WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MasterCard International Incorporated v. PLUTO DOMAIN SERVICES PRIVATE LIMITED Case No. D2008-1942 1. The Parties
The Complainant is MasterCard International Incorporated, Purchase, New York, of United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States.
The Respondent is PLUTO DOMAIN SERVICES PRIVATE LIMITED, Mumbai, Maharashtra, of India. 2. The Domain Name and Registrar
The disputed domain name is registered with Lead Networks Domains Pvt. Ltd. 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 Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On December 30, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 7, 2009. The Center verified that the Complaint together with the amendment to 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 on January 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 30, 2009.
The Center appointed Adam Samuel as the sole panelist in this matter on February 9, 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
The Complainant is an issuer of credit cards known in many countries for this activity. It has registered numerous trademarks including the words “mastercard” in various countries. In the United States, it owns notably registration numbers 1257853, dated November 15, 1983, 2077221 dated July 8, 1997, 2212783, dated December 22, 1998, and 2168736 dated June 30, 1998, for MASTERCARD. The Complainant has many other trademark registrations for this name and others which include the name MASTERCARD in the United States and a variety of other countries going back to 1980 when it first filed an application to register MASTERCARD as a trademark in the United States. 5. Parties' Contentions A. Complainant
What follows are the Complainant's contentions. It does not follow that the Panel accepts them in their entirety.
The Complainant is a leading global payments solutions company providing a broad variety of innovative services in support of its global members' credit, deposit access, electronic cash, business-to-business and related payment programs. The Complainant, through its predecessors in interest, has been in the payment card business since 1966 and has operated under the MASTERCARD name and mark since at least as early as 1980. The Complainant 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 India.
In April of 1980, the Complainant filed an application with the United States Patent and Trademark Office to register the trademark MASTERCARD. Since that date, the Complainant has gone to great lengths to protect the valuable goodwill in its MASTERCARD name and mark and has registered its mark in practically every nation around the world. In addition to its international trademark registrations, MasterCard has registered numerous domain names containing the MASTERCARD name and mark or variants thereof. The earliest of these registered domain names, , was registered on July 27, 1994, long prior to the Respondent's registration of the disputed domain name.
As a result of the care and skill exercised by the Complainant, the MASTERCARD mark has become famous, symbolizing an enormous amount of goodwill. MASTERCARD is one of the most famous and widely recognized trademarks in the world.
MasterCard owns numerous United States registrations for its MASTERCARD mark. In addition, MasterCard owns over 100 United States registrations and applications for other marks incorporating the term “Mastercard”.
According to the WhoIs records, the disputed domain name was registered on August 26, 2007, subsequent to the Complainant's adoption and registration of the famous MASTERCARD mark.
Currently, the disputed domain name resolves to a website containing links to websites offering services of the Complainant and its competitors.
The disputed domain name is a close misspelling of MASTERCARD, with the only difference being the deletion of one letter, namely an “a”, and the addition of an “s” at the end. These minor alterations of the Complainant's famous trademark results in a domain name confusingly similar to the MASTERCARD mark and leads to the probability that Internet users will mistakenly believe that the Respondent, or the website located at the disputed domain name, is affiliated with MasterCard.
The Respondent is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in the name or marks. Moreover, the Respondent is not offering the goods or services at issue, but is 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. Using the Complainant's MASTERCARD mark to bring Internet users to a website that contains links to both the Complainant's products and the products of the Complainant's competitors does not constitute a bona fide offering of goods or services.
Thus, the Respondent has registered and is using the disputed domain name to unlawfully divert and siphon off visitors seeking the Complainant's MASTERCARD websites. The Respondent's use of the disputed domain name for such purpose is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Therefore, the Respondent does not have rights or a legitimate interest in the disputed domain name under the Policy, paragraph 4(a)(ii).
The disputed domain name is being deliberately used for commercial gain to attract Internet users to the Respondent's website based on a likelihood of confusion with the Complainant's MASTERCARD mark, which satisfies the requirement of paragraph 4(b)(iv) of the Policy.
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 its direct competitors. Use of the Complainant's MASTERCARD mark to generate “click through” revenue in this manner constitutes bad faith.
The disputed domain name offers links to services directly competing with MasterCard's services. Such use of the MASTERCARD mark is clearly a bad faith use in violation of the Policy, paragraph 4(b)(iv). The Respondent acquired the disputed domain name long after the Complainant's adoption, use and registration of its MASTERCARD mark. In addition, at the time the disputed domain name was registered, the Complainant had made substantial use of its MASTERCARD mark in the United States, India and worldwide. Therefore, the Respondent had actual notice of the Complainant's rights in its MASTERCARD mark. There is no plausible reason for the Respondent's selection of the disputed domain name other than as a deliberate attempt to profit unfairly from confusion with the Complainant's MASTERCARD mark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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. A. Identical or Confusingly Similar
The Complainant owns a trademark registration for the name MASTERCARD going back to 1983. The disputed domain name consists of that name minus a second letter “a” and the addition of the pluralising “s” along with the gTLD suffix “.com”. The only message that the domain name conveys to most Internet users is that it is a mistyping of the Complainant's trademark with the well-known Internet gTLD suffix “.com”. “Mastercrds” has no other meaning. For these reasons, the disputed domain name is confusingly similar to the Complainant's mark. B. Rights or Legitimate Interests
There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent is not called by anything remotely connected to the disputed domain name or the Complainant's trademark. It has not asserted any rights or legitimate interests in either name.
For these reasons, on the basis of the available evidence, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The name “mastercrds” has no independent existence or meaning except as a misspelling of the Complainant's trademark. This mark was registered and become famous worldwide since well before the disputed domain name was created. It is impossible, at least without a Response to the Complaint, to identify a reason why the Respondent registered the disputed domain name other than to attract business or Internet users to its site who were looking for a site connected to the Complainant's trademark or business.
According to the Complaint, the Respondent was seeking to market competing products to those of the Complainant through the disputed domain name. At present, the Respondent appears to be seeking to exploit the disputed domain name and by extension the Complainant's trademark to earn money through click-throughs to other sites marketing various products and services.
The only explanation of what has happened is that the Respondent's motive in registering and using the disputed domain name seems to be, as the Complainant says, simply to disrupt the Complainant's relationship with its customers or potential customers or attempt to attract Internet users for potential gain. These both constitute evidence of registration and use in bad faith: paragraph 4(b)(iii) & (iv) of the Policy.
This conclusion is supported by the view expressed in Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568:
“Typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter ‘intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] website by creating a likelihood of confusion with the complainant's mark as to the source' of the website. Here such conduct was undertaken to send Complainant's customers to a site that promoted directly competing services.”
For all these reasons, the Panel concludes that the domain name was 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 Complainant.
Adam Samuel
Sole Panelist
Dated: February 23, 2009
Full & Egal Universal Law Academy