WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International Incorporated v. Keyword Marketing, Inc.
Case No. D2007-1138
1. The Parties
The Complainant is MasterCard International Incorporated, of Purchase, New York, of United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, of United States of America.
The Respondent is Keyword Marketing, Inc., of Charlestown, West Indies, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2007. On August 3, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On August 6, 2003, BelgiumDomains, LLC 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 the Respondent of the Complaint, and the proceedings commenced on August 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2007.
The Center appointed Amarjit Singh as the sole panelist in this matter on September 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.
The Panel considers that according to paragraph 11 of the Rules, the language of the proceedings be English.
4. Factual Background
4.1 MasterCard is a leading global payments solutions company providing a broad variety of innovative services in support of their global members’ credit, deposit access, electronic cash, business-to-business and related payment programs. MasterCard, 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, MasterCard manages a family of famous and widely accepted payment card brands including MASTERCARD, MAESTRO and CIRRUS and serves financial institutions, consumers and businesses in over 210 countries and territories.
4.2 In April of 1980, MasterCard filed an application with the United States Patent and Trademark Office to register the trademark MASTERCARD. MasterCard owns trade mark registrations for the mark MASTERCARD in practically every jurisdiction in the world that recognizes such rights and grants the ability to register marks, including, but not limited to Afghanistan, Argentina, Australia, Austria, Bangladesh, Belize, Benelux, Brazil, Canada, Chile, China, Columbia, Croatia, CTM (European Community Trademark), Cuba, Czech Republic, Denmark, Ecuador, Egypt, Finland, France, Great Britain, Germany, Greece, Hong Kong, Hungary, India, Indonesia, Iran Ireland, Israel, Israel, Italy, Japan, Jordan, North Korea, South Korea, Kuwait, Kyrgyzstan, Laos, Lotvia, Lebanon, Mexico, Mozambique, Netherlands, Antilles, New Zealand, Nicaragua, Nigeria, Norway, Oman, Pakistan, Panama, Philippines, Poland, Portugal, Qatar, Romania, Russia, South Africa, Saudi Arabia, Singapore, Slovenia, Slovak Republic, Spain, Sweden. MasterCard had also established rights in the MASTERCARD PREPAID SERVICES in the United States and the European Community.
4.3 In addition to international trademark registrations, MasterCard 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.
4.4 As a result of the sale and promotion of its many MASTERCARD services and products, the supervision and control exercised by MasterCard over the nature and quality of these services and products, and the extensive advertising, sale and public acceptance thereof, the MASTERCARD mark has become widely known symbolizing an enormous amount of goodwill. The MASTERCARD mark and variants thereof are associated with the financial services and related goods and services offered by MasterCard.
4.5 MasterCard owns numerous U.S. registrations for its MASTERCARD mark listed in Exhibit ‘F’ to the complaint, of which the earliest registration relate back to the year 1982 (U.S. Registration No.1,186,117) in respect of financial services namely, providing bank card services. Additionally MasterCard owns registration of MASTERCARD PREPAID SERVICES in the U.S. (Reg. No. 3,108,620) and the European Community (Reg. No. 3,412,327). Finally, MasterCard owns over 100 U.S. registrations and applications for other marks incorporating MASTERCARD with other terms including those listed in Exhibit ‘H’ to the complaint as well as a number of registrations and applications in various jurisdictions worldwide.
4.6 According to the Whois record, the domain name was registered on November 28, 2006.
5. Parties’ Contentions
A. Complainant
5A.1 MasterCard owns the MASTERCARD mark by virtue of long and extensive worldwide use and ownership of numerous trademark registrations for the marks. MasterCard also owns the MASTERCARD PREPAID SERVICES mark by virtue of extensive worldwide use and ownership of trademark registrations for the mark.
5A.2 MasterCard is a leading global payments solutions company providing a broad variety of innovative services in support of their global members’ credit, deposit access, electronic cash, business-to-business and related payment programs. MasterCard, 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, MasterCard manages a family of famous and widely accepted payment card brands including MASTERCARD, MAESTRO and CIRRUS and serves financial institutions, consumers and businesses in over 210 countries and territories.
5A.3 The Disputed Domain Name is confusingly similar to the MASTERCARD mark because it incorporates the entirety of MasterCard’s MASTERCARD mark.
5A.4 The Disputed Domain Name adds only the non-distinctive term “prepaid” to the MASTERCARD mark. The most dominant feature of the domain name is Complainant’s famous and registered MASTERCARD mark.
5A.5 In addition, the Disputed Domain Name is also confusingly similar to the MASTERCARD PREPAID SERVICES mark because it incorporates the first two words of MasterCard’s MASTERCARD PREPAID SERVICE mark.
5A.6 Therefore, the Disputed Domain Name is identical or confusingly similar to marks owned by Complainant under the Policy.
5A.7 Respondent is not affiliated or related to MASTERCARD in any way, nor is Respondent licensed by MasterCard or otherwise authorized to use the MASTERCARD or MASTERCARD PREPAID SRVICES marks.
5A.8 Respondent is not generally known by the Disputed Domain Name, and has not acquired any trademark or service mark rights in that name or mark. Instead, the Respondent uses the Disputed Domain Name in connection with a website that contains links to websites offering services of MasterCard and MasterCard’s competitors.
5A.9 Respondent is using the Disputed Domain Name to intentionally trade on the fame and reputation of MasterCard’s MASTERCARD marks. This use does not satisfy the test for bona fide use.
5A.10 In the instant case, the Respondent is not offering the goods or services at issue, but is merely using the domain name to list links to different websites, some of which are direct competitors of the Complainant. Even though some of those links pertain to Complainant, many do not. It is, therefore, necessary for the Respondent to use the MASTERCARD mark as part of its domain name or to use part of MASTERCARD PREPAID SERVICES as its domain name.
5A.11 Using the Complainant’s MASTERCARD and MASTERCARD PREPAID SERVICES marks to bring Internet users to websites that contain links to both the MasterCard’s products and services and the products and services of MasterCard’s competitors does not constitute a bona fide offering of goods or services.
5A.12 Respondent has registered and is using the Disputed Domain Name to unlawfully divert and siphon off visitors seeking Complainant’s MASTERCARD websites. Respondent’s use of the Disputed Domain Name for such a purpose is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.
5A.13 Respondent does not have rights or a legitimate interest in the Disputed Domain Name under the Policy.
5A.14 Respondent acquired and began unauthorized use of the Disputed Domain Name long after MasterCard’s adoption, use and registration of its MASTERCARD and MASTERCARD PREPAID SERVICES marks. In addition, at the time the Disputed Domain Name was registered, MasterCard had made substantial use of its MASTERCARD mark and domain name as well as other domains names incorporating the MASTERCARD mark.
5A.15 The Disputed Domain Name offers links to services directly competing with MasterCard’s services. Such use of the MASTERCARD mark is clearly a bad faith use.
5A.16 Respondent’s Disputed Domain Name likely generates revenue for the Respondent when confused consumers “click through” to sites offering the goods and services of both MasterCard and MasterCard’s direct competitors. Use of the Complainant’s MASTERCARD mark to generate “click through” revenue in this manner is in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions. The claims made by the Complainant, therefore, remain un-rebutted and un-challenged.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted. It is therefore appropriate, to note that merely because Respondent has not made a response to the Complaint does not avoid the necessity of examining the issues in the light of the evidence.
Paragraph 4 of the policy provides that the onus of proof is on the Complainant. As the proceeding is a civil one, the standard of proof is on the balance of probabilities.
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names of the Respondent be transferred to the Complainant or cancelled:
(i) The domain names are identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
That being so, the Panel will now proceed to enquire if the Complainant has discharged its onus to prove each of the three elements specified in paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
6A.1 The Complainant is the owner of the registered trade mark / service mark MASTERCARD in practically every jurisdiction in the world as is established from the documents filed as Exhibits ‘E’, ‘F’, ‘G’ & ‘H’ to the Complaint. In addition, The Complainant holds registration of MASTERCARD PREPAID SERVICES in the United States and the European Community. There are over hundred U.S. registrations and applications for the marks incorporating MASTERCARD. The Complainant has also registered numerous domain names containing the name and mark MASTERCARD or variants thereof. Printouts from the MASTERCARD website at “www.” explaining the history of the business of Complainant is produced as Exhibit D.
6A.2 The Complainant has thus discharged its onus in establishing its proprietary rights in the name and mark MASTERCARD. The Complainant has also succeeded in establishing its right to the domain names consisting of the mark MASTERCARD or variants thereof including , , , , and .
6A.3 The Disputed Domain Name is nearly identical to the Complainant’s U.S. registration no. 3,108,620 (MASTERCARD PREPAID SERVICES) and the European Community registration no. 3,412,327.
6A.4 The Disputed Domain Name is also confusingly similar to the MASTERCARD mark because it incorporates the entirety of MasterCard’s MASTERCARD mark. See eBay Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068 (finding that the domain name incorporated the complainant’s mark in its entirety and holding it to be confusingly similar to complainant’s EBAY mark), see also Gilead Science, Inc. v. Kumar Patel, WIPO Case No. D2005-0831 (finding confusingly similar to complainant’s GILEAD SCIENCES name and mark); Auxilium Pharmaceuticals. Inc. v. Kumar Patel, FA 642141 (NAF April 6, 2006) (finding confusingly similar to complainant’s AUXILIUM name and mark)
6A.5 The Disputed Domain Name adds only the non-distinctive term “prepaid” to the MASTERCARD mark. The most dominant feature of the domain name is the Complainant’s MASTERCARD mark. Prior UDRP panels have held that the addition of a non-distinctive, descriptive or generic term like “prepaid” does not change the overall impression of a mark. See, e.g., MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050 (finding the addition of the generic term “Offers” to the domain is insufficient to avoid confusion); MasterCard International Incorporated v. Organization Contact/, WIPO Case No. D2007-0691 (finding the addition of the generic term “apply” to MASTERCARD does not change the overall impression of the mark and that the domain is confusingly similar to MasterCard’s MASTERCARD mark.
6A.6 For the above reasons, the Panel comes to the conclusion that the first element under the Policy — that the domain name registered by the Respondent is identical or confusingly similar to the trademarks in which the Complainant has rights — has been established.
B. Rights or Legitimate Interests
6B.1 Paragraph 4(c) of the Policy lists the following three non-exclusive circumstances which may demonstrate the Respondent’s rights or legitimate interests in a the Disputed Domain Name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
6B.2 As to the circumstances under paragraph 4(c)(i) of the Policy, the Complainant has not consented to the Respondent’s use of the Disputed Domain Name, which incorporates the Complainant’s trademark MASTERCARD.
6B.3 The Respondent is using the Disputed Domain Name by providing links from its website to multiple other websites concerning competitive businesses, which in the Panel’s view shows that Respondent was well aware of the Complainant as well as of its products and services, and, instead of making a bona fide use of the domain name, rather intends to freeride on the fame and goodwill of the Complainant and its trademarks.
6B.4 Furthermore, none of the other circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, appear to be present. The sole purpose of registering the domain names at issue by the Respondent seems to have been to cause confusion and divert the legitimate business of Complainant to the Respondent or to the Complainant’s competitors.
6B.5 The Respondent is thus using the above domain name to divert Internet traffic to unrelated websites offering competitive or at least similar goods and services to Mastercard’s by exploiting the confusion with the widely known MASTERCARD trademarks.
6B.6 The registration and use of the Disputed Domain Name may also tarnish and dilute the MASTERCARD mark by confusing consumers and interferes with MASTERCARD’s business by frustrating attempts by Internet users to reach MASTERCARD’s official websites.
6B.7 The Respondent is not affiliated or related to the Complainant in any way, nor is Respondent licensed by MasterCard or otherwise authorized to use the MASTERCARD or MASTERCARD PREPAID SERVICES marks. (See Telstra Corp. Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 13, 2000) (respondent had no rights or legitimate interests to use domain name because respondent was not licensed or otherwise permitted to use complainant’s trademark); Alta Vista Company v. Jean-Daniel Gamanche, Case No. FA 95249 (NAF August 17, 2000) (respondent was not licensed to use complainant’s mark and therefore had no rights or legitimate interests in the domain name).
6B.8 The Respondent is not generally known by the Disputed Domain Name, and has not acquired any trademark or service mark rights in that name or mark. (See Gallup v. Amish Country Store, Case No. FA 96209 (NAF January 23, 2001) (respondent does not have rights in domain name incorporating another’s mark when respondent is not known by that mark). Instead, the Respondent uses the Disputed Domain Name in connection with a website that contains links to websites offering services of MasterCard and MasterCard’s competitors.
6B.9 Thus, the Respondent has registered and is using the Disputed Domain Name to unlawfully divert and siphon off visitors seeking Complainant’s MASTERCARD websites. Respondent’s use of the Disputed Domain Name for such a purpose is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. (See Nat’l Ass’n of Professional Baseball Leagues v. Zuccarini, WIPO Case No. D2002-1011 (January 21, 2003).
6B.10 The second element of the Policy has been established.
C. Registered and Used in Bad Faith
6C.1 For a complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.
6C.2 Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of our documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
6C.3 Under paragraph 4(b)(iv) of the Policy, bad faith can be shown by circumstances indicating that Respondent deliberately used the domain name for commercial gain to divert Internet users based on a likelihood of confusion with the Complainant’s mark.
6C.4 Here, it is apparent that the Disputed 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. The Disputed Domain Name offers links to services directly competing with MasterCard’s services. Such use of the MASTERCARD mark is clearly a bad faith use in accordance with the Policy paragraph 4(b)(iv). See MasterCard International Incorporated v. ZJ,WIPO Case No.D2007-0687 (finding the domain which is associated with a website carrying at least one hyperlink to a competitor of MasterCard is proof of bad faith); MasterCard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050 (finding the use of domain name which resolved to a page which offered links to competing financial services websites was proof of bad faith).
6C.5 According to the Whois record, the domain name was registered on November 28, 2006, subsequent to MasterCard’s adoption and registration of the widely MASTERCARD mark and subsequent to MasterCard’s adoption and registration of the MASTERCARD PREPAID SERVICES mark. Complainant, Exhibit A. Respondent uses the Disputed Domain Name in connection with a searchable portal website displaying commercial links to the Complainant as well as to the Complainant’s competitors. A copy of the screen shots of the website located at the Disputed Domain Name is attached to the Complaint as Exhibit I.
6C.6 The Respondent acquired and began unauthorized use of the Disputed Domain Name long after MasterCard’s adoption, use and registration of its MASTERCARD and MASTERCARD PREPAID SERVICES marks. In addition, at the time the Disputed Domain Name was registered, MasterCard had made substantial use of its MASTERCARD mark and domain name as well as other domains names incorporating the MASTERCARD mark. Thus, the Respondent most likely was aware of MasterCard’s rights.
6C.7 The widespread use and fame of the MASTERCARD mark in the credit card industry, the inherent distinctiveness of the mark, and MasterCard’s prior domain name registrations and trademark registrations, lead to the necessary conclusion that Respondent registered and is using the Disputed Domain Name with actual knowledge of MasterCard’s rights. Ticketmaster Corp. v. Spider Web Design, Inc., WIPO Case No. D2000-1551 (February 4, 2001) (“active or constructive knowledge of complainant’s rights in trademarks is a factor supporting bad faith”). There is no plausible reason for Respondent’s selection of the Disputed Domain Name other than as a deliberate attempt to profit unfairly from confusion with MasterCard’s MASTERCARD mark.
6C.8 Moreover, the Respondent has established a pattern of registering domain names comprised of other parties’ trademarks, which is further evidence of Respondent’s bad faith. In at least three recent decisions, UDRP panels have ordered Respondent to transfer domain names which contained an additional non-distinctive, descriptive or generic term combined with a third party’s trademark. See, e.g. Sanofi-Aventis and Aventis, Inc. v. Web Advertising, Corp. and Keyword Marketing, Inc.,WIPO Case No. D2007-0678 (July 4, 2007) (ordering the transfer of , , and other domains to the owner of the marks ALLEGRA and AMBIEN);) E, Inc. v. Web Advertising, Corpo / Keyword Marketing, Inc.,WIPO Case No. D2006-1380 (December 25, 2006) (ordering the transfer of to the owner of the EDMUND’S) Giata Gesellschaft fur die Entwicklung under Vermarktunginteraktiver Tourismusanwendungen mbH v. Keyword Marketing Inc., WIPO Case No. D2006-1137 (November 9, 2006) (ordering the transfer of to the owner of the mark GIATA).
6C.9 Such a pattern of behavior is further evidence of Respondent’s bad faith in registering and using a domain name that is confusingly similar to the MASTERCARD mark. See Juventus F.C. SpA. v. Mythos Srl,WIPO Case No. D2001-0583 (June 20, 2001) (pattern of registering domain names comprised of others’ marks is evidence of bad faith); Toyota Jidosha Kabushiki Kaisha d/b/a/ Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802; Enterprise Rent-A-Car Co. v. URLPro, FA 324973 (NAF October 28, 2004) (pattern of registering domain names that incorporate famous marks and names of other entities evidences bad faith registration and use pursuant to the Policy 4(b)(ii)).
6C.10 The Disputed Domain Name likely generates revenue for the Respondent when consumers “click through” to sites offering the goods and services of both MasterCard and MasterCard’s direct competitors. Use of the Complainant’s MASTERCARD mark to generate “click through” revenue in this manner indicates bad faith. DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. LaPorte Holdings, Inc.WIPO Case No. D2005-0070 (April 13, 2005).
6C.11 The Panel therefore concludes on the basis of evidence on record and in the absence of a rebuttal by the Respondent, that the Respondent has registered and is using the Disputed Domain Name 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.
Amarjit Singh
Sole Panelist
Dated: September 24, 2007
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