WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MasterCard International Incorporated v. Mike Morgan Case No. D2008-1927 1. The Parties
Complainant is MasterCard International Incorporated, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
Respondent is Mike Morgan, Newfoundland, Canada. 2. The Domain Names and Registrar
The disputed domain names , , , , , are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2008. On December 18, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On December 18, 2008, eNom 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 December 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 13, 2009.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on January 23, 2009. 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.
Mastercard manages a family of famous and widely accepted payment card brands including MASTERCARD, MAESTRO and CIRRUS and serves financial institutions, consumers and businesses in over 210 countries and territories, including Canada.
In April 1980, Mastercard filed an application with the United States Trademark Office to register the trademark MASTERCARD. Complainant is the owner of numerous trademark registrations for MASTERCARD across the world including U.S. and Canadian trademark registrations.
In addition to its 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.
Respondent registered the disputed domain names on the following dates:
- on January 25, 2008;
- and on August 4, 2008;
- on February 9, 2008;
- and on September 29, 2008. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain names are confusingly similar to its MASTERCARD mark because:
- the disputed domain names and are simply misspellings of the trademark MASTERCARD;
- the disputed domain names , and incorporate the trademark MASTERCARD in its entirety, regardless the fact that they include other generic terms;
- the disputed domain name incorporates the trademark MASTERCARD in its entirety, regardless the fact that it includes another trademark EASYJET.
Complainant also contends that Respondent has no rights or legitimate interests in the disputed domain names and that the disputed domain names were registered and are being used in bad faith. B. Respondent
Respondent did not reply to 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. A. Identical or Confusingly Similar
Complainant produced evidence of numerous MASTERCARD trademark registrations, including U.S. and Canadian trademark registrations. Complainant demonstrated to the Panel that its MASTERCARD trademarks are among other things well established in Canada, being the country where Respondent is located.
The disputed domain name only differs from Complainant's trademark by the addition of the letter “e”. The disputed domain name only differs from Complainant's trademark by the ommission of the letter “e” and the addition of the letter “s”. The two aforementioned disputed domain names only show minor differences with Complainant's MASTERCARD mark and constitute common mistypings of Complainant's mark which appear to be deliberate a practice known as “typosquatting” (The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM,WIPO Case No. D2001-1492, A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman,WIPO Case No. D2006-0517, MasterCard International Incorporated v. Acme Mail, WIPO Case No. D2008-0701).
The disputed domain names , and differ from Complainant's trademark MASTERCARD by the adjunction of the generic terms “easysavings”, “easysave” and “goldfish”. Several prior UDRP panels have held that the addition of a non-distinctive, descriptive or generic terms do not change the overall impression of a mark. See, e.g., Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007, MasterCard International Incorporated v. Organization Contact / , WIPO Case No. D2007-0691
The disputed domain name differs from Complainant's trademark MASTERCARD by the adjunction of a second trademark EASYJET belonging to a third party distinct from Respondent. Several prior UDRP panels have held that the addition of a second trademark in the disputed domain name do not prevent the likelihood of confusion between the disputed domain name and Complainant's mark. Mastercard International Incorporated v. Indy Web Productions, WIPO Case No. D2008-0198; Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793.
Accordingly, the Panel decides that the disputed domain names , , , , , and are confusingly similar to a mark in which Complainant has rights.
The Panel finds that Complainant has provided sufficient evidence to establish element 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Panel accepts the Complainant's submissions that Respondent is not affiliated with or related to Complainant, that Respondent is not licensed by Complainant or otherwise authorized to use Complainant's trademark, that Respondent is not generally known by any of the domain names at issue, has not acquired any trademark or service mark rights in the names, and is not making bona fide fair use of Complainant's marks.
Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Policy paragraph 4(a)(ii) provides that as a consequence of Complainant's prima facie case in support of its allegations, the burden shifts to Respondent to produce evidence of its rights or legitimate interests. Respondent has elected not to respond.
As a result, the Panel finds that Complainant has established element 4(a)(ii) of the policy. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain names in bad faith. Respondent is using Complainant's MASTERCARD trademark to attract Internet users to websites associated with the disputed domain names offering goods and services of both Complainant and its direct competitors. This behaviour is sufficient to evidence Respondent's bad faith in relation to the registration and use of the disputed domain name. See MasterCard International Incorporated v. Juan Curtis,WIPO Case No. D2008-1295; MasterCard International Incorporated v. Keyword Marketing, Inc.,WIPO Case No. D2007-1138; MasterCard International Incorporated v. Hector Cancel,WIPO Case No. D2007-1121; Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing,WIPO Case No. D2005-0313.
Further, the Panel finds that Respondent likely registered the disputed domain names with full knowledge of Complainant's rights in the MASTERCARD trademark. Respondent's awareness of Complainant's MASTERCARD trademark may be inferred from the substantial use of said trademark across the world, including in Canada, where Respondent is based, prior to the registration of the disputed domain names. See Lancôme Parfums et Beauté et Compagnie, Laboratoire Garnier et Compagnie, L'Oreal SA, L'Oreal USA Creative v. Therese Kerr,WIPO Case No. D2008-1748; Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911.
Hence, the Panels finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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 names, , , , , , be transferred to Complainant.
Nathalie Dreyfus
Sole Panelist
Dated: February 6, 2009
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