WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International Incorporated v. DL Webb
Case No. D2008-0324
1. The Parties
Complainant is MasterCard International Incorporated (“MasterCard”), represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.
Respondent is DL Webb, Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2008. On March 7, 2008, the Center transmitted by email to eNom, Inc., a request for registrar verification in connection with the domain name at issue. On March 7, 2008, eNom, Inc. transmitted by email to the Center its verification response confirming that 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 March 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 2, 2008.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on April 21, 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 following uncontested facts are summarized from the Complaint.
Complainant owns the relevant trademark, MASTERCARD (“Complainant’s Mark”), and Complainant uses it in connection with payment programs. In April 1980, Complainant filed an application with the United States Trademark Office to register the trademark MASTERCARD. In addition, Complainant has registered the following domain names containing the name and mark MASTERCARD: MASTERCARD.COM, MASTERCARD.NET, MASTERCARDONLINE.NET, and MASTERCARDONLINE.ORG. The domain name was registered on July 27, 1994.
5. Parties’ Contentions
A. Complainant
Complainant contends as follows:
The Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Domain Name contains Complainant’s identical mark and has led to actual confusion based on Respondent’s use of the Domain Name.
Respondent has no rights or legitimate interests in respect of its use of the Domain Name. Respondent does not own any trademark containing any component of the Domain Name. There is no evidence that Respondent has used or prepared to use the Domain Name in connection with a bona fide offering of goods or services. Respondent is not making a legitimate non-commercial or fair use of the Domain Name.
Respondent has registered and used the Domain Name in bad faith. Respondent, by creating a likelihood of confusion with the Complainants’ Mark attempted to profit by causing consumer confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Further, Complainant’s correspondence to Respondent were returned as undeliverable, due to Respondent’s providing the Registrar with an incomplete or false address.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The 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) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the mark MASTERCARD, by virtue of its registration with the United States Patent and Trademark Office. The Panel further finds that the Domain Name is confusingly similar to Complainant’s Mark. The Domain Names incorporate Complainant’s Marks in full and add the prefix “www”. The Panel concludes that the addition of a prefix is insufficient to differentiate the Complainant’s Mark from the Domain Name and does not prevent confusion. The addition of the “www” prefix has been cited as a common practice of “typo-squatters” who try to take advantage of the fact that Internet users may fail to insert a period between the World Wide Web prefix and the remainder of the domain name. See e.g. inter alia Reuters Ltd. v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.
As a conclusion, this addition does not change the likelihood of a confusion.
The Panel, therefore, finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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.
Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Name.
Respondent is seemingly not affiliated or related to Complainant in any way, nor has Respondent obtained a license or an authorization from Complainant to use the mark MASTERCARD.
The record does not contain any evidence that Respondent has been commonly known by the Domain Name. Respondent has also not used the Domain Name in connection with a bona fide offering of goods or services, and Respondent’s use is neither a legitimate nor fair use. Complainant has shown that Respondent has used the Domain Name in connection with a website which contains links to other websites offering services of Complainant and Complainant’s competitors. Such “commercial” use does not constitute use of the Domain Name in connection with a bona fide offering of goods or services, and is not legitimate non-commercial or fair use.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides several nonexclusive circumstances that provide evidence of bad faith registration and use of a domain name, including evidence that (i) Respondent acquired a domain name for the purpose of selling the domain name to a trademark owner for valuable consideration in excess of the Respondent’s out-of-pocket expenses; (ii) The domain name was registered to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; (iii) the domain name was registered primarily for the purpose of disrupting the business of a competitor; and (iv) Respondent intentionally attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion.
The Panel finds that Respondent registered and used the Domain Name to intentionally attract Internet users to its websites by creating a likelihood of confusion with Complainant’s Mark. Given the registrations of Complainant’s trademark, as well as the widespread use of Complainant’s Mark in the credit card industry, the Panel finds that in all likelihood, Respondent registered the Domain Name with knowledge of Complainant’s Marks.
The Panel also finds that Respondent attempted to profit, through the use of typo-squatting, of Complainant’s website. The use of a common typographical error that Internet users make when they are likely trying to find a website associated with Complainant to direct traffic to another site has been evidence accepted to prove bad faith. MasterCard International Incorporated v. Cyber Blue Media/Richard Randolph,WIPO Case No. D2007-1137.
Further, the evidence indicates that the Domain Name offers links to services directly competing with MasterCard’s services. Respondent’s Domain Name confuses consumers who “click through” to sites offering goods and services of both MasterCard and MasterCard’s competitors.
For these reasons, the Panel finds that the Complainant has satisfied 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.
Maxim H. Waldbaum
Sole Panelist
Dated: May 5, 2008
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