WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mastercard International Incorporated v. Yuan Zhou
Case No. D2008-0196
1. The Parties
The Complainant is Mastercard International Incorporated, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is Yuan Zhou, Dundee, Scotland, United Kingdom of Great Britain and Northern Ireland.
2. The Domain name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2008. On February 7, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 8, 2008, eNom 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 February 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2008. The Response was filed with the Center on February 16, 2008.
The Center appointed Linda Chang as the sole panelist in this matter on March 27, 2008. 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, through its predecessors in interest, has been in the payment card business since 1966 and has operated under the name MASTERCARD since at least as early as 1980. Today, the Complainant is the owner of 15 registrations of MASTERCARD marks in the United Kingdom, and 13 registrations of MASTERCARD marks in the European Community, as well as over 100 registrations of and applications for the same mark in the US.
The disputed domain name was registered on January 29, 2003 and was used to advertise hair accessories for a Chinese company in 2004. The contents of the advertisement were removed after the Complainant contacted the Respondent demanding a removal of the contents. Although the Complainant also demanded a transfer of the domain name, the Respondent refused to do so.
5. Parties’ Contentions
A. Complainant
Identical or confusingly similar
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark MASTERCARD because the former incorporates the entirety of the latter. The Complainant states that the Respondent adds only the geographical term “China” but such addition does not change the overall impression of a mark. The Complainant further states that it is likely consumers will be led to think about as Complainant’s domain name for Chinese customers or clients.
Rights or Legitimate Interests
The Complainant contends that the Respondent is not affiliated or related to the Complainant in any way, nor is the Respondent an authorized licensee. The Complainant states that the Respondent is not generally known by the domain name, and has not acquired any trademark or service mark rights in that name.
The Complainant further states that although the Respondent removed the hair accessory advertisements in response to Complainant’s objections, it has refused to transfer the domain name to the Complainant and passive holding of the disputed domain name is not considered to be a bona fide offering of goods or services as provided by the Policy, Paragraph 4(c)(i). The Complainant therefore believes that the Respondent does not have rights or legitimate interests in the domain name under Policy, Paragraph 4(a)(ii).
Registered and Used in Bad Faith
The Complainant contends that according to paragraph 4(b)(iv) of the Policy, bad faith can be shown in circumstances where the Respondent deliberately uses the domain name for commercial gain to divert Internet users based on a likelihood of confusion with the Complainant’s mark. Although currently inactive, the website served as an advertisement for Shenzhen Toda Enterprises Limited, a company which sells hair accessories, until the Complainant objected. Given the substantial rights the Complainant has in the MASTERCARD mark and the absence of any rights or legitimate interest by Respondent, the continued passive holding of the disputed domain name constitutes bad faith use.
The Complainant further contends that the Respondent acquired and began unauthorized use of the domain name long after the Complainant’s adoption, use and registration of its MASTERCARD mark. The widespread use and fame of the MASTERCARD mark in the credit card industry, the inherent distinctiveness of the mark, and the Complainant’s prior domain name registrations as well as the trademark registrations, lead to the necessary conclusion that the Respondent registered and used the disputed domain name with actual knowledge of the Complainant’s rights.
B. Respondent
The Respondent did not formally make a response but just stated in its return email to the Center dated February 18, 2008, that it registered the domain name out of its love of the name “mastercard”.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:
(A) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the domain name; and
(C) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant started operating its financial business under the name of MASTERCARD and became registered owner of the same in multiple countries of the world since 1980s. Great reputation has been acquired through the extensive use and promotion worldwide.
The domain name was registered much later and is almost identical with the trademark, with the only difference lying in the addition of ‘China’ which is clearly to indicate the country of People’s Republic of China. This addition does not really make a difference between the trademark and the domain name and in fact it will more likely either mislead or confuse the public into thinking that there might be a connection between the owner of the domain name and that of the trademark. Therefore the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made prima facie statement that the Respondent is not known by the subject domain name nor is authorized to use the trademark in any manner. Although the Respondent stated in its return email to the Center that the domain name was registered out of the Respondent’s love of MASTERCARD, such love does not give any entitlement in the circumstances of this case to registering the trademark as a domain name, or any other rights via mere registration, without the agreement from the trademark owner. In this case the information on record indeed does not lead to any of the situations as provided under paragraph 4(c) of the Policy that would justify the Respondent’s possession of legitimate rights or interests in the domain name.
The Panel is satisfied that the Respondent does not have rights or legitimate interests in the domain name. The Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that bad faith shall be found in registration and use of a domain name for example in the following circumstances: iv) where the domain name holder, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The Complainant has been extensively using and advertising its trademark since 1980s in the field of financial services which relate to people’s daily life. MASTERCARD is so widely known that it is very unlikely that the Respondent was not aware of it. In fact, from the Respondent’s response to the Center, it is obvious that the Respondent had knowledge of the name “mastercard” when it registered the domain name. There is good reason to believe the purpose of the Respondent, by registering and using a domain name completely incorporating a widely known brand name such as MASTERCARD, was to take advantage of the reputation of the trademark to advertise hair accessories by attracting the web visitors looking for information related to the Complainant. Although the Respondent has stopped posting the hair accessory advertisement, it still holds the domain name and refuses to transfer it to the Complainant. Passively holding the domain name hinders the Complainant from registering and using the same when it may have genuine needs to direct its customers to a particular website about its business in China.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) 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 name be transferred to the Complainant.
Linda Chang
Sole Panelist
Dated: April 15, 2008
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