which include as a first element the words MASTERCARD. The Complainant has also registered the MASTERCARD trademark in many countries around the world, including sixteen trademark registrations in Australia, where the Respondent resides.
The Complainant owns numerous domain names containing the trademark MASTERCARD, including: , , , , , and . The domain name was registered on July 27, 1994.
The Respondent registered the domain name on July 5, 2004 and the domain name on September 9, 2004. At the date of the Complaint, the Respondent was operating a website which provided links to the Complainant’s website and websites of its competitors.
5. Parties’ Contentions
A. Complainant
(a) Identical or Confusingly Similar
The Complainant contends that the domain names and are confusingly similar to the Complainant’s registered trademark MASTERCARD.
The Complainant submits that the domain name is confusingly similar because it is a close misspelling of the trademark MASTERCARD. The only alteration is the addition of the letter “s” between the words “master” and “card”. The Complainant contends the mere of misspelling a trademark does not serve to distinguish the domain name from the Complainant’s trademark.
The Complainant further submits that the domain name is confusingly similar because it incorporates the trademark MASTERCARD in its entirety and only differs by the addition of the generic term “services”. The Complainant submits that the addition of a descriptive term does not serve to distinguish the domain name from its trademark.
(b) Rights or Legitimate Interests
The Complainant contends that the Respondent is not affiliated or related to its trademark or business, and is not a licensee or otherwise authorized to use the MASTERCARD trademark. The Complainant submits that the Respondent is not generally known by the subject domain names, and that the Respondent has not acquired any trademark rights or other service mark rights in the domain names. The Complainant’s rights in the MASTERCARD trademark pre-date the registration of the domain names and by the Respondent by more than 24 years. The Complainant also submits that the Respondent is not using the domain names in a manner which offers bona fide goods and/or services. The Complainant contends that the Respondent is operating websites that provides links to websites of its competitors for the purpose of monetary gain. The Complainant contends that the Respondent has not established any legitimate right or interest in the disputed domain names.
(c) Registered and Used in Bad Faith
The Complainant contends that the domain names and have been registered and are being used in bad faith based on the following factors: (i) Respondent’s knowledge of the Complainant’s use of the MASTERCARD trademark at the time of registration of the dispute domain names; (ii) Respondent’s registration of confusingly similar domain names; and (iii) Respondent’s use of confusingly similar domain names to operate websites that provide links to websites of competitors of the Complainant for purposes of monetary gain.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the MASTERCARD trademark, by virtue of U.S. Registration No. 1,257,853, which was attached to the Complaint.
The Panel finds that the domain names and are confusingly similar to the Complainant’s registered MASTERCARD trademark.
The domain name is an obvious misspelling of the Complainant’s trademark, by the addition of the letter “s” between the words “master” and “card”. Panels have consistently decided that evident typosquatting of this nature does not serve to distinguish a domain name from a trademark. (See Volkswagen AG v. Digi Real Estate Foundation, WIPO Case No. D2005-0952 and America Online, Inc. v. John Zuccarini,WIPO Case No. D2000-1495).
The Panel also finds that the domain name is confusingly similar because the domain name replicates the Complainant’s MASTERCARD trademark in its entirety, and the addition of the generic or descriptive term “services” does not serve to distinguish the domain name from the trademark. The addition of such generic words does not distinguish a domain name from a complainant’s trademark. (See MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050; MasterCard International Incorporated v. Organization Contact/,WIPO Case No. D2007-0691).
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds no evidence before it that the Respondent ever had any legitimate right or interest in the domain names in dispute. The Respondent registered the domain names 24 years after the Complainant had commenced use of its MASTERCARD trademark, and 10 years after the registration of the Complainant’s domain name. The Panel finds no evidence that the Respondent was ever known by the disputed domain names. The Panel accepts the Complainant’s assertion that it never licensed or authorized the Respondent to use the MASTERCARD trademark. The Panel further accepts that the Respondent is not affiliated or related to the Complainant in any manner.
The Panel finds that the Respondent is not using the domain names in connection with a bona fide offering of goods and services. The Complainant has filed evidence in this proceeding showing that the Respondent is operating websites in connection with the disputed domain names which provide links to websites of Complainant’s competitors. The operation of a “click-through” site is not evidence of a bona fide offering of goods and services. (See MasterCard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050).
The Panel is therefore satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain names. Once a complainant has made this prima facie showing, the Respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270).
As the Respondent has not filed any evidence in response, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The uncontested evidence shows that the Complainant’s trademark MASTERCARD is distinctive and well-known in the U.S. and internationally, including Australia, the country where the Respondent resides. The Panel is therefore prepared to infer that the Respondent had actual knowledge of the Complainant’s trademark rights when it registered the domain names and .
The Panel is also prepared to find that the Respondent registered the disputed domain names and is using the domain names for the operation of click-through websites which provide links to websites of competitors of the Complainant. The evidence shows that the Respondent was not authorized or licensed to use the Complainant’s trademark and the Respondent did not file any response contesting this claim. The Respondent appears to have deliberately traded on the goodwill of the Complainant, by attracting internet users and diverting internet traffic intended for the Complainant’s website to the Respondent’s website for the purpose of monetary gain. Prior Panels have recognized this type of conduct as evidence of bad faith (see MasterCard International Incorporated v. ZJ,WIPO Case No. D2007-0687 and MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050).
For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of 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 names, and be transferred to the Complainant
Christopher J. Pibus
Sole Panelist
Dated: October 18, 2007
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