WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International Incorporated v. Acme Mail
Case No. D2008-0701
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 Acme Mail, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain names, and , are registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2008. On May 6, 2008, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On May 6, 2008, Intercosmos Media Group d/b/a directNIC.com 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 May 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2008.
The Center appointed Dennis A. Foster as the sole panelist in this matter on June 16, 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 is a United States of America company that has engaged in the credit card business for several decades throughout the world. It has a valid United States Patent and Trademark Office (the “USPTO”) registration for the mark, MASTERCARD (Registration No. 1,186,117; January 12, 1982). The mark is among the most famous service marks in the world.
The Respondent registered the disputed domain names on October 27, 2000 and May 6, 2001, respectively. The websites found at the names provide links to the services of the Complainant as well as those of the Complainant’s competitors.
5. Parties’ Contentions
A. Complainant
The Complainant’s predecessors in interest began operating in the credit card business as early as 1966. The Complainant provides a broad variety of innovative services in support of its global members' credit, deposit access, electronic cash, business-to-business and related payment programs in some 210 countries and territories around the world and has done so under the service mark MASTERCARD since at least 1980.
The Complainant holds many valid USPTO registrations for marks incorporating the Complainant’s basic mark, MASTERCARD. Moreover, the MASTERCARD mark is registered by the Complainant in virtually every jurisdiction throughout the world.
The Complainant also owns several domain names corresponding to its registered marks, including , , and .
Due to the vast degree of commerce under and promotion of its MASTERCARD marks, the Complainant has created an enormous amount of global goodwill associated with those marks. Simply put, the MASTERCARD mark is one of the most famous in the world.
The Respondent registered the disputed domain names, and , on October 27, 2000 and May 6, 2001, respectively. This registration occurred substantially after the Complainant had obtained the service mark registration noted above.
The disputed domain names are confusingly similar to the Complainant’s MASTERCARD mark as the only difference is the deletion of either the letter “s” or “a”.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is neither a licensee of the Complainant nor is otherwise authorized by the Complainant to use its marks. The Respondent is not known commonly by either of the names. The Respondent uses the disputed domain names only to link Internet users to either the Complainant’s services or to the services of Complainant’s competitors – a use that fails to qualify as a bona fide offering of goods or services or a noncommercial or fair use.
The Respondent registered and is using the domain names in question in bad faith. The Respondent registered and is using the domain names to cause confusion with the Complainant’s marks for Respondent’s monetary gain through collection of click-through fees. The Respondent’s registration of domain names that vary from the Complainant’s mark solely by removal of a single letter is the sort of “typo-squatting” – relying on Internet user typing errors to generate traffic through Respondent’s website – that has been found by prior UDRP panels to constitute bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraphs 4(a)(i), (ii) and (iii) of the Policy, the Complainant may prevail in this administrative proceeding and gain transfer of the disputed domain names, and , by demonstrating the following:
- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- The disputed domain names were registered and are being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Complainant has exhibited convincing evidence of its valid USPTO registration for the service mark MASTERCARD. The Panel deems such evidence as conclusive in establishing that the Complainant has sufficient rights in that mark for the purposes of paragraph 4(a)(i) of the Policy. See VICORP Restaurants, Inc. v. Anastasios Triantafillos, FA485933; and Vivendi Universal Games and Davidson & Associates, Inc. v. XBNetVentures Inc., NAF Case No. FA198803 (“…Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The disputed domain names, and , subtract from the MASTERCARD mark only an “a” and “s”, respectively. While the names are not identical to the mark, in the Panel’s view such minute differences fail to prevent the names from being confusingly similar to the MASTERCARD mark. For cases where prior UDRP panels reached the same conclusion when presented with similar circumstances, see The Nasdaq Stock Market, Inc. v NSDAQ.COM, NASDQ.COM and NASAQ.COM,WIPO Case No. D2001-1492 (finding that the disputed domain names, , and , were all confusingly similar to the mark, NASDAQ); and Victoria's Secret et al v. John Zuccarini dba Cupcake Patrol, Cupcake Party and Country Walk, NAF Case No. FA95762.
Accordingly, the Panel decides that the disputed domain names are identical or confusingly similar to a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has convinced the Panel of the Complainant’s rights in its MASTERCARD service marks. Moreover, the Complainant contends that it never authorized the Respondent to use any of those marks. Since the Respondent failed to respond to that plausible contention, the Panel will accept it as true. See Hyatt Corporation v. Sinichi Akiyama, NAF Case No. FA839408 (“In view of Respondent's failure to submit a response…The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.”); and Randstad General Partner (U.S.), LLC v. Domains For Sale For You,WIPO Case No. D2000-0051. The foregoing provides a prima facie case in the Complainant’s favor regarding the Respondent’s lack of rights or legitimate interests in the disputed domain names, placing upon the Respondent the burden of rebuttal. See Telex Communications, Inc. v. Jinzheng Net; NAF Case No.833071 (“Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy [paragraph] 4(a)(ii).”); and Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
Despite the Respondent’s failure to submit evidence to rebut the Complainant’s prima facie case, the Panel will consider whether paragraph 4(c) is applicable in the Respondent’s favor based on the record. That paragraph allows for a finding that the Respondent has rights or legitimate interests in the disputed domain name if: (i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) [Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or (iii) [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 or service mark at issue.
The Complainant contends, and the Panel accepts in the absence of any counter filing, that the Respondent is currently using the disputed domain names to link Internet users to either the Complainant’s services or the competing services of third parties to gain “click through” fees. Numerous decisions under the Policy have determined that such use constitutes neither “a bona fide offering of goods or services” per paragraph 4(c)(i) nor noncommercial or fair use per paragraph 4(c)(iii). See for example, MasterCard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050; and TM Acquisition Corp. v. Sign Guards a/k/a William Moore, NAF Case No. FA132439. Moreover, there is no evidence in the record indicating that Respondent, or any company that it owns, is commonly known by any name resembling the disputed domain names. Thus, based on the record, the Panel concludes that Respondent’s actions fail to fall within the purview of paragraph 4(c).
As a result, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four specific circumstances which, if found to apply, compel a panel to find bad faith registration and use of a disputed domain name. However, that paragraph is not intended to be the exclusive means by which the Panel may render such a finding of bad faith.
In the present case, the disputed domain names appear to the Panel to be simple misspellings of the Complainant’s famous mark MASTERCARD resulting from the omission of a single letter in each instance. The Panel concludes that this is done deliberately by the Respondent to generate traffic through its website from Internet users who are attempting to access the Complainant’s website but misspell the Complainant’s service mark by failure to include one of the required keystrokes. In short, the Panel finds that the Respondent is guilty of a classic case of “typo-squatting,” which has been found by innumerable previous UDRP panels to constitute bad faith registration.. See for example, MasterCard International Incorporated v. Michael J. Yanda,WIPO Case No. D2007-1140; and General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher,WIPO Case No. D2000-0377 (“…the Panel finds that the practice of "typosquatting" constitutes registration and use in bad faith.”).
In summation, the Panel decides that the Complainant has shown that the disputed domain names were registered and are being used in bad faith.
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, and , be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Dated: June 30, 2008
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