WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MasterCard International Incorporated v. Oliver Zinke Case No. D2008-1706 1. The Parties
The Complainant is MasterCard International Incorporated, of New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States.
The Respondent is Oliver Zinke, of Selbitz, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Cronon AG Berlin, Niederlassung Regensburg. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2008. On November 10, 2008, the Center transmitted by email to Cronon AG Berlin, Niederlassung Regensburg a request for registrar verification in connection with the disputed domain name.
On November 11, 2008, Cronon AG Berlin, Niederlassung Regensburg transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing Respondent's contact details.
On November 20, 2008, the Center notified the Parties of the relevant language of the proceeding. On December 4, 2008, the Center notified the Parties of its determination to accept the Complaint in English on a prima facie basis and proceed with the case in both German and English.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Respondent to respond to the Complaint was December 24, 2008. The Respondent did not submit a response. Accordingly, the Center notified the Parties of the Respondent's default on December 29, 2008.
The Center appointed Junghye June Yeum as the sole panelist in this matter on January 21, 2009. 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.
The language of this proceeding is English. The Complaint was filed in English. Pursuant to paragraph 11 of the Rules, in the absence of any agreement between the parties, or otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Panel notes that the default language of the proceeding for this case would be German, being the language of the relevant registration agreement in the absence of any express agreement to the contrary by the parties.
Under the Rules, the Panel has the authority to determine the language of the proceeding. The Complainant has submitted a request that English be the language of the proceeding in the circumstances of this particular case. The Respondent has received notice of the same in both English and German but nevertheless has not submitted any response or objected to the same.
The Panel has considered the particular circumstances of this case carefully as well as the discretion given to her by paragraph 11(a) of the Rules. The Panel hereby determines that English shall be the language of administrative proceeding in this case. 4. Factual Background
As indicated in the WhoIs registration record provided as Exhibit 1 to the Complaint, the Respondent registered the disputed domain name on January 8, 2008.
The Complainant states that it owns numerous trademark registrations for the MASTERCARD and GOLD MASTERCARD mark in various countries. The Complainant has provided in Exhibits F through I to the Complaint a listing of its trademark registrations for its MASTERCARD mark.
The Complainant also owns numerous domain name registrations for domain names containing the MASTERCARD mark. In the Complaint, Complainant provides a list of the domain name registrations it owns for domain names incorporating the MASTERCARD mark. The Complainant operates its principal company website at “” in English and German.
The Complainant provides a variety of global financial services in support of members via credit, deposit access, electronic cash, and related payment programs. 5. Parties' Contentions A. Complainant (i) Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar because the disputed domain name incorporates the Complainant's GOLD MASTERCARD mark in its entirety with the exception that the Respondent has reversed the terms “mastercard” and “gold”.
Accordingly, the Complainant asserts that it has satisfied the confusing similarity/identity requirement in paragraph 4(a)(i) of the Policy. (ii) Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
First, the Complainant alleges that Respondent is neither affiliated with nor related to MASTERCARD in any way, nor licensed to use the MASTERCARD mark. Further, the Complainant alleges that Respondent is not known by the disputed domain name and has not acquired trademark rights in the terms comprising the disputed domain name. Finally, the Respondent is not offering goods and services associated with the domain name . (iii) Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is now using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
First, the Complainant asserts that the disputed domain name is deliberately used to attract Internet users to Respondent's website based on a likelihood of confusion with Complainant's GOLD MASTERCARD and MASTERCARD marks. The disputed domain name resolves to a website containing links to websites offering services of the Complainant and its competitors. According to the Complainant, the Respondent receives “click-through” revenue when confused consumers “click-through” to the sites offering the goods and services of the Complainant and its competitors.
Second, the Complainant alleges that bad faith is evidenced by the Respondent's selection of the disputed domain name despite actual and constructive notice of MasterCard's ownership of the GOLD MASTERCARD and MASTERCARD marks. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Respondent's failure to file a response
In all cases, if the Respondent intends to participate in these proceedings, and/or has any comments on the Complainant's submission replying to the Center's Notification of Complaint, the Respondent is requested to submit these to the Center by the deadline set in the Notification of Complaint.
The Center has throughout the proceedings issued its case-related communications, including the Center's complaint notification documents, both in German and English. The Respondent has chosen not to participate in the proceeding, and has been notified of its default. The Panel is satisfied that the Center's approach has been fair and appropriate.
Numerous cases under the Policy have found that “a Respondent's failure to dispute the allegations of the Complainant permits the inference that the Complainant's allegations are true and that the Respondent is aware that its website is misleading.” America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004. A. Identical or Confusingly Similar
The disputed domain name incorporates the entirety of Complainant's MASTERCARD mark. Where a domain name so incorporates the entirety of a mark, this Panel finds a likelihood of confusion. See, e.g., eBay Inc. v. Progressive Life Awareness Network,WIPO Case No. D2001-0068 (holding that the domain name to be confusingly similar to complainant's EBAY mark because it had incorporated the complainant's mark in its entirety); General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087 (holding domain name confusingly similar to the mark GE because it incorporated the GE mark in its entirety).
The Respondent's addition of the non-distinctive term “gold” to Complainant's trademark does not lessen the likelihood of confusion. Prior WIPO UDRP panels have consistently held that appropriating the mark of another by merely adding a non-distinctive term to it generally results in a likelihood of confusion. See, e.g., The Coca-Cola Company v. Gamlebyen Invest AS,WIPO Case No. D2000-1677 (holding confusingly similar to the COCA-COLA mark despite the addition of “drinks”); America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004 (holding confusingly similar to the ICQ mark despite the addition of “roaming”); MasterCard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050 (holding confusingly similar the MASTERCARD mark despite the addition of the addition of the non-distinctive term “offers”); MasterCard International Incorporated v. Organization Contact / ,WIPO Case No. D2007-0691 (holding confusingly similar to the MASTERCARD mark despite the addition of the non-distinctive term “apply”).
Further, the disputed domain name merely reverses the order of Complainant's GOLD MASTERCARD mark. Reversing the order of a mark does not render the disputed domain name distinctive from the Complainant's trademark. See, e.g., Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Alexander Albert W. Gore,WIPO Case No. D2003-0483 (holding confusingly similar to the trademark ERMENEGILDO ZEGNA); Agnona S.p.A. v. Mr. Alexander Albert W. Gore,WIPO Case No. D2003-0496 (holding confusingly similar to the mark AGNONA LANERIE).
For the foregoing reasons, the Panel finds that the disputed domain name is confusingly similar to Complainant's MASTERCARD mark and GOLD MASTERCARD mark. B. Rights or Legitimate Interests
While the Complainant bears the initial, burden of proof under 4(a)(ii) of the Policy, the burden shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 (“The Panel notes that Complainant bears the ‘general burden of proof' under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests.”); Neusiedler Aktiengesellschaft v. Vinayak Kulkarni,WIPO Case No. D2000-1769.
The Complainant satisfies this initial burden where it demonstrates it has rights to the disputed domain name, the Respondent has no rights or legitimate interests to the disputed domain name of which it is aware, and the Complainant has not given the Respondent any permission to use the disputed domain name. See Edgar Rice Burroughs, Inc. v. Adtel Communications,WIPO Case No. D2000-0115 (“Uncontested allegations of the Complainant meet, prima facie, the requirements set forth in paragraph 4(a).”).
Here, the Complainant has shown that it has trademark rights in the MASTERCARD and GOLD MASTERCARD marks. The Complainant has not given the Respondent any license or permission to use the disputed domain name nor is the Respondent affiliated with the Complainant. Accordingly, the Respondent must demonstrate his rights or legitimate interests under paragraph 4(c) of the Policy.
According to paragraph 4(c) of the Policy, three non-exclusive circumstances can demonstrate that the Respondent has rights to or legitimate interests in the domain name:
(i) before any notice to the Respondent of the dispute, his 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the 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.
Because the Respondent has offered no response, the Panel finds that the Respondent has not offered any basis that would provide a right to or legitimate interest in the disputed domain name under paragraph 4(c) of the Policy. Indeed, silence of the Respondent is one indication that the Respondent has no rights to or legitimate interest in the disputed domain name. (Bayerische Motoren Werke AG v. Null,WIPO Case No. D2002-0937 (finding silence by the Respondent, together with the renown of the mark at issue, indicates that the Respondent has no rights or legitimate interest in the disputed domain name)).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith in violation of paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) provides:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
The Complainant further alleges that Respondent acquired and began unauthorized use of the disputed domain name long after Complainant's use and registration of its MASTERCARD and GOLD MASTERCARD marks.
First, this Panel notes the substantial authority holding that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith. See, e.g., Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641 (“The registration of domain names obviously relating to the Complaintant is a major pointer to the Respondent's bad faith.”); Pepperdine University v. BDC Partners, Inc.,WIPO Case No. D2006-1003 (“There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use.”).
The Panel infers from this actual and constructive knowledge of Complainant's rights to the MASTERCARD and GOLD MASTERCARD marks, Respondent's intent to attempt to attract Internet users to Respondent's web site by creating a likelihood of confusion with the Complainant's mark for commercial gain. Respondent's directing Internet users to various commercial sites with credit card services is by nature commercial. Previous UDRP panels have consistently held that the appropriation of an established trademark to register a domain name for a “click-through” website constitutes bad faith. See Nokia Corporation v. N a.k.a IBCC,WIPO Case No. D2000-0102 (finding click-through sites to be evidence of bad faith); MasterCard International Incorporated v. Hector Cancel,WIPO Case No. D2007-1121 (holding the likeliness of revenue from “click-through” sites sufficient for finding of bad faith).
The Panel concludes that the Complainant has demonstrated that the Respondent has registered and is using the disputed 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.
Junghye June Yeum
Sole Panelist
Dated: February 4, 2009
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