WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International Incorporated v. Mr. Yusef Khandaghi
Case No. D2008-0866
1. The Parties
The Complainant is MasterCard International Incorporated, Purchase, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is Mr. Yusef Khandaghi, Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2008. On June 5, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the domain name at issue. On July 2, 2008, OnlineNic, Inc. d/b/a China-C 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 July 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on July 25, 2008.
The Center appointed Fleur Hinton as the sole panelist in this matter on August 11, 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 an internationally recognized payments solution organization with trademark registrations in the vast majority of countries throughout the world in which it is possible to register trademarks. The Respondent's home country of Iran is on that list. Apart from its ownership of registration for trademarks, it is also has a worldwide reputation in its trademark MASTERCARD. It filed its first application for registration in the United States of America (“US”) in 1980 and, since that time, it has become a very widely known trade mark.
The Whois records show that the Respondent registered the Domain Name on August 31, 2006. The website at the Domain Name provides links to websites offering financial services from a variety of institutions including those apparently licensed by the Complainant.
Although the Respondent has chosen not to respond to the Complainant's case, the Respondent has sent an email to the Center in which he expresses irritation at having received constant notices of the Complaint filed by the Complainant. He has also stated that he is prepared to sell the Domain Name.
5. Parties' Contentions
A. Complainant
The Complainant argues that the Domain Name is confusingly similar to the Complainant's internationally recognized trademark MASTERCARD (the Trademark”) and that the additional element of “ltd” is not sufficient to distinguish it from the Trademark as “ltd” is not a distinctive element. The Complainant also has registered a number of domain names incorporating the Trademark.
The Complainant contends that the Respondent is not known commercially by the name “Mastercard Ltd”, has not been licensed or authorized by the Complainant to use the Domain Name and that its use of the Domain Name to attract visitors to a website which promotes the services of the Complainant's competitors is not a bona fide offering of goods or services.
The Complainant argues that the Domain Name was registered and is being used in bad faith because the choice of the Domain Name is clearly designed to attract those who are familiar with the Trademark. It is being used in bad faith because it is a deliberate attempt to profit unfairly from the confusion caused by the Domain Name's website to its visitors.
B. Respondent
The Respondent did not file a Response or otherwise reply to the Complainant's contentions other than as noted above in Section 4.
6. Discussion and Findings
In order to reach a decision it is necessary to consider whether the evidence provided and arguments made by the Complainant satisfy the criteria of section 4(a) of the Policy which requires that the Complainant show:
a) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
b) that the Respondent has no rights or legitimate interests in the Domain Name; and
c) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name differs from the Trademark only in that the Domain Name includes “ltd”, the recognized abbreviation in some countries of “limited”, meaning a company limited by shares. It has been established in a number of panel decisions including two in which the Complainant was involved (MasterCard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050, and MasterCard International Incorporated v. Organization Contact / ,WIPO Case No. D2007-0691), that the addition of a generic term to a domain name comprising a complainant's trademark is generally not sufficient to distinguish the Domain Name from the trademark.
The Panel finds that the Domain Name is confusingly similar to the trademark.
B. Rights or Legitimate Interests
Use of the Domain Name by the Respondent has not been authorized by the Complainant. The Respondent, an individual, does not appear to be trading under the Domain Name and is not, in any event, making a legitimate non commercial or fair use of the Domain Name. Nor has the Respondent availed itself of any of the criteria under paragraph 4(c) of the Policy. Although it is the task of the Complainant to establish its case, where the Respondent chooses not to lodge evidence of his rights or legitimate interests in the Domain Name, the Complainant need establish only a prima facie case to satisfy the Panel under this head. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Section 2.1).
The Panel finds that the Complainant has so established its case and that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Respondent has registered as a domain name the Trademark of one of the best known payment solutions companies in the world. He is using the website to which the Domain Name resolves to direct consumers to a portal linking to offers of financial services provided by the Complainant and its competitors. His email to the Center of August 11, 2008 indicates that he is prepared to sell the Domain Name to the Complainant.
In the case of Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007–1411, the panel found that there is substantial authority for finding that the registration of a domain name which is confusingly similar to a famous trademark is in and of itself an indication of bad faith and referred to Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pepperdine University v. BDC Partners, Inc.,WIPO Case No. D2006-1003. The Panel finds here that the Respondent, as in that case, had both constructive and actual knowledge of the Complainant's Trademark.
The Respondent has registered and is using a domain name which is confusingly similar to the Trademark of an internationally recognized financial services company to attract business. He has indicated that he is prepared to sell the Domain Name to the Complainant, Policy paragraph 4(b)(i). The Panel finds that the Respondent has registered the Domain Name in bad faith and is using the Domain Name 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 the Complainant.
Fleur Hinton
Sole Panelist
Dated: August 25, 2008
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