WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mastercard International Incorporated v. Total Card Inc.
Case No. D2007-1411
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 Total Card Inc., South Dakota, United States of America.
2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2007. On September 26, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September 26, 2007, Network Solutions, 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 Respondent of the Complaint, and the proceedings commenced on October 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 26, 2007.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on November 14, 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 an international payments solutions company providing a range of services in support of its members’ credit, deposit access, electronic cash, business-to-business and related payment programs.
Complainant owns 12 registrations for the mark MASTERCARD on the Principal Register of the United States Patent and Trademark Office (USPTO), including the following:
Reg. No. Reg. Date
1,257,853 November 15, 1983
1,186,117 January 12, 1982
1,292,519 August 28, 1984
1,365,901 October 15, 1985
1,398,272 June 24, 1986
1,604,606 July 3, 1990
1,814,279 December 28, 1993
1,738,276 December 8, 1992
1,890,786 April 25, 1995
2,168,736 June 30, 1998
2,077,221 July 8, 1997
2,212,783 December 22, 1998
Complainant owns USPTO registrations for numerous other trade and service marks containing the words “Master Card” in combination with other words. In addition, Complainant has registered the MASTERCARD mark in numerous countries around the world and the European Community.
Complainant has registered various domain names using the words “MasterCard”, including , which it registered on July 27, 1994.
Respondent registered the Domain Name on April 26, 2007.
The Domain Name resolves to a website which displays searchable portal websites displaying commercial links to Complainant and to Complainant’s competitors, including VISA, Discover, and American Express.
5. Parties’ Contentions
A. Complainant
Complainant contends that it, and its predecessors in interest, operated under the name and mark MASTERCARD since at least as early as 1980. The company manages a family of famous and widely accepted payment card brands, including MASTERCARD. It serves financial institutions, businesses, and consumers in over 210 countries and territories. Its well known “Priceless” advertising campaigns run in 105 countries and 48 languages.
Complainant obtained the trademark registrations noted above and, it contends, it has gone to great lengths to protect the valuable goodwill in its name and mark. As a result of its efforts, Complainant contends that its MASTERCARD mark has become famous and is in fact one of the most famous and widely recognized trademarks in the world.
Complainant contends that Respondent’s Domain Name is confusingly similar to its MASTERCARD trademark. The Domain Name incorporates Complainant’s MASTERCARD mark in its entirety, adding only the non-distinctive, descriptive or generic word “edge” which does not change the overall impression of the mark or avoid confusion with Complainant’s MASTERCARD trademark.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Respondent is not affiliated with Complainant or authorized by Complainant to use Complainant’s trademarks in any way. Respondent is not generally known by the Domain Name.
Further, Respondent uses the Domain Name to list links to various websites, some of which are Complainant’s direct competitors, which Complainant contends does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name by Respondent.
Finally, Complainant contends that Respondent registered and is using the Domain Name in bad faith in that Respondent is deliberately using the Domain Name for commercial gain to attract Internet users to Respondent’s website based on a likelihood of confusion with Complainant’s MASTERCARD mark.
Complainant contends that Respondent registered the Domain Name long after Complainant’s adoption, use, and registration of its MASTERCARD trademark. Respondent thus was on constructive notice of Complainant’s rights in its mark. Moreover, the widespread use and fame of Complainant’s trademark and the inherent distinctiveness of the mark lead to the conclusion that Respondent also had actual knowledge of Complainant’s rights in the MASTERCARD mark. There is no plausible reason for Respondent’s selection of the Domain Name unless Respondent was deliberately attempting to profit from confusion with Complainant’s mark.
Complainant contends that the fact that Respondent’s website links to sites advertising the goods and services of Complainant’s competitors is further evidence of bad faith, and that Respondent’s Domain Name and website likely generate revenue for Respondent when consumers “click through” to other sites offering the goods and services of Complainant and of Complainant’s competitors.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Because Respondent did not respond to the Complaint, the Panel first considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form to the e-mail addresses required under paragraph 2(a)(ii) of the Rules and in hard copy by courier service to the address provided in Respondent’s registration information. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where a respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent’s Domain Name has been registered and is being used in bad faith.
The Panel considers each element in order.
A. Identical or Confusingly Similar
The Panel finds that Complainant possesses established legal rights in its MASTERCARD trademark by reason of its long and continuing use of the mark in commerce and Complainant’s multiple registrations of the mark in the United States of America and in numerous jurisdictions around the world. The Panel further finds that Complaint’s mark is a famous trademark.
Respondent necessarily had both constructive and actual knowledge of Complainant’s trademark by reason of the mark’s long preceding registrations and national and international fame. See 15 U.S.C. � 1072; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028 (“As a matter of United States law, Respondent had prior constructive or actual knowledge of Complainant’s trademark” because the mark was registered); Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,WIPO Case No. D2000-0090 (registration of a mark puts a respondent on constructive notice). Respondent nevertheless chose to incorporate Complainant’s famous mark in its entirety into the Domain Name. This in itself supports an inference of confusing similarity between the mark and the Domain Name. A domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. See, e.g., America Online, Inc. v. , NAF Case No. FA0207000117319 (September 19, 2002) (“aolgirlsgonewild” incorporated complainant’s “entire mark” and implied “an affiliation that simply does not exist”); eBay, Inc. v. Progressive Life Awareness Network,WIPO Case No. D2001-0068. “[T]he intentional registration of a domain name knowing that the second level domain is another company’s valuable trademark weighs in favor of likelihood of confusion.” Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1059 (9th Cir. 1999).
Respondent’s Domain Name adds the word “edge” to Complainant’s trademark. “Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087, quoting, 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition � 23:50 (4th ed. 1998). See, The Coca-Cola Company v. Gamlebyen Invest AS,WIPO Case No. D2000-1677; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004, citing Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000); Yahoo!, Inc. v. CPIC NET and Syed Hussain,WIPO Case No. D2001-0195; America Online, Inc. v. Yeteck Communication, Inc.,WIPO Case No. D2001-0055 (“aolcasino” found confusingly similar to AOL mark); Revlon Consumer Products Corporation v. Laurent D. Morel,WIPO Case No. D2002-0215 (the “neutral” addition of “girls” in the Domain Name was a difference insufficient to avoid confusion with registered mark); Sony Corporation v. Park Kwangsoo,WIPO Case No. D2001-0167 ( confusingly similar to Complainant’s SONY mark).
The word “edge” is non-distinctive here. It is not sufficient to distinguish the Domain Name from Complainant’s dominant trademark and thus does nothing to negate an inference of confusing similarity between them. MasterCard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050 (addition of generic “offers” to MASTERCARD insufficient to avoid confusion); MasterCard International Incorporated v. Organization Contact / ,WIPO Case No. D2007-0691 (addition of non-distinctive, descriptive or generic term “apply” does not change the overall impression of a mark).
The Panel concludes that the Domain Name is confusingly similar to Complainant’s MASTERCARD trademark and that Complainant thus has established the first element of its case.
B. Rights or Legitimate Interests
Complainant must show that Respondent has no right or legitimate interests in the Domain Name. The Panel concludes that Complainant establishes a prima facie case to this effect. Complainant has not licensed or authorized Respondent to use its trademark in the Domain Name. See Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Respondent is not generally known by the Domain Name. See Gallup Inc. v. Amish Country Store, NAF Case No. FA 96209 (2001).
Respondent also is not using the Domain Name in connection with a bona fide offering of goods or services. The Domain Name leads the Internet user to a site which lists various portals to other sites advertising the goods and services of Complainant and of Complainant’s competitors. Such use does not meet tests of a bona fide offering described in prior panel decisions under the Policy.
First, Respondent is not itself offering the goods or services at issue. See Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481. Respondent is trading off of Complainant’s fame and goodwill and merely providing links to others’ websites which may offer actual goods or services.
Second, Respondent is not using its website to offer only the trademarked goods or services. See Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481. Respondent is in fact using the Domain Name and Complainant’s trademark to lead Internet users to the goods and services of Complainant’s competitors, which has been held not to constitute a bona fide offering. MasterCard International Incorporated v. Organization Contact / ,WIPO Case No. D2007-0691 (use of , which resolved to a page displaying links to Complainant’s competitors not a bona fide use); MasterCard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050 (use of which resolved to a page displaying links to Complainant’s competitors not a bona fide use).
Lastly, the circumstances support a reasonable inference that Respondent derives commercial gain from the Domain Name and the connected website through “click through” revenues and that the website features goods and services that compete with those of Complainant. Respondent thus is not making a legitimate noncommercial or fair use of the Domain Name. See National Association of Professional Baseball Leagues, Inc. d/b/a Minor League Baseball v. Zuccarini,WIPO Case No. D2002-1011.
Respondent, in default, has not come forward with evidence to establish any right or interests it may have in order to rebut Complainant’s prima facie case. See MasterCard International Incorporated v. Organization Contact / ,WIPO Case No. D2007-0691; MasterCard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050. Under the circumstances, the Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and concludes that Complainant has established the second element of its case.
C. Registered and Used in Bad Faith
Complainant must show that Respondent registered and is using the Domain Name in bad faith. Complainant relies here principally on paragraph 4(b)(iv) of the Policy which provides that bad faith may be shown to exist where a respondent intentionally uses the domain name for commercial gain to attract Internet users to its website by exploiting the likelihood of confusion with the complainant’s trademark.
Substantial authority exists to the effect that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pepperdine University v. BDC Partners, Inc.,WIPO Case No. D2006-1003; Veuve Clicquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith).
As discussed above, the evidence is sufficient to attribute to Respondent both constructive and actual knowledge of Complainant’s famous MASTERCARD trademark. See 15 U.S.C. � 1072; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028 (“As a matter of United States law, Respondent had prior constructive or actual knowledge of Complainant’s trademark” because the mark was registered); Waterman, S.A.S. v. Brian Art,WIPO Case No. D2005-0340 (finding bad faith registration and noting that complainant’s mark was well-known); Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,WIPO Case No. D2000-0090 (registration of a mark puts a respondent on constructive notice); Microsoft Corporation v. Party Night, Inc. d/b/a/ Peter Carrington,WIPO Case No. D2003-0501 (“It is not reasonable to expect the Respondent to register the disputed Domain Names if the Respondent had no knowledge of the Complainant’s trademark and services in connection thereto.”). Prior WIPO panels have held that actual or constructive knowledge of complainant’s rights in trademarks is a factor supporting bad faith. Ticketmaster Corporation v. Spider Web Design, Inc.,WIPO Case No. D2000-1551).
The Panel infers from such actual and constructive knowledge of Complainant’s trademark, intent on Respondent’s part to exploit the likelihood of confusion between the Domain Name and Complainant’s mark to attract Internet users to Respondent’s website. MasterCard International Incorporated v. Organization Contact / ,WIPO Case No. D2007-0691; MasterCard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050.
Furthermore, the nature and content of the website are clearly commercial. Respondent is directing the user to various commercial sites offering credit card services, including the services of both Complainant and Complainant’s competitors. There exists a reasonable inference that Respondent must derive some commercial gain from this website, most probably through “click through” advertising revenues.
The Panel concludes that Complainant makes a case under paragraph 4(b)(iv) of the Policy that Respondent registered and is using the Domain Name in bad faith and has, therefore, established the third and final element of its case.
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 Complainant.
John R. Keys, Jr.
Sole Panelist
Dated: November 28, 2007
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