WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions
Case No. D2007-1140
1. The Parties
The Complainant is MasterCard International Incorporated, Purchase, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is Michael J Yanda, Indy Web Productions, Charlestown, Indiana, United States of America.
2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , (the “Domain Names”) are registered with Direct Information Pvt Ltd d/b/a PublicDomainR.
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 Direct Information Pvt Ltd d/b/a PublicDomainR a request for registrar verification in connection with the domain names at issue. On August 6, 2007, Direct Information Pvt Ltd d/b/a PublicDomainR transmitted by email to the Center its verification response. On August 10, 2007, the Center notified the Complainant that the Complaint was administratively deficient because the Complaint did not reflect the entire name of the Respondent as shown in the publicly available WhoIs data. In response to the notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 14, 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 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2007.
The Center appointed Michelle Brownlee as the sole panelist in this matter on September 13, 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 decision due date was extended to October 8, 2007.
4. Factual Background
The Complainant owns numerous registrations for the trademarks MASTERCARD and PAYPASS in many countries throughout the world in connection with financial services.
5. Parties’ Contentions
A. Complainant
The Complainant has used the MASTERCARD trademark since at least as early as 1980 in connection with payment card services. The MASTERCARD trademark has been extensively advertised and is a famous mark that is recognized worldwide.
The Complainant has used the PAYPASS trademark since 2002 in connection with a wireless product that allows users to tap or wave a device instead of having to swipe a payment card. The Complainant has registered the trademark PAYPASS in numerous countries around the world.
The Respondent is using the Domain Names in connection with a web site that contains links to services of the Complainant and the Complainant’s competitors.
The Complainant submits that the Domain Names are confusingly similar to the MASTERCARD and PAYPASS trademarks, that the Respondent does not have any rights or legitimate interests in the Domain Names, and that the Respondent has registered and is using the Domain Names in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain names , , , , , , , and , pair the Complainant’s well-known MASTERCARD trademark with other terms. Use of the Complainant’s famous MASTERCARD trademark with other terms such as “offers” or “website” is confusingly similar to the MASTERCARD mark, as it is likely to lead Internet users to believe that the domain names are affiliated with the Complainant. Other panels have found confusing similarity under similar circumstances. See, e.g., Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022 ( and confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer,WIPO Case No. D2001-0032 ( and confusingly similar to LEXUS).
The domain names , , and pair the Complainant’s PAYPASS trademark with other terms. For the same reasons as discussed above, these domains should be viewed as confusingly similar to the Complainant’s PAYPASS trademark.
Two of the domains, and , use both the MASTERCARD and PAYPASS marks together. These combinations of the Complainant’s trademarks would certainly be likely to cause confusion as to the Complainant’s affiliation.
The domain names , , and include a “www” before the Complainant’s PAYPASS trademark in one case and the MASTERCARD mark in the other two cases. Pairing of the PAYPASS mark with the letters “www” in the domain is likely to appear to Internet users as though the domain name is identical to the Complainant’s trademark, because most URLs include “www” followed by a period before the second level domain name, and Internet users would most likely not notice the omission of the period. Other panels have found confusing similarity under similar circumstances. See, e.g., Reuters Limited v. Global 2000, Inc.,WIPO Case No. D2000-0441. The two other domains that include “www” before a compound term that includes the MASTERCARD trademark is also confusingly similar to MASTERCARD for the same reasons as discussed above.
Accordingly, the Panel finds that the Domain Names are confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate a right or legitimate interest in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
The Respondent has not provided any evidence of rights or legitimate interest in the Domain Names. The Respondent does not appear to be known by “MasterCard” or “PayPass” and his use of the Domain Names simply to provide links to web sites (a practice that is typically engaged in to collect click-through referral fees) cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use. See PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the 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 that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent’s use of the Domain Names to earn referral fees by linking to other web sites attracts Internet users to the Respondent’s site by creating confusion as to source and results in commercial gain to the Respondent.
The Complainant has provided ample evidence that the Respondent has engaged in a pattern of this type of activity, since 16 domain names are the subject of the Complaint. Moreover, the Complainant has submitted evidence that the Respondent has also registered a number of domains that incorporate the trademark of the Complainant’s main competitor, VISA. Accordingly, the Complainant has demonstrated that the Respondent has repeatedly engaged in bad faith registration and use of domain names, which serves to reinforce the Panel’s decision that the Respondent’s use and registration in this case is in bad faith in violation of paragraph 4(b)(iv) of the Policy.
It also bears mention that the Respondent’s “typosquatting” use of a common typographical error that Internet users make when they are likely trying to find a web site associated with the Complainant to direct traffic to another site is also evidence of bad faith, even though this activity is not covered by the enumerated factors in paragraph 4(b). See, e.g., The Nasdaq Stock Market, Inc. v. Shawn Cain d/b/a Star Inc.,WIPO Case No. D2002-1125.
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, , , , , , , , , , , , , , , , , be transferred to the Complainant.
Michelle Brownlee
Sole Panelist
Dated: October 8, 2007
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