WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios
Case No. D2008-0325
1. The Parties
The Complainant is MasterCard International Incorporated, of United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is Abadaba SA, Administrador de dominios, of Panama.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Naugus Limited LLC.
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 Naugus Limited LLC a request for registrar verification in connection with the Domain Name at issue. On March 7, 2008, Naugus Limited 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 March 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2008.
The Center appointed Linda Chang as the sole panelist in this matter on April 8, 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.
As the Domain Name incorporates two trade marks owned by different parties, the Panel issued its Procedural Order No. 1 on May 14, 2008 requesting the Complainant to obtain and submit consent from the other trade mark owner for the Complainant to hold the Domain Name. The Complainant responded to the Procedural Order No. 1 on May 22, 2008 stating grounds why the Domain Name should be transferred rather than cancelled.
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 (the Trade Mark) since at least 1980s. Today, the Complainant is the owner of MASTERCARD marks in practically every nation around the world including Panama.
The disputed Domain Name was registered on December 26, 2002 and was used in connection with a website displaying the commercial links to the Complainant as well as to the Complainant’s competitors.
5. Parties’ Contentions
A. Complainant
Identical or confusingly similar
The Complainant contends that the Domain Name is confusingly similar to its Trade Mark because the former incorporates the entirety of the latter. The Complainant states that the Respondent adds the famous trade mark ‘CHASE’ to MASTERCARD mark and that the Domain Name containing two marks owned by different entities does not negate the confusing similarity between the Domain Name and the Trade Mark.
Rights or Legitimate Interests
The Complainant contends that the Respondent is not affiliated or related to the Trade Mark in any way, nor is the Respondent licensed by the Complainant or otherwise authorized to use the MASTERCARD marks.
The Complainant also contends that the Respondent is not generally known by the disputed Domain Name, and has not acquired any trade mark or service mark rights in that name or mark.
The Complainant further contends that the Respondent is not offering the goods or services at issue, but is using the Domain Name to list links to different websites, some of which are direct competitors of the Complainant. The Complainant contends that using the Trade Mark to attract Internet users to a website that contains links to both the Complainant’s products and the products of the Complainant’s competitors does not constitute a bona fide offering of goods or services.
Registered and Used in Bad Faith
The Complainant contends that the Domain Name is deliberately used for commercial gain by attracting Internet users to the Respondent’s linked websites based on a likelihood of confusion with the Complainant’s Trade Mark.
The Complainant contends that the Respondent acquired and began unauthorized use of the disputed Domain Name long after MasterCard’s adoption, use and registration of its MASTERCARD mark.
The Complainant contends that 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 trade mark registrations, lead to the necessary conclusion that the Respondent registered and is using the Domain Name with actual knowledge of MasterCard’s rights.
The Complainant contends that the Domain Name offers links to the Complainant’s services and other services directly competing with MasterCard’s services, which is clearly a bad faith use in violation of Policy, paragraph 4(b)(iv).
The Complainant further contends that the 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 and that such use of the Complainant’s Trade Mark to generate “click through” revenue in this manner is in bad faith.
B. Respondent
The Respondent did not make a response.
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 trade mark 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 in the 1960s and became registered owner of the same in multiple countries of the world since 1980s. Great reputation has been acquired to the Trade Mark through the Complainant’s extensive use and promotion worldwide.
The Domain Name entirely incorporates the Complainant’s Trade Mark and meanwhile entirely incorporates the service mark CHASE owned by another financial institution. A domain name containing two trade marks of different entities does not mean its owner has created a new name but rather it means the domain name is confusingly similar to both of the trade marks.
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 a prima facie statement that the Respondent is not known by the disputed Domain Name nor is it authorized to use the Trade Mark in any manner. Although the Respondent default does not mean it will automatically lose the case, the information provided to the Panel does not suggest that the Respondent would have rights or legitimate interests as provided under paragraph 4(c) of the Policy, or otherwise.
The Panel is satisfied also taking into consideration the use of the Domain Name as defined below under “Bad Faith”, that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) provides that bad faith shall be found in registration and use of a domain name in circumstances where the domain name holder, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on its web site or location.
The Complainant has been extensively using and advertising its Trade Mark since 1980s in the field of financial services which relates to people’s daily life. MASTERCARD is so widely-known that it is most unlikely that one would not know about it. It is reasonable to deduct that the Respondent had knowledge of the Trade Mark when it registered the Domain Name. Acquiring a domain name by incorporating a trade mark that, the registrant clearly knew, belongs to another party indeed suggests bad faith.
The Respondent uses the Domain Name by offering links to the Complainant’s services and other services directly competing with the Complainant. It is likely that by using the Domain Name in such manner, the Respondent may make a profit based on the number of “click through” to sites offering the goods and services of both the Complainant and its direct competitors. Even if the Respondent would not be making a profit from the “click through”, attracting web visitors to the Complainant’s competitors’ websites by using the Domain Name also constitutes bad faith in line with paragraph 4(b)(iv) of the Policy.
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, without prejudice to any rights which may be asserted by the third party owner of the mark CHASE.
Linda Chang
Sole Panelist
Dated: May 28, 2008
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