WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MasterCard International Incorporated v. Banu Asum Kilich Case No. D2009-1525 1. The Parties
The Complainant is MasterCard International Incorporated of New York, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is Banu Asum Kilich of Narrabeen, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2009. On November 12, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On November 12, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on November 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2009. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent's default on December 10, 2009.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on December 21, 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.
The Respondent sent several emails to the Center, dated November 15, 2009, November 19 and December 13, 2009. The Panel accepts the late submission by the Respondent, the supplemental submissions sent by the Complainant on December 28, 2009, and the Respondent's reply to the Complainant's supplemental submissions on January 4, 2010. 4. Factual Background
The Complainant is a leading global payment solutions company. It owns and manages its widely accepted payment cards under the trademarks MASTERCARD, MAESTRO and CIRRUS. The Complainant filed its first trademark application for MASTERCARD with the U.S Trade Mark Office in April 1980.
The Complainant owns numerous domain names consisting of its trademark MASTERCARD and variations thereof. Some of these are , , , , , . The Complainant's domain name was registered on July 27, 1994, and the disputed domain name was registered on November 24, 2006. 5. Parties' Contentions A. Complainant
The Complainant contends that it has been in the payment business since 1966 and serves financial institutions, consumers and businesses in over 210 countries including Australia, the jurisdiction of the Respondent. The Complainant and its predecessors have been using the MASTERCARD name from at least 1980 and it claims that it has protected its goodwill since then and has registered its trademark in almost every nation in the world. It states it has over one hundred US trademark registrations and sixteen trademark registrations in Australia.
The Complainant alleges it extensively promotes its trademark MASTERCARD, which is distinctive of its quality products and services and has therefore become a famous symbol with enormous goodwill. The Complainant states its adoption of its trademark and the registration of its domain name were done long before the Respondent's' registration of the disputed domain name.
The Complainant refers to several prior cases and argues that: The disputed domain name is confusingly similar to its widely used trademark MASTERCARD. Although the disputed domain name incorporates the mark in its entirety with the non-distinctive term “online”, the overall impression is that the trademark is the dominant part of the disputed domain name.
The Complainant argues the Respondent has no rights or legitimate interests in the disputed domain name as it is not affiliated with the Complainant or licensed to use the Complainant's trademark. The Respondent is not commonly known by the disputed domain name nor has it acquired any trademark rights in the name through a bona fide offering goods or services. The Respondent uses the domain name to link to external sites including sites of the Complainant's competitors, which is not bona fide use.
The Complainant states the disputed domain name was registered and is used in bad faith as it uses the Complainant's trademark to attract Internet users to the Respondent's website based on a likelihood of confusion with its trademark. Links to competitor's websites generate click through revenue. Given its prior and substantial use of the trademark, the Complainant states, the Respondent had both actual and constructive notice of its mark, which shows the disputed domain name was intentionally registered to profit unfairly from the goodwill of the Complainant's trademark. The Complainant requests for transfer of the disputed domain name. B. Respondent
The Respondent did not file a formal Response but sent emails to the Center which stated:
The Respondent had purchased the domain name two years ago on an eBay auction, under the belief that it was a legal way to acquire and “own a “property” as there are hundreds of “mastercCard domain names” being sold. The Respondent offers to sell and transfer the disputed domain name to the Complainant, and stating, “… mastercard could pay me all my cost and can have the domain name, I can transfer it instantly.”
The Respondent contends the disputed domain name consists of three dictionary words, “online”, “master” and “card”. According to the Respondent the word “Master “ displays 447,000,000 Google search results and the word “Card” displays 752,000,000 Google search pages and the word “online” displays 3,170,000,000 Google search results. The Respondent argues that people have the choice of using three dictionary words in a domain name.
The Respondent disputes the statement that the disputed domain name was registered and used in bad faith as the Respondent has not built a website with any content. The Respondent further states that the registrar GoD, is using the disputed domain name to host the website with sponsored links and although the Respondent has not sanctioned such use, the registrar GoD uses the disputed domain name in this manner. The Respondent denies earning any amounts from the parking of the disputed domain name and its use by GoD or having any knowledge of Discover Card access.
The Respondent admits that the domain name had been listed and advertised on eBay for sale, but only as a domain name and not as a website. This advertisement to sell the disputed domain name was taken down by eBay as a result of a “mastercard complaint”. The apparent cut-and-paste text print out of the cancellation link provided by the Respondent states that the eBay listing was removed by eBay as an unauthorized listing due to a trademark violation. Supplemental Submissions
The Complainant states that the Respondent, as the owner of the disputed domain name, is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website, and cites a previous case where domain names with GoD parking pages were transferred to the Complainant for the same reason.
The Complainant states that the Respondent has admitted attempting to auction the domain name on eBay and furnishes the print out of the Respondent's advertisement, which shows the disputed domain name is offered on eBay at a price of $260. The advertisement also states that the domain name could generate “Massive Click thru cash”, where “The Payout is $17.80 Per Click!”, and provides instructions on how to earn “HUGE PROFITS from the domain now!” using the Google Adwords program. The Complainant refers to two cases and argues that the Respondent's attempts to auction the disputed domain name on eBay shows bad faith. The Respondent, in reply to the Complainant's supplemental submissions, reiterates its previous arguments. 6. Discussion and Findings Supplemental Submissions
The Panel permits the supplemental submissions sent by the parties, as supplemental filings can be allowed in UDRP proceedings at the discretion of the Panel, in order to clarify factual or other assertions made by a party to the dispute, see Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise,WIPO Case No. D2001-0237.
The Policy stipulates that the Complainant has to establish three elements under paragraph 4(a) to obtain the remedy of transfer of the disputed domain name.
(i) The disputed domain name is identical or confusingly similar to a mark in which the Complainant 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 was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element under paragraph 4(a) requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Panel finds the Complainant has established its longstanding rights in the MASTERCARD trademarks and has filed evidence of its registered trademark registrations in several jurisdictions including Australia, the country where the Respondent is located.
It has been argued by the Respondent that the disputed domain name merely uses three dictionary words. It is well recognized that dictionary words are protectable as trademarks if it is established with sufficient evidence that the word(s) have acquired secondary meaning due to its use in commerce. See The Coryn Group Inc. Apple Vacations West v. John Meara aka Pat Cavanaugh,WIPO Case No. D2003-0690, where the use of dictionary words in the domain names , and were found to be confusingly similar to the complainant's trademark APPLE in that case. In the present case, although the Complainant's trademark comprises of two dictionary words “master “ and “card”, the Panel finds the Complainant has clearly established that it has acquired registered rights for its trademark MASTERCARD in numerous jurisdictions and has established that the term MASTERCARD has acquired secondary meaning due to its extensive use in commerce.
The disputed domain name uses the term “online” followed by a hyphen and with the Complainant's trademark MASTERCARD, and the gTLD identifier “.com”. Numerous decisions have held that a trademark prefixed with “online” in a domain name does not distinguish the domain name from the trademark. See for instance F. Hoffmann-La Roche AGInc. v. Aleksandr Kalinin,WIPO Case No. D2009-1214, regarding the domain name , or Hoffmann-La Roche Inc. v. O,WIPO Case No. D2007-1806, concerning the domain name , where it was found that the term “online” did not negate confusing similarity with the trademark TAMIFLU.
The Panel finds the trademark MASTERCARD is the dominant feature of the disputed domain name and that, the prefix “online” with the hyphen and the gTLD “.com” do not detract from the confusing similarity of the domain name to the trademark. The Panel therefore finds the disputed domain name is confusingly similar to the Complainant's trademark MASTERCARD.
The Complainant has satisfied the first requirement of paragraph 4 (a) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain name. See paragraph 2.1 of WIPO Overview of WIPO Of WIPO Panel Views on Selected UDRP Questions.
The Complainant has argued that the Respondent has no trademark rights for the name MASTERCARD and is not commonly known by the disputed domain name, nor has it been authorized or licensed to use the Complainant's trademarks. Rights and legitimate interests in the disputed domain name can be found in favor of the Respondent, if the Respondent can, for example demonstrate any of the factors enumerated under paragraph 4(c) of the Policy.
The Panel finds that the Respondent has not filed any evidence to show any rights in the disputed domain name under paragraph 4(c) of the Policy or otherwise. In the absence of any evidence from the Respondent to demonstrate any such rights, the Panel finds the evidence provided by the Complainant validates its arguments that the Respondent is not using the domain name, in connection with a bona fide offering of goods or services.
The Panel finds merit in the Complainant's arguments that the Respondent has registered the disputed domain name, for deriving monetary gain due to its trademark value. The Panel notes that the Respondent had advertised on eBay to sell the disputed domain name and has allowed the commercial exploitation of the disputed domain name based on the Complainant's trademark value. Such use of the disputed domain name is not legitimate, bona fide or non -commercial use.
Based on an assessment of the evidence on record and the parties' pleadings, the Panel finds the Complainant has made a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain name.
The Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered and is being used it in bad faith by the Respondent.
Paragraph 4(b)(i) of the Policy makes reference to circumstances indicating bad faith registration and use of a domain name if a respondent has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to the complainant who is the owner of the trademark for valuable consideration in excess of documented out of pocket costs. The Panel finds the documents on record clearly show the Respondent has attempted to sell the disputed domain name to the Complainant. Further, the Respondent has admitted attempting to sell the disputed domain name on eBay through an online auction and eBay having taken it down for violation of trademark rights.
Paragraph 4 (b)(iv) of the Policy makes reference to circumstances indicating bad faith registration and use of a disputed domain name with the intent to attract Internet users to a website or other online location by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's website.
The Complainant has argued that the disputed domain name was registered and is used in bad faith to exploit the fame and goodwill of the Complainant's trademark. Given the fame of the Complainant's mark and its subsisting trademark registrations in Australia, it is doubtful that the Respondent was unaware of the Complainant's trademark rights. The Panel finds that the Respondent has also admitted to the removal of the advertisement for the sale of the disputed domain name on eBay for a trademark violation.
The Complainant has filed a print out of the Respondent's advertisement in its supplemental submissions, which shows the Respondent is clearly aware of the intrinsic value of the disputed domain name to generate click through revenue. The contents of the Respondent's advertisement on eBay clearly advertises the domain name is “Keyword rich\credit card”, can generate “Massive Click thru cash”, and “The Payout is $17.80 Per Click.” The Panel finds that the Respondent's adoption of the domain name has been long after the Complainant had established its rights in the mark. All these circumstances demonstrate that the disputed domain name was registered and is being used by the Respondent with an intent to obtain commercial gains from the Complainant's goodwill by creating a likelihood of affiliation and confusion with the Complainant's well known trademark.
In the light of the preceding discussions the Panel finds that the Respondent has registered the disputed domain name and uses it in a manner that constitutes bad faith registration and use as described under paragraphs 4(b)(i) and 4(b)(iv) of the Policy. 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 disputed domain name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Date: January 7, 2010
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