WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MasterCard International Incorporated v. Activa, Activa Domains Case No. D2009-0496 1. The Parties
The Complainant is MasterCard International Incorporated, Colm Dobbyn of New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States.
The Respondent is Activa, Activa Domains of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names And Registrar
The disputed domain names , and are registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2009. On April 17, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On April 17, 2009, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that:
a) each of the disputed domain names is registered with it;
b) the Respondent is the registrant of each of the disputed domain names;
c) the Respondent's contact details are those specified in the Complaint;
d) the language of the registration agreement for each of the disputed domain names is English; and
e) the domain name was first registered on March 29, 2007;
f) the domain name was first registered on April 7, 2006; and
g) the domain name was first registered on March 4, 2006.
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 on April 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2009. The Respondent did not submit a formal response. On May 6, 2009, however, the Respondent submitted an email to the Center agreeing to transfer the domain names to the Complainant. The Center inquired whether the parties wished to suspend the proceedings for settlement. The Complainant, however, requested the Center to proceed and the Center notified the Respondent's default on May 18, 2009.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 22, 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 the very well-known payment solutions company which has operated payment card and related services throughout the world since 1966, using the name MASTERCARD since at least 1980. It first commenced offering a product under the name Paypass or Mastercard Paypass in 2002.
The Complaint includes evidence of a very large number of registered trademarks incorporating the term MASTERCARD. These include for example:
(a) United States trademark registration No. 11186117, MasterCard, for financial services registered in 1984
(b) United States trademark registration Nos 2856769 and 2874227, MASTERCARD PAYPASS, for computer hardware and financial services registered in, respectively, June and August 2004
(c) UK trademark registration No. 2178989, MASTERCARD, in International Classes 9, 36, 38 registered since 1998
(d) at least 12 registered trademarks for PAYPASS in the United States, Canada, a number of European countries, in European Community and Australia
(e) at least nine other registrations for MASTERCARD PAYPASS in countries other than the United States.
The exhibits to the Complaint also include many other trademark registrations incorporating the word MASTERCARD including, of course, the word and globe device based on two circles and many instances of brand extension in addition to MASTERCARD PAYPASS”. These include (by way of illustration only) MASTERCARD REWARDS, MASTERCARD PREPAID SERVICES, MASTERCARD M/CHIP, MASTERCARD E-P3, MASTERCARD WORKING, MASTERCARD SECURECODE, PLATINUM MASTERCARD, WORLD MASTERCARD.
At the time of writing, each of the disputed domain names resolved to websites which appear to be fairly typical “parking” search-type portals for the generation of pay-per-click revenues.
In the case of the and the search pages are for credit card related products, many of which are for credit cards other than the Complainant's product. For example, the second item listed in each is “Visa Card”. The domain name resolves to a similar search-type page for mainly online payment services. The first item listed being for payment via “Paypal”. 5. Discussion And Findings
As noted above, the Respondent has submitted an email, using the email address which the Registrar, Wild West Domains Inc., has confirmed is the correct contact email address for the registrant of the domain names, in which the Respondent consents to the transfer of the disputed domain names to the Complainant.
Numerous panels have accepted that an order for transfer is appropriate when consented to by a respondent, either immediately or on a showing of a prima facie case by the complainant in such circumstances. See, e.g., Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207; Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg,WIPO Case No. D2006-1336; Amgen Inc. v. Texas International Property Associates,WIPO Case No. D2007-0155; Levantur, S.A. v. Rarenames, WebReg,WIPO Case No. D2007-0857; Instituto del Fondo Nacional de la Vivienda para los Trabajadores v. Whois Privacy Protection Service Inc., Demand Domains, Inc.,WIPO Case No. D2007-0917; Fry's Electronics Inc. v. Texas International Property Associates,WIPO Case No. D2007-0343; and, Tom Stoppard, Tom Stoppard Limited v. Texas International Property AssociatesWIPO Case No. D2007-1404.
In this case, the Complainant has clearly proved entitlement to the registered trademarks MASTERCARD and PAYPASS referred to in section 4 above.
The domain name is identical to the Complainant's registered trademarks for PAYPASS, disregarding the purely functional addition of the gTLD, “.net”.
There can be no doubt that the other two disputed domain names are confusingly similar to the Complainant's proved rights in MASTERCARD alone. The combination of CHEVRON with MASTERCARD in one case would not dispel the risk of confusion, particularly as the Complainant has demonstrated a practice of brand extension. In addition, decisions under the Policy have often recognised that the combination of two different persons' trademarks in the one domain name can be confusingly similar. The Panel considers that the particular combination here would clearly be taken by a large section of the public as indicating some association with the Complainant or its products.
The Respondent is not affiliated with or licensed by the Complainant in any way. None of the disputed domain names can be said to be derived from the Respondent's own name and the Respondent has not sought to suggest any basis for derivation.
Instead, the Respondent has used each of the disputed domain names to resolve to websites which refer the browser to goods and services many of which compete with the Complainant's products. This use of the Complainant's trademarks to divert browsers to potentially competitive products is not use in good faith which can be taken to found a right or legitimate interest in the disputed domain names under the Policy.
Each of the domain names was registered well after the Complainant acquired its rights. It cannot credibly be argued (nor is it) that any of the three disputed domain names could have been adopted for any reason other than their trademark significance as indicating the Complainant's products.
In such circumstances, the Panel finds the record demonstrates a very clear case of contravention of the Policy and it is entirely appropriate to act on the Respondent's consent to transfer. 6. 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 the Complainant.
Warwick A. Rothnie
Sole Panelist
Dated: June 4, 2009
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