WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MasterCard International Incorporated. v. L Case No. D2008-1785 1. The Parties
The Complainant is MasterCard International Incorporated of New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is L of Illinois, 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 November 19, 2008. On November 20, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On November 20, 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” 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 25, 2008. On November 26, 2008, Respondent wrote the Center stating that Respondent had attempted to transfer the disputed domain name to Complainant, but could not because the disputed domain name was locked by the registrar. After notification by the Center
of Respondent's apparent offer to transfer the disputed domain name, Complainant, on December 4, 2007, advised the Center that Complainant did not elect to suspend proceedings. On December 5, 2008, the Center notified Respondent that Complainant did not elect to suspend proceedings, and that in accordance with the Rules, paragraph 5(a), the due date for Response remained December 15, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 18, 2008.
The Center appointed William F. Hamilton as the sole panelist in this matter on December 23, 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 been in the payment card business since 1966 and has operated under the name and mark MASTERCARD since at least as early as 1980.
In addition to its international trademark registrations, Complainant has registered numerous domain names containing the name and mark MASTERCARD or variants thereof, including, inter alia, , , , , , and . The earliest of these registered domain names, , was registered on July 27, 1994.
Complainant owns at least twelve (12) United States of America registrations for its MASTERCARD mark, the earliest of these registrations is Registration No. 1,186,117 for the mark MASTERCARD, registered on January 12, 1982.
Complainant also owns over 100 additional United States of America registrations and applications for other marks incorporating the term MASTERCARD, as well as numerous registrations and applications in various jurisdictions worldwide.
Respondent registered the disputed domain name on September 1, 2002. 5. Parties' Contentions A. Complainant
Complainant asserts the disputed domain name is confusingly similar to its MASTERCARD mark because the disputed domain name incorporates the MASTERCARD mark in its entirety and merely adds generic terms. Complainant asserts Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name was registered and is being used in bad faith to attract unsuspecting Internet users to Respondent's website which offers links to general credit card services and competing credit card products. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc.,WIPO Case No. D2003-0185. A. Identical or Confusingly Similar
The Panel finds the disputed domain name is confusingly similar to Complainant's MASTERCARD mark. The disputed domain name is composed of Complainant's well-known mark plus the generic term “creditcards.” It is well established that the addition of generic terms under such circumstances is generally insufficient to avoid a finding of confusing similarity. MasterCard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050 (addition of the generic term “offers” is insufficient to avoid confusion); MasterCard International Incorporated v. Organization Contact/,WIPO Case No. D2007-0691 (addition of the generic term “apply” is insufficient to avoid confusion). B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by respondent, shall be evidence of respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to respondent, respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and 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 Panel finds Respondent has no rights or legitimate interests in the disputed domain name. Respondent does not claim to be commonly known by the disputed domain name. Respondent is not licensed or authorized to register or use the disputed domain name or Complainant's MASTERCARD mark. Respondent does not appear to be using the disputed domain name for non-commercial purposes. Given the present circumstances, Respondent likely was aware of Complainant's MASTERCARD mark when Respondent registered the disputed domain name. MasterCard International Incorporated v. North Tustin Dental Associates,WIPO Case No. D2007-1412 (constructive and actual knowledge of mark resulting from preceding registrations and national and international notoriety). Complainant has established a prima facie case, and Respondent has failed to demonstrate rights or legitimate interests in the disputed domain name. Complainant has thus satisfied paragraph 4(a)(ii) of the UDRP. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line locations, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or locations or of a product.
The Panel finds the disputed domain name was registered and is being used in bad faith. It is apparent that in registering and using Complainant's MASTERCARD mark, Respondent seeks to capitalize on the worldwide reputation and good will associated with Complainant's MASTERCARD mark by attracting unsuspecting Internet users to Respondent's website. The disputed domain name resolves to a parking website composed of links to competitive products and related credit card services. Use of Complainant's MASTERCARD marks to generate click-through revenue in this manner constitutes bad faith. MasterCard International Incorporated v. Keyword Marketing, Inc.,WIPO Case No. D2007-1138 (use of mark to generate click-through revenue indicates 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.
William F. Hamilton
Sole Panelist
Dated: January 6, 2009
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