WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International v. Bankrate
Case No. D2008-0704
1. The Parties
Complainant is MasterCard International Incorporated, Purchase, New York, United States of America.
Respondent is Bankrate, North Palm Beach, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name, , is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2008. On May 6, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On May 6, 2008, GoD, 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 May 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2008. The Response was filed with the Center on May 29, 2008.
On May 30, 2008, the Center was informed of a possible settlement of this matter. On June 2, 2008, the Center received a request from Complainant to suspend the proceedings while the parties pursued settlement. On June 3, 2008, the Center issued a Notice of Suspension, suspending the proceedings until July 3, 2008. On July 3, 2008, the Center received a further request for suspension of the proceedings from Complainant. On July 7, 2008, the Center issued a Notification of Extension of Suspension, suspending the proceedings until July 18, 2008. On July 17, 2008, Complainant filed a request to reinstitute the proceedings. The proceedings were subsequently reinstituted.
The Center appointed M. Scott Donahey as the sole panelist in this matter on July 25, 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
Complainant, through its predecessors in interest, has operated in the payment card business since 1966 and has operated under the MASTERCARD name and mark since at least as early as 1980. Complaint, Annex D. Complainant holds numerous trademarks for MASTERCARD, the earliest of which appears to have issued on January 12, 1982. Complaint, Annex F. Complainant holds marks in practically every jurisdiction in the world that recognizes such rights and grants the ability to register marks.
Complainant has also registered numerous domain names, including , which was registered on July 27, 1994. The Panel notes that it cannot be contested that Complainant’s mark is well known worldwide.
Respondent registered the domain name at issue on May 19, 2003. Complaint, Annex A. Respondent is using the domain name at issue to resolve to a parking site which displays links to Complainant and Complainant’s competitors. Complaint, Annex H.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name at issue is confusingly similar to Complainant’s marks, in that Respondent has merely inserted the common word “credit” between the words “master” and “card” that make up Complainant’s MASTERCARD mark. Complainant also contends that Respondent has no rights or legitimate interests in respect of the domain name, since Respondent is not affiliated or related to Complainant, nor has Respondent been authorized or licensed to use the MASTERCARD mark. Finally, Complainant contends that the domain name was registered and is being used in bad faith, since Respondent had to have known of Complainant’s famous mark at the time it registered the domain name at issue and since Respondent is using the domain name at issue to resolve to a parking site which contains links to Complainant’s competitors.
B. Respondent
Respondent contends that the domain name at issue is not confusingly similar to Complainant’s MASTERCARD mark, because the word “mastercard” is not contained therein. Respondent further generally denies that it does not have a right or legitimate interest in respect of the domain name at issue or that it registered and is using the domain name at issue in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2) that the respondent has no legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Where a domain name incorporates Complainant’s mark in its entirety, the domain name is confusingly similar to Complainant’s mark, despite the addition of other words in the domain name and despite the fact that a common word may be appended or a common word inserted therein. This is the so-called “objective test” adopted by the majority of panelists. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. The fact that there is an insertion between the words constituting the mark, rather than a prefix or suffix created by the addition of a common word before or after the two word mark is immaterial. The fact that the public commonly recognizes MASTERCARD as a “credit card” serves to support this conclusion. Soci�t� des Bains de Mer et du Cercle des Etrangers � Monaco v. Javier Llorens,WIPO Case No. D2000-1319 ( found confusingly similar to CASINO DE MONTE CARLO mark). Accordingly, the Panel finds that the domain name at issue is confusingly similar to Complainant’s registered service mark.
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name, nor has Complainant granted Respondent a license, permission, or authorization to use its registered MASTERCARD service mark. Respondent has failed to respond to Complainant’s assertions with anything more than a general denial of Complainant’s assertion. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Respondent registered the mark at issue at a time when Complainant’s mark had attained world wide fame, and Respondent could not have been unaware of Complainant’s mark. Respondent used the domain name at issue to resolve to a web site on which links to Complainant’s competitors as well as to Complainant were posted. Accordingly the Panel finds that Respondent used the domain name at issue in direct violation of paragraph 4(b)(iv) of the Policy. The Panel finds that the domain name at issue was registered and is 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 name, be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Dated: July 29, 2008
Full & Egal Universal Law Academy