WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mastercard International Incorporated v. MasterCard Brasil Case No. D2009-1691 1. The Parties
Complainant is Mastercard International Incorporated of New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
Respondent is MasterCard Brasil of Sunnyvale, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2009. On December 10, 2009, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On December 11, 2009, Melbourne IT Ltd. transmitted by email to the Center its verification response 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 December 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 5, 2010.
The Center appointed Carol Anne Been as the sole panelist in this matter on January 12, 2010. 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, MasterCard International Incorporated, a payment solutions company, owns a number of United States and international trademark registrations for the MASTERCARD mark (hereinafter, the “Mark”), and indicates first use of the Mark since as early as 1980. Complainant's international trademark registrations for the Mark include more than twenty Brazilian registrations. In addition to its registered trademarks, Complainant operates a website using the domain name . Through the website at that domain name, Complainant offers a webpage available to users in Brazil.
Respondent registered the domain name (hereinafter, the “Domain Name”) with Melbourne IT Ltd. (hereinafter, the “Registrar”), on November 17, 2009. The Domain Name was disabled and locked by the Registrar, pursuant to a request made by Complainant on December 2, 2009, that the website at the Domain Name was being used for “phishing”. 5. Parties' Contentions A. Complainant
Domain Name Identical or Confusingly Similar to Complainant's Mark
Complainant contends that the Domain Name is confusingly similar to the Mark in which Complainant has rights, because it incorporates the entirety of Complainant's Mark. Complainant contends that its Mark is one of the most famous and widely recognized marks in the world. Complainant argues that the addition of the geographic term “Brasil” to the Mark in the Domain Name does not lessen the likelihood of confusion between the Domain Name and the Mark.
Respondent's Rights or Legitimate Interests in the Domain Name
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name because it is not affiliated with or related to Complainant in any way and was not licensed or otherwise permitted to use the Mark. Complainant asserts that, prior to the Registrar acting on Complainant's takedown request, the Domain Name was being used as a “phishing” website to deceive users into divulging private information for Respondent's commercial gain by imitating the Brazilian webpage on Complainant's website.
Domain Name Registered and Used in Bad Faith
Complainant contends that Respondent registered and used the Domain Name in bad faith with the intention of attempting to attract Internet users to Respondent's website at the Domain Name, for commercial gain, by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, and endorsement of Respondent's website. Complainant contends that Respondent used the Domain Name to create confusion among Internet users and to attract those users to a “phishing” website intended to deceive them into divulging private information for Respondent's commercial gain. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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 has established that it holds rights in the Mark and uses the Mark in connection with payment solutions services, including in the United States of America, where Respondent is located. Complainant also directs its services to Brazil, which is the geographically descriptive term in the Domain Name. Complainant owns numerous registrations for the Mark in the United States and Brazil.
The evidence submitted by Complainant, and unrefuted by Respondent, indicates that Complainant's Mark is widely recognized around the world.
The Domain Name is comprised of Complainant's Mark, MASTERCARD, plus the geographically descriptive term “-brasil”. The mere addition of a geographically descriptive term to a mark does not negate the confusing similarity between the mark and the domain name. See, e.g., PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629 (finding confusingly similar to PEPSI).
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant's Mark. B. Rights or Legitimate Interests
Complainant is required by Policy paragraph 4(a)(ii) to prove that Respondent has no right or legitimate interest in the Domain Name. However, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Complainant established a prima facie case that Respondent lacks rights or legitimate interests by providing evidence that the Domain Name, prior to being disabled by the Registrar, resolved to a website intended for “phishing” purposes. “Phishing” is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user IDs, passwords, etc. A fake website is created that is similar to that of a legitimate organization, typically a financial institution such as a bank or insurance company, and this information is used for identity theft and other nefarious activities. See Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa,WIPO Case No. D2006-0614.
There is no evidence that Respondent has any rights or legitimate interest in the Domain Name. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that evidence of bad faith arises when the respondent, by using the domain name, intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark.
As discussed above, the unrefuted evidence shows that Respondent registered and used the Domain Name in a manner that was intended to divert Internet users looking for Complainant and deceive such users into divulging private information for Respondent's commercial gain. Respondent' use of the Domain Name in this manner would likely have continued in the absence of Complainant's takedown request and the Registrar's action to disable and lock the Domain Name. Bad faith has been found to exist even in the absence of active use of a domain name, where it is inconceivable that a respondent could have a legitimate use. See, e.g., Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028.
Accordingly, the Panel finds that Respondent registered and used the Domain Name 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.
Carol Anne Been
Sole Panelist
Dated: January 26, 2010
Full & Egal Universal Law Academy