WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions Case No. D2008-1999 1. The Parties
Complainant is MasterCard International Incorporated of Purchase, New York, United States of America represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
Respondent is Michael J Yanda, Indy Web Productions of Tallahassee, Florida, United States of America represented by Robbins Equitas, United States of America. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , , are registered with Direct Information Pvt Ltd d/b/a PublicDomainR, while the domain name is registered with Webzero Inc, (hereinafter the “Domain Names”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2008. On December 31, 2008, the Center transmitted to Direct Information Pvt Ltd d/b/a PublicDomainR and Webzero Inc. via e-mail a request for registrar verification in connection with the disputed Domain Names. On January 7, 2009 and January 12, 2009, Direct Information Pvt Ltd d/b/a PublicDomainR and Webzero Inc. transmitted by e-mail to the Center their verification responses 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 January 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2009. The Response was filed with the Center on January 11, 2009.
The Center appointed Robert A. Badgley as the sole panelist in this matter on February 19, 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.
Complainant submitted a three-page Reply in Support of Complaint to the Center on February 20, 2009. In its discretion, the Panel has decided to consider the Reply. The Reply was warranted because Complainant could not be reasonably expected to have anticipated Respondent's invocation of, and reliance upon, the two contracts that were discussed in the Response. 4. Factual Background
Complainant describes itself as “a leading global payments solutions company that provides a broad variety of innovative services in support of its global members' credit, deposit access, electronic cash, business-to-business and related payment programs”. Complainant and its predecessors have been in business since 1966, and have used the MASTERCARD mark since 1980. That mark is used in the United States and in more than 200 other countries. It has been registered in the Unites States since 1980, and is registered in most other countries around the globe. Complainant also maintains a significant Internet presence, including a website located at “”.
There can be no doubt that MASTERCARD is a famous mark.
Respondent registered the Domain Names at various times between November 13, 2003 and March 24, 2008. Of the 16 Domain Names at issue, Respondent registered one in 2003, four in 2004, five in 2005, five in 2006, and one in 2008. Thirteen of the Domain Names resolve to a website located at “”, which site provides links to websites offering Complainant's services as well as sites offering services of Complainant's competitors. Another Domain Name resolves to an essentially blank website which simply asks the user to link over to the “” site discussed above. One Domain Name is parked at a standard parking page, while the last Domain Name is passively held. 5. Parties' Contentions A. Complainant
Complainant alleges that the Domain Names are confusingly similar to Complainant's mark that Respondent has no rights or legitimate interests in respect of any of the Domain Names, and that each of the Domain Names was registered and used in bad faith.
Complainant notes that it has been in several previous disputes under the Policy against Respondent, and has prevailed on each prior occasion. Complainant also alleges that Respondent has registered numerous other domain names confusingly similar to other famous trademarks. B. Respondent
Respondent does not dispute that Complainant has rights in the MASTERCARD mark. Nor does Respondent dispute that each of the Domain Names is confusingly similar to Complainant's MASTERCARD mark. Respondent's brief Response focuses entirely on the “rights or legitimate interests” and “bad faith” prongs of the Complaint.
Respondent claims a legitimate interest in respect of each of the Domain Names by virtue of an “Internet Marketing Agreement” dated September 23, 2006 between Respondent and First Premier Bank of Sioux Falls, South Dakota (hereinafter the “Premier Agreement”). Respondent argues that the Premier Agreement “led Respondent to believe that setting up these domain names would benefit Premier, and in turn Complainant, by promoting their credit card services”.
Likewise, Respondent points to an “Affiliate Membership Agreement” with Nationwide Card Services (hereinafter the “NCS Agreement”). Respondent alleges that he signed the NCS Agreement, but the purported agreement annexed to the Response is not signed or even dated. The only date referred to on the document is February 11, 2009, the date of the Response itself. Respondent argues that the NCS Agreement “led Respondent to believe that setting up these domain names would benefit NCS, and in turn Complainant, by promoting their credit card services”.
For essentially the same reasons, Respondent denies being in bad faith within the meaning of the Policy. C. Complainant's Reply
Complainant alleges in its Reply that the NCS Agreement contains provisions which indicate that “Respondent was aware that he did not have the right to register domain names incorporating MasterCard's trademarks”, and that there is no language in the NCS Agreement authorizing or licensing Respondent to use the mark in a domain name or otherwise.
With respect to the Premier Agreement, Complainant asserts that it does not address domain names, but, instead, concerns “the placement of banner advertisements on websites and e-mail marketing campaigns”.
Finally, Complainant argues that, by virtue of the prior disputes between it and Respondent under the Policy, Respondent was clearly on notice that Complainant objects to Respondent's use of Complainant's mark in a domain name. See MasterCard International Incorporated v. Michael J. Yanda,WIPO Case No. D2008-0697 (June 27, 2008); MasterCard International Incorporated v. Indy Web Productions,WIPO Case No. D2008-0198 (March 27, 2008); and MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions,WIPO Case No. D2007-1140 (October 8, 2007). 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy:
(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
There is no question that Complainant has rights in its longstanding and famous MASTERCARD mark.
The Panel further finds that each of the Domain Names is confusingly similar to that mark. First, the Domain Name constitutes a slight typographical error by the omission of an “s” from the Domain Name. See MasterCard International Incorporated v. Acme Mail,WIPO Case No. D2008-0701 (June 30, 2008) (finding confusingly similar to MASTERCARD mark).
Second, the Domain Names and are confusingly similar to Complainant's mark. The superfluous “com” in the one Domain Name and the stray preliminary “ww” in the other do not overcome the confusing similarity between the Domain Names and the strong MASTERCARD mark.
Third, the Panel finds that ten of the Domain Names (, , , , , , , , , ) contain the strong MASTERCARD mark plus a fairly non-distinctive word which may be easily associated with the mark. In these instances, the additional word does little or nothing to distinguish the Domain Name from Complainant's mark.
Fourth and finally, the Panel observes that three of the Domain Names (, , and ) incorporate not only Complainant's mark but also the mark of a third party. Complainant argues that prior Panels have held that the presence of two marks of unrelated parties in a domain name does not in itself diminish the confusing similarity between the domain name in question and the mark held by the complainant. See, e.g., MasterCard International Incorporated v. Indy Web Productions,WIPO Case No. D2008-0198 (March 27, 2008) (transferring and other domain names); Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793 (November 11, 2002) (transferring ).
In connection with these three Domain Names including not only the MASTERCARD mark but also a third party mark, Complainant also argues that, “in such circumstances, Panels have found it appropriate to award the transfer of domains incorporating trademarks of different parties to one complainant without prejudicing the rights of the other trademark owner”. Complainant cites precedents under the Policy for this proposition. Canadian Tire Corporation Limited v. Digi Real Estate Foundation,WIPO Case No. D2006-1117 (November 8, 2006) (transferring ); F. Hoffman-La Roche AG v. Nikolina Angelova,WIPO Case No. D2007-1091 (September 21, 2007) (transferring and ). The Panel agrees with the pragmatic and sensible disposition set forth in those cases, and will follow that course of action here.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122 (March 26, 2001).
It is undisputed that Complainant and Respondent never had any agreement pursuant to which Respondent was granted permission to use Complainant's mark. Rather, as noted above, Respondent claims a legitimate interest in respect of the Domain Names by virtue of two marketing agreements Respondent claims to have concluded with parties other than Complainant.
The Panel need not consider the question whether a respondent could, under the Policy, claim a legitimate interest by virtue of a contract between it and a party other than a complainant. The Panel may avoid this question for the simple reason that it does not find Respondent's story credible.
One problem with Respondent's account, which Respondent never attempts to explain, is that the Premier Agreement was executed effective September 23, 2006. That execution date postdates the registration of all but two ( and ) of the Domain Names by many months or even years. The Premier Agreement bears, in the lower left corner of most pages, a date of July 25, 2006, which appears to suggest that a draft of this purported agreement was at least under contemplation as of July 25, 2006. Even with this additional two-month window of time, there are still only the same two Domain Names whose registration by Respondent postdates that date.
With respect to the NCS Agreement, the version annexed to the Response does not bear a signature, an execution date, or an effective date. It appears, indeed, to have been printed on the same date (February 11, 2009) as the Response was submitted to the Center. The Panel can give no credence to the NCS Agreement as a motivating factor, much less a legitimate motivating factor, in Respondent's decision to register any of the Domain Names.
It is simply impossible to credit Respondent's account of his motivations, given the chronology of events laid before the Panel. Further, the Panel notes that in the prior disputes under the Policy brought by Complainant, Respondent did not submit any response to the complaint and, as such, did not invoke any legitimate interests flowing from the NCS Agreement or the Premier Agreement with respect to the MASTERCARD-formative domain names at issue in those cases. While there is no obligation for a respondent to respond to a complaint under the Policy, Respondent's failure to do so in those other cases lends further support to the conclusion that the NCS Agreement and the Premier Agreement were not the bona fide motivating forces behind Respondent's decision to register the 16 Domain Names at issue in this case.
In addition, as argued in Complainant's Reply, the purported contracts upon which Respondent relies do not appear to confer on Respondent the right to use Complainant's mark in the manner claimed by Respondent.
There is no evidence that Respondent is commonly known by the any of the Domain Names. Moreover, Respondent's linkage of most of the Domain Names to the site cannot be considered a bona fide use under the Policy. There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another's trademark in one's domain name and the commercial use of the domain name in a corresponding website do not confer rights or legitimate interests upon the owner of such a domain name. See, e.g. America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374 (December 11, 2000) (“it would be unconscionable to find that a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the complainant's mark and for the same business”).
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has 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 that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Complainant relies on paragraphs 4(b)(ii) and 4(b)(iv) of the Policy, quoted immediately above, to support its bad faith argument.
With respect to paragraph 4(b)(ii), Complainant relies upon the prior disputes between it and Respondent, and upon Respondent's other registration of domain names incorporating well-known marks. The Panel finds Complainant's argument persuasive, and finds that Respondent is in bad faith under paragraph 4(b)(ii) for his pattern of preclusive registrations. This finding is made with respect to each of the 16 subject Domain Names.
With respect to paragraph 4(b)(iv), the Panel finds it undisputed and obvious that Respondent had Complainant's famous mark in mind when registering the Domain Names. It is reasonable to conclude that Respondent, who claims to have entered into the Premier Agreement and the NCS Agreement, sought to derive commercial gain by linking the Domain Names to the “www.” website. The Panel therefore concludes that Respondent registered all but two of the Domain Names with the intention of seeking to attract, for commercial gain, Internet visitors to his website by creating confusion between the Domain Name and Complainant's mark. This finding does not apply to the Domain Names and , as the former was passively held and the latter was merely parked at a standard parking page.
Finally, the Panel is persuaded by the fact that Complainant has previously brought three cases against Respondent under the Policy. Respondent was officially aware of Complainant's disapproval of Respondent's use of MASTERCARD-formative domain names at least as early as August 15, 2007, when the Center served the Complaint in, MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, supra, on Respondent. That case involved a series of domain names conceptually similar to the Domain Names in the instant case (e.g., ). Respondent's continued use of 15 of the Domain Names in the instant case, after receiving notice of the Complaint in the above cited case, reinforces the conclusion that Respondent has acted in bad faith. The argument is even stronger with respect to the one Domain Name () that was registered after the formal disputes by Complainant were brought to Respondent's attention.
Accordingly, because bad faith registration and use exists under paragraphs 4(b)(ii) and 4(b)(iv), the Panel finds that Policy paragraph 4(a)(iii) 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 names, , , , , , , , , , , , , , , and be transferred to Complainant1.
Robert A. Badgley
Sole Panelist
Dated: February 24, 2009
1 The Panel notes that three of the domain names at issue combine Complainant's marks with what appear to be the trademarks of third parties. As a result, the Panel finds it appropriate to award transfer of these domain names to Complainant without prejudice to the rights of the other legitimate trademark owners.
Full & Egal Universal Law Academy