WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Citigroup, Inc., MasterCard International Incorporated v. Domain Proxies, LLC
Case No. D2008-0951
1. The Parties
The Complainant is Citigroup, Inc., MasterCard International Incorporated, New York, United States of America; represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Domain Proxies, LLC, Cabarete, of Dominican Republic.
2. The Domain Name and Registrar
The disputed domain name is registered with DSTR Acquisition VII, LLC d/b/a D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2008. On June 23, 2008, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a D a request for registrar verification in connection with the domain name(s) at issue. On June 26, 2008, DSTR Acquisition VII, LLC d/b/a D 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 June 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 23, 2008.
The Center appointed Fleur Hinton as the sole panelist in this matter on August 3, 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 Complainants are two of the most well-known and respected purveyors of financial services in the world. Each of them owns numerous trademarks incorporating its house marks CITI and MASTERCARD respectively. Citigroup, Inc. (“the first Complainant”) is the pre-eminent financial services company in the world. Its first bank opened in 1812 and it now has 200 million customer accounts in over 100 countries throughout the world. The first Complainant has over 100 United States of America (“US”) federal trademark registrations and hundreds of trademark registrations around the world. Its most important trademark CITI is also displayed frequently and prominently on the first Complainant's websites around the world.
Mastercard International Incorporated (“the second Complainant”) has operated a payment card business through its predecessors since 1966 and has used the famous MASTERCARD trademark since at least 1980. The second Complainant is arguably the pre-eminent payment card business in the world and its trademark, one of the most recognizable. The second Complainant spent over $US 1 billion in 2007 alone to promote the MASTERCARD trademark. It has a very substantial presence on the Internet, both on the second Complainant's websites globally and on very many other sites where consumers are able to use the second Complainant's Mastercard payment card to purchase goods.
The second Complainant licenses 22,000 member financial institutions around the world to use its Mastercard payment card and one of those financial institutions so licensed is the first Complainant. As a result, the Citi Mastercard has been offered by the first Complainant under licence of the second Complainant since 1997 in relation to over 25 payment card programmes.
According to the Whois database, the Respondent registered the Domain Name on February 25, 2004. On visiting the website to which the Domain Name leads, consumers are informed that the Domain Name may be for sale. They are also offered links to a variety of credit providers.
5. Parties' Contentions
A. Complainant
The Complainants contend that the Domain Name is confusingly similar to the Complainants' respective trademarks CITI and MASTERCARD.
They contend further that, since neither of them has licensed the use of the trademarks by the Respondent and there is no evidence of the Respondent having been known by the name “Citimastercard” or having demonstrated any evidence of having traded under it, it has no rights or legitimate interests to it.
The Complainants argue that, since the Respondent is not using the Domain Name legitimately, it registered it in bad faith. They argue further that the Respondent's use of the Domain Name as a means of attracting click-through revenue is a continued use of the Domain Name in bad faith.
B. Respondent
The Respondent did not reply to the Complainants' contentions.
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 bas been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first Complainant owns a large number of trademarks internationally which either comprise or include CITI. The second Complainant owns a large number of trademarks internationally for its famous trademark MASTERCARD. Neither of these trademarks is identical with the Domain Name.
Because the first Complainant is a licensee of the second Complainant's credit card services, the combination “CITIMASTERCARD” does appear closely together on occasion as a legitimate use by the parties together. One place where this may be seen is on the first Complainant's Canadian Website.
The Domain Name is not identical to either of the Complainants' trademarks so, in order to be successful under paragraph 4(a) of the Policy, the Complainants need to satisfy the Panel that the use complained of is confusingly similar. The Panel finds that each of the trademarks CITI and MASTERCARD is so distinctive that use of the combination CITIMASTERCARD in the disputed Domain Name is confusingly similar to each of the Complainants' trademarks.
B. Rights or Legitimate Interests
The Complainants' trademarks are both extremely widely-known and have been for many years preceding the date of the Respondent's registration of the Domain Name. Neither of the Complainants has given the Respondent the right to use either of the trademarks.
The Complainants have referred to Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020, in which it was found by the panel that the fact the respondent had not demonstrated a right of use was sufficient for a finding that the respondent had no right in the name.
In the present case the Respondent has not lodged a Response. That in itself is not sufficient to remove the burden of proof from the Complainants to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. However, in a case where the Complainant has satisfied its burden, the burden of proof shifts to the Respondent to prove it has rights or legitimate interests in the Domain Name. Here the Respondent has not submitted any such arguments or indeed any Response. This has been established in many UDRP decisions including Credit Suisse Group v. Milanes-Espinach, Fernando and Milanes-Espinach, SA,WIPO Case No. D2000-1376.
It is always difficult to prove a negative, that is, that the respondent does not have any rights. The Panel finds that the combination of the fame of the Complainants' respective trademarks, the fact that neither of them has licensed the Respondent and that the Respondent has not asserted any rights leads to the conclusion that the Respondent, in light of the aforementioned circumstances and from the present record, has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Respondent has taken the widely known trademarks of the Complainants and combined them into a Domain Name calculated to attract consumers interested in obtaining financial services and, within that description, credit services. It appears the Respondent may have obtained click-through revenue by linking the website to other credit offerors' websites as well as the Complainants'. It has arguably injured the Complainants by relying on their joint goodwill to attract Internet users to the Domain Name. It has also misled consumers who may well assume a connection between the Domain Name and the Complainants and be moved to visit websites in the mistaken belief that there is some sort of relationship between the Complainants on the website and that the products there offered are in some way endorsed by the Complainants.
In L'Oreal, Biotherm, Lancome Parfums et Beaute & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623, the panel discussed the use of well-known trademarks to entice consumers to an unrelated website and said, “such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions”.
The Panel finds that the Domain Name has been 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 the Complainants.
Fleur Hinton
Sole Panelist
Dated: August 17, 2008
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