WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MasterCard International Incorporated v. Jose Carlos Bisognin Panzenhagen Case No. D2009-0864 1. The Parties
Complainant is MasterCard International Incorporated of Purchase, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.
Respondent is Jose Carlos Bisognin Panzenhagen of Porto Alegre, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2009. On June 30, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same day, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name. 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 July 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 23, 2009. The Panel is satisfied that the Center discharged its responsibility to employ reasonably available means calculated to achieve actual notice to Respondent, pursuant to Rules, paragraph 2(a).
The Center appointed Roberto Bianchi as the sole panelist in this matter on July 30, 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 following facts and circumstances are not contested:
- Complainant is a global payments solutions company providing a broad variety of services in support of its members' credit, deposit access, electronic cash, business-to-business and related payment programs. MasterCard is in the payment card business since 1966 and has operated under the MASTERCARD name and mark since 1980. MasterCard manages a family of famous and widely accepted payment card brands including MASTERCARD and serves financial institutions, consumers and businesses in over 210 countries and territories.
- Complainant owns over 100 United States trademark registrations and applications for other marks incorporating the term “Master Card”, such as, MASTERCARD Reg. No. 1,186,117 (registered on January 12, 1982, covering financial services-namely, providing bank card services), and MASTERCARD ONLINE, Reg. No. 2,236,542 (registered on April 6, 1999, covering financial services, namely, providing a wide range of information and analysis to financial institutions by electronic means in connection with credit, debit, stored value and other payment cards, etc.).
- Also, Complainant owns several Brazilian trademark registrations for its MASTERCARD mark, such as MASTERCARD, Reg. No. 800036930 (registered on November 26, 1985, covering credit card services).
- Respondent registered the disputed domain name on April 8, 2009.
- On May 22, 2009, on the website at the disputed domain name, under the title “Bem-vindo à Mastercard Brasil” - which may be translated as “Welcome to MasterCard Brazil”- Respondent posted a form containing fields to be completed by users, including credit card number, registered name, card expiration date and verification code. At the end of this form there is a button reading “Proseguir”, which may be translated as “Continue”.
- On June 29, 2009, on the website at the disputed domain name, under the title “Welcome to ” Respondent posted a list of related searches including “Online Bill Payment”, “Credit Card Payments”, “Payment Processing Solutions”, “Payment Processing Services”, “Mastercard Visa Merchant”, “Apply For Visa” and “Best Buy Visa”. After clicking the link titled “MasterCard Visa Merchant”, the user is re-directed to a link for PayPal, where merchants are offered to lower their merchant online account costs. 5. Parties' Contentions A. Complainant
Complainant contends the following:
The disputed domain name is confusingly similar to Complainant's MASTERCARD and MASTERCARD ONLINE marks because it incorporates the entirety of its MASTERCARD and MASTERCARD ONLINE marks.
Respondent is not affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use the MASTERCARD or MASTERCARD ONLINE marks. Respondent is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in that name or mark. Respondent is not currently offering the goods or services at issue, but is merely using the domain name to list links to external websites, some of which offer goods and services from competitors of Complainant. Even though some of those links pertain to Complainant, many do not. Using Complainant's MASTERCARD and MASTERCARD ONLINE marks to bring Internet users to a website that contains links to both Complainants' products and the products of Complainant's competitors does not constitute a bona fide offering of goods or services. In addition, Respondent previously used the disputed domain name in association with a website designed to mislead users into providing personal information for Respondent's commercial gain. Respondent's website is a classic example of a phishing website. Therefore, Respondent does not have rights or legitimate interests in the disputed domain name.
The disputed domain name is deliberately used for commercial gain to attract Internet users to Respondent's website based on a likelihood of confusion with Complainant's MASTERCARD and MASTERCARD ONLINE marks. The website associated with the disputed domain name offers links to goods and services directly competing with MasterCard's products. Such use of the MASTERCARD and MASTERCARD ONLINE marks is a bad faith use in violation of the Policy. Respondent apparently generates revenue for himself when confused consumers “click through” to sites offering the goods and services of both MasterCard and MasterCard's competitors. This use of Complainant's marks to generate “click through” revenue constitutes bad faith. Respondent registered and is using the disputed domain name with constructive and actual knowledge of MasterCard's rights. There is no plausible reason for Respondent's selection of the disputed domain name other than as a deliberate attempt to profit unfairly from confusion with MasterCard's marks. Respondent used MasterCard's marks in a domain name to attract Internet users to a phishing website, displayed MasterCard's marks on the website to deceive users into divulging private information, and likely gained commercially from the illegitimate use of users' private information. These actions constitute bad faith registration and use. B. Respondent
Respondent did not reply to Complainant's contentions, and is in default. 6. Discussion and Findings
Even if a respondent is in default, a complainant must still make out its case under Policy, paragraph 4(a) that:
(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 domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has shown that it has trademark rights in the MASTERCARD and MASTERCARD ONLINE marks. See section 4 above. Since the disputed domain name incorporates such marks in their entirety – the addition of “1” being inapt to distinguish the domain name from the marks – the Panel finds that the domain name is confusingly similar to Complainant's marks MASTERCARD and MASTERCARD ONLINE. See Pfizer Inc. v. David Lavery,WIPO Case No. D2004-0581, where the panel ordered transfer of the domain name stating: “It is an established principle that the mere addition of a common term or number does not create a different trademark in which Respondent has rights and cannot be considered sufficient to avoid confusion between the Domain Name and Complainant's trademark”.
Accordingly, the first requirement of the Policy is met. B. Rights and Legitimate Interests
As seen at section 4 above, Complainant has denied that any of the circumstances listed in Policy, paragraph 4(c) be present. In addition, Complainant contends that Respondent's use of the disputed domain name – imitating Complainant's website to induce Internet users to furnish personal financial information, and bringing Internet users to a website that contains links to both Complainant's products and the products of Complainant's competitors – does not constitute a bona fide offering of goods or services.
Taken together, these contentions and supporting evidence are sufficient to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name. It is generally accepted by UDRP panels that once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See point 4.6. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
In the present case, Respondent has not presented the Panel with any comments or evidence in his own favor. Accordingly, the Panel finds that Complainant has satisfied Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant owns trademark registrations for the MASTERCARD mark in numerous countries, including Brazil, the country of residence of Respondent. The Panel agrees with Complainant that the MASTERCARD mark is famous. One must conclude that Respondent knew or, at least, must have known Complainant's marks MASTERCARD and MASTERCARD ONLINE at the time of registering the disputed domain name. Since the use of the domain name in Respondent's website consists of links and other contents related to financial services provided by Complainant under the MASTERCARD mark, or to services provided by competitors of Complainant, the Panel believes that Respondent's unauthorized registration of Complainant's mark in the disputed domain name was in bad faith. See MasterCard International Incorporated v. PLUTO DOMAIN SERVICES PRIVATE LIMITED,WIPO Case No. D2008-1942, finding that the MASTERCARD mark was registered and became famous worldwide since well before the domain name in question was created, and that therefore 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 to its site business or Internet users looking for Complainant's trademark or business.
In the instant case, Respondent appears to be using the disputed domain name to divert Internet users to links related to Complainant's services and products, as well as to services and products provided by competitors of Complainant with the likely purpose of generating “click-through” revenue. This conduct falls squarely within Policy, paragraph 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”), which is a circumstance of bad faith registration and use of the domain name. See Sports Warehouse, Inc v. Laksh Internet Solutions Private Limited,WIPO Case No. D2008-1112, finding that the generation of revenue from domain name parking activities is use in bad faith within the scope of paragraph 4(b)(iv) where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that this similarity results in Internet users being drawn to that page.
In addition, Complainant has shown that on May 22, 2009, Respondent posted, on a web page imitating Complainant's original website, and under a legend in Portuguese which may be translated as “Welcome to MasterCard Brazil”, a form that Internet users were induced to fill with personal information related to their credit cards, such as full name, name as printed on the card, card number, expiration date, verification code, etc. Although this alone might not be sufficient to conclude that Respondent is in fact involved in a “phishing” scam, in the context of these proceedings there is little room for this Panel to infer anything else than Respondent most likely attempted to deceive inadvertent Internet users, by inducing them to believe that they were connected with a legitimate MasterCard website, and thus to provide personal financial information to the operator of this fake website, which is a behavior in bad faith consistent with “phishing” and/or identity-theft purposes. See Halifax plc v. Sontaja Sunducl,WIPO Case No. D2004-0237 (“[E]vidence of duplication in the Complainant's trading get-up, branding and imagery is direct evidence of the domain name in being used in bad faith. In particular, the availability of the online registration pages, and the apparent potential for “phishing” and obtaining information by deception, is not just evidence of bad faith but possibly suggestive of criminal activity. It is accepted that on this basis there is no other possibility than the site being registered in bad faith”).
The Panel concludes that the disputed 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 Complainant.
Roberto Bianchi
Sole Panelist
Dated: August 12, 2009
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