WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MasterCard International Incorporated v. Global Access Case No. D2008-1940 1. The Parties
The Complainant is MasterCard International Incorporated of New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, of United States .
The Respondent is Global Access, of United Kingdom of Great Britain and Northern Ireland, represented by Renova, Ltd. of Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2008. On December 19, 2008, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On December 22, 2008, F 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” 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 the Respondent of the Complaint, and the proceedings commenced December 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response January 19, 2009. The Response was filed with the Center on January 19, 2009.
The Center appointed John Swinson, M. Scott Donahey and Diane Cabell as panelists in this matter on February 6, 2009. The Panel finds that it was properly constituted. Each member of 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.
On February 6, 2008, the Complainant submitted an unsolicited Reply to the Respondent's Response. On February 17, 2009, the Respondent submitted an unsolicited Sur-Reply. The Sur-Reply requested the Panel not to take into account the Complainant's Reply because it is unsolicited supplemental filing and therefore is improper. In the event that the Panel did not reject the Complainant's Reply, the Sur-Reply provided responses to the Complainant's arguments in the Reply.
The Panel read both the Reply and the Sur-Reply. The Rules and Supplemental Rules do not allow for a Reply or Sur-Reply. In this case, neither contained any additional legal arguments that could not have been addressed in the Complaint or Response; both did however briefly shed light on a possible change to the URL to which the disputed domain name redirected, therefore the Panel's decision is based on the Complaint and the Response except to the limited extent that the Reply and Sur-Reply discuss the changed redirection of the disputed domain name.
The Panel also finds it appropriate to comment on a matter raised by the Respondent in
the Response. In the Response, the Respondent states: “Respondent reserves all rights
as to whether or not the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. Due to the limitation of space allowed for a response, Respondent does not presently provide an argument as to this element”. The Policy does not permit such reservation of rights. See, e.g., Starline Publications, Inc. v. Texas International Property Associates,WIPO Case No. D2008-1824; Malley's Candies Inc. v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1803. The Panel may, as provided under the Rules, draw appropriate inferences therefrom, 4. Factual Background
The Complainant is a global payments solutions company that has been in the payment card business since 1966 and has operated under the MASTERCARD name since at least as early as 1980.
The Complainant has numerous United States trademarks for MASTERCARD in both word and logo form. For example, the Complainant is the registered owner of the MASTERCARD word trademark (registration number 2,212,783) which was registered on December 22, 1998, the MasterCard logo (registration number 2,077,221) which was registered on July 8, 1997 and the MasterCard logo (registration number 1,257,853) which was registered on November 15, 1983.
The Complainant also has registered trademarks for MASTERCARD in word and logo form in numerous other jurisdictions.
The Respondent acquired the disputed domain name on April 28, 2006. 5. Parties' Contentions A. Complainant
The Complainant contends that:
The disputed domain name is identical or confusingly similar to the Complainant's MASTERCARD trade marks
The disputed domain name is confusingly similar to the MASTERCARD mark because it incorporates the entirety of the Complainant's MASTERCARD mark. The disputed domain name adds only the letter “s” to the MASTERCARD mark. Therefore, the most dominant feature of the disputed domain name is Complainant's registered MASTERCARD mark. The addition of the letter “s” does not change the overall impression of a mark or avoid confusion.
The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Respondent is not affiliated or related to the Complainant in any way, or licensed by the Complainant or otherwise authorized to use the MASTERCARD mark.
The Respondent is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in the name.
When the Complaint was filed, the dispute domain name resolved to the website “”. At this website, the Respondent was not offering the goods or services at issue, but was merely using the disputed domain name to list links to external websites, some of which offer services from competitors of the Complainant. Even though some of those links pertain to the Complainant, many do not.
Since the Complaint was filed the disputed domain name resolves to the website “”. The Respondent cannot demonstrate rights or legitimate interests merely by asserting that the registrant of has an affiliation with the Complainant.
At neither of the above websites did the Respondent actually offer the goods and services that were advertised. The Respondent was merely directing the disputed domain name to the websites to obtain click through revenue.
The disputed domain name was registered and is being used in bad faith
The disputed domain name is deliberately being used for commercial gain to attract Internet users to the Respondent's website based on a likelihood of confusion with the Complainant's MASTERCARD marks.
The disputed domain name apparently generates revenue for the Respondent when confused consumers “click through” to sites offering the goods and services of both the Complainant and the Complainant's direct competitors.
The disputed domain name links to services directly competing with the Complainant's services. B. Respondent
The Respondent contends that:
The Respondent has rights or legitimate interests in respect of the disputed domain name
The disputed domain name resolves to “” which is a website that depicts various offers for MasterCard credit cards offered by legitimate third parties who are licensed to issue MasterCard credit cards.
The use of the plural in the disputed domain name is significant because it indicates that a consumer is interested in MasterCards in general, not a specific MasterCard and not the Complainant.
The Respondent is authorized by MetaBank (a licensee of the Complainant) to advertise MasterCards offered by MetaBank. The Respondent is therefore a reseller of goods and services and has a legitimate interest in the disputed domain name because the Respondent is actually offering the goods and services, the disputed domain name is used to only sell the MASTERCARD trademark goods, the disputed domain name accurately discloses the Respondent's relationship to the Complainant and the Respondent is not trying to corner the market in all domain names.
The Respondent has never intentionally placed links on the disputed domain name to the Complainant's competitors. The Complainant provided no evidence that the disputed domain name once resolved to “”.
The disputed domain name was not registered and is not being used in bad faith
The Respondent did not register the disputed domain name to sell it to the Complainant or its competitors.
The Respondent did not register the disputed domain name to preclude the Complainant from reflecting its asserted marks in a domain name.
The Respondent did not register the disputed domain name to attract users by creating a likelihood of confusion. 6. Discussion and Findings
To succeed, the complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the complainant. A. Identical or Confusingly Similar
To prove this element, the Complainant must have rights in a trademark or service mark, and the disputed domain name must be identical or confusingly similar to the Complainants' trademark or service mark.
The Complainant has numerous registered trademarks, in many jurisdictions, for MASTERCARD in both word and logo form. Some of the Complainant's MASTERCARD trademark registrations are set out above in paragraph 4. The Panel is therefore satisfied that the Complainant has trademark rights in the term MASTERCARD.
The disputed domain name completely incorporates the Complainant's MASTERCARD trademark and merely adds a plural and the “.com” gTLD suffix. Previous WIPO UDRP panels have held that where a respondent has used a trademark in its entirety but has merely made it a plural, it is identical or confusingly similar to the disputed domain name (see Joseph Patelson Music House, Ltd. v. Modern Empire Internet Ltd., WIPO Case No. D2007-0723).
Further, the addition of, for example the “.com” suffix does not impact on the analysis of whether a disputed domain name is identical or confusingly similar to the disputed domain name (see Priority One Financial Services Inc. v. Michael Cronin, WIPO Case No. D2006-1499 and Laramar Group, L.L.C. v. XC2, WIPO Case No. D2006-0617).
The Respondent chose not to make any response to the Complainants' submission that the disputed domain name is identical or confusingly similar to the Complainant's MASTERCARD trademark.
The Panel therefore finds that, in the circumstances of this case, the disputed domain name is identical or confusingly similar to the Complainant's MASTERCARD trademark. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Respondent claims that it has rights or legitimate interests in the disputed domain name because it is a reseller of MASTERCARD brand goods and services. The Respondent relied on the principles in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 that a reseller can make a bona fide offering of goods and services if the following elements are satisfied:
(i) the reseller is actually offering the goods or services at issue;
(ii) the reseller uses the site only to sell the trademark goods;
(iii) the site must accurately disclose the registrant's relationship with the trademark owner; and
(iv) the reseller must not try to corner the market in all domain names.
There is conflicting evidence from the parties as to whether, at the time that the Complaint was filed, the disputed domain name resolved to the website “”. The website “” provided pay per click links to websites advertising MASTERCARD products as well as to websites for products directly in competition with the Complainant. The Panel was unable to confirm whether the disputed domain name once resolved to “”, as the evidence provided on this point in the Complaint was slim.
Currently, the disputed domain name resolves to the website “” which allows customers to apply for “SilverCard”, a prepaid MASTERCARD offered by MetaBank.
The Panel is not satisfied that all of the Oki Data elements outlined above have been met by the Respondent, whether the disputed domain name resolved to or .
The Respondent is not itself directly offering MASTERCARD products to the public, and there is no evidence that the Respondent has itself ever sold or resold MASTERCARD products.
In this Panel's view, pay per click website such as “” may not, as a general matter, fall within the Oki Data principals, primarily because the operator of such a pay per click website is not a reseller. Providing pay per click links to another's product is different to offering for sale and reselling another's product.
(In addition, assuming that the disputed domain name resolved to “”, there is evidence to suggest that this website provide links to competing products, such as DiscoverCard which would squarely remove such a domain name – whether or not reached through redirection from the OkiData principles.)
Similarly, at the website “”, the Respondent was not itself offering the SilverCard prepaid MASTERCARD. The SilverCard prepaid MASTERCARD was being offered by MetaBank, a bank based in Iowa and South Dakota in the United States. The Respondent claimed that it was authorized by MetaBank (who is not a party to the present proceedings) to advertise the SilverCard prepaid MASTERCARD. However, the affiliation agreement supplied by the Respondent does not mention either MetaBank or the Respondent (it mentions only a Nationwide Card Services, and the only relevant date is that on the printout of January 19, 2009) nor is it clear that any agreement MetaBank may have would grant rights to use the MASTERCARD mark in a domain name. The Panel is therefore not satisfied that the Respondent was authorized by MetaBank to advertise the SilverCard prepaid MASTERCARD.
In any event, under the circumstances here, merely redirecting the disputed domain name event if to the website of a legitimate reseller is not sufficient to show rights or legitimate interests in the disputed domain name within the OkiData principals or otherwise. The situation may be different if there is pre-existing bona fide formal legal arrangement between the legitimate reseller who itself would have a claim to rights or legitimate interests in the disputed domain name and the domain name owner specifically relating to the redirection of the domain name, but there is no evidence of such an arrangement here.
The Panel is satisfied that the Respondent is not a reseller who is making a bona fide offer of goods and services and that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
As stated above, the disputed domain name currently resolves to a website located at “”, and prior to this, may have resolved to a website located at “”.
Although not entirely clear from the Complaint or the Response, the website located at “” appeared to contain a link, directly or indirectly, to a product called “DiscoverCard” which was offered by a competitor of the Complainant. Therefore, if the disputed domain name ever resolved to this website, it was being used by the Respondent to provide links to products in direct competition with the Complainant's MasterCard products. This would demonstrate that the Respondent used the disputed domain name in bad faith pursuant to paragraph 4(b)(iii) of the Policy.
In relation to the website located at “”, as stated above, the Respondent did not provide sufficient evidence to support its claim that it is authorized by MetaBank to redirect the disputed domain name to the website at which the MetaBank offer is presented.
Consequently, the Respondent is using the disputed domain name to create the assumption that there is an affiliation, however indirect, between the Complainant and the Respondent, which demonstrates bad faith pursuant to paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that Paragraph 4(a)(iii) of the Policy is satisfied. 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.
John Swinson
Presiding Panelist
M. Scott Donahey
Panelist
Diane Cabell
Panelist
Dated: February 20, 2009
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