WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MasterCard International Incorporated v. Miguel Gila Case No. D2008-1968 1. The Parties
Complainant is MasterCard International Incorporated, Purchase, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States.
Respondent is Miguel Gila, Puerto Iguazu, Argentina. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Backslap Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2008. On December 23, 2008, the Center transmitted by email to Backslap Domains, Inc. a request for registrar verification in connection with the Disputed Domain Name. On December 23, 2008, Backslap Domains, Inc. 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 Complainant on January 5, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 7, 2009.
Pursuant to a request for clarification made by the Center, the Registrar also provided to the Center by email of December 29, 2008 links to a page on its website where its standard registration agreement is made available in English. The Center consequently informed the Registrar by email of December 29, 2008 that it would proceed on the basis that such registration agreement in English was applicable to the Disputed Domain Name, unless otherwise informed by the Registrar, whereby no such information was given. The Panel is thus satisfied that the proceedings shall be conducted in English pursuant to paragraph 11 of the Rules.
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”), 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 January 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2009. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on February 3, 2009.
The Center appointed Jacques de Werra as the sole panelist in this matter on February 17, 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 as early as 1980.
Complainant manages a family of payment card brands including MASTERCARD, MAESTRO and CIRRUS and serves financial institutions, consumers and businesses in over 210 countries and territories.
In April 1980, MasterCard filed an application with the United States Patent and Trademark Office to register the trademark MASTERCARD. Complainant is now the owner of numerous trademark registrations for MASTERCARD across the world.
Since 1997, Complainant has used the term PRICELESS in its advertising campaigns in order to promote its services which have run in 105 countries and in 48 languages. Complainant has also registered the PRICELESS trademark in various countries, including in the United States (registration number 2,370,508 dated July 25, 2000) for financial services. Complainant has also furnished a list of trademark registrations for PRICELESS in various countries including Canada, Mexico, Denmark, France, Spain, the United Kingdom of Great Britain and Northern Ireland and Australia.
In addition to its trademark registrations, Complainant has registered numerous domain names containing the MASTERCARD trademark or variants thereof or the PRICELESS trademark, including, inter alia, , , , , , , and . The earliest of these domain names, , was registered on July 27, 1994.
The Disputed Domain Name was registered on October 15, 2004. Based on evidence filed by Complainant, the Disputed Domain Name resolves to a website containing links to websites offering the services of Complainant and of its competitors. 5. Parties' Contentions A. Complainant
Complainant contends that the Disputed Domain Name is confusingly similar to its MASTERCARD and PRICELESS trademarks because it incorporates the entirety of these trademarks without alteration.
Complainant further contends that Respondent lacks rights or legitimate interests in the Disputed Domain Name because, inter alia, Respondent's offering of the services of third party competitors of Complainant through links on its website is not a bona fide offering of services, and does not constitute fair use of Complainant's trademarks.
Complainant finally argues that Respondent registered and it is using the Disputed Domain Name in bad faith, inter alia, by intentionally for commercial gain attracting Internet users to its website and by profiting unfairly from confusion with Complainant. 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 is the owner of different trademark registrations for MASTERCARD and for PRICELESS in various countries.
Given that the Disputed Domain Name incorporates the trademarks MASTERCARD and PRICELESS without addition, it creates a confusing similarity with these trademarks owned by Complainant. See, by analogy, Pfizer Inc. v. NA,WIPO Case No. D2005-0072 (holding that combining the two trademarks PFIZER and VIAGRA into a domain name - - merely serves to enhance the possibility that the public will be confused as to source, sponsorship and affiliation).
Accordingly, the Panel holds that the Disputed Domain Name is confusingly similar to the trademarks MASTERCARD and PRICELESS in which Complainant has rights.
The Panel thus finds that Complainant has established that the condition of 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Panel accepts the Complainant's uncontradicted 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 the Disputed Domain Name, that he has not acquired any trademark or service mark rights in the Disputed Domain Name and that he is not offering his own goods or services on the website connected to the Disputed Domain Name.
Based on Complainant's uncontradicted evidence, it appears that Respondent is using the Disputed Domain Name and Complainant's trademarks to direct Internet users to a website offering services directly competitive with those of Complainant. On this basis, Respondent is acting solely as a conduit to third party offers of services, and is presumably receiving some form of compensation for click-throughs to such third party offers. The Panel thus holds that Respondent is taking advantage of the goodwill associated with Complainant' s trademarks to offer services of third parties, including direct competitors of Complainant. This does not constitute a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139.
As a result, the Panel finds that Complainant has established that the condition of 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the Disputed Domain Name in bad faith.
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the [C]omplainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] website or location or of a product or service on [its] website or location” (paragraph 4(b)(iv) of the Policy).
In this case, Complainant has duly established that Respondent is using Complainant's MASTERCARD and PRICELESS trademarks in the Disputed Domain Name in order to attract Internet users to a website associated with the Disputed Domain Name offering goods and services of Complainant and of 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, e.g., 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 accepts that Respondent registered the Disputed Domain Name with full knowledge of Complainant's rights in the MASTERCARD and PRICELESS trademarks. Respondent's awareness of Complainant's MASTERCARD and PRICELESS trademarks may be inferred from the substantial use of said trademarks across the world prior to the registration of the Disputed Domain Name. See, e.g., MasterCard International Incorporated v. Kelvin Mackole,WIPO Case No. D2008-0702.
As a result, the Panel finds that Complainant has proven that the condition of paragraph 4(a)(iii) of the Policy is met. 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.
Jacques de Werra
Sole Panelist
Dated: March 3, 2009
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