WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MasterCard International Incorporated, MasterCard Europe SPRL v. IT Manager/ Crosspath Case No. D2009-1714 1. The Parties
Complainant is MasterCard International Incorporated and MasterCard Europe SPRL, of New York, New York, United States of America and Waterloo, Belgium, respectively, represented by the law firm Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is IT Manager/ Crosspath, of Irvine, California, United States of America, internally represented. 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 December 14, 2009. On December 15, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 15, 2009, eNom 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 Respondent of the Complaint, and the proceedings commenced December 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response January 10, 2010. The Response was filed with the Center January 10, 2010.
Complainant had requested a single-member panel. Pursuant to paragraph 5(b)(iv) of the Rules, Respondent requested a three-member panel. The Center appointed M. Scott Donahey, Richard G. Lyon, and David E. Sorkin as panelists in this matter on February 9, 2010. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. Each member of the Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On January 28, 2010, Complainant submitted a “Reply” to the Response, and requested the Panel to consider it. By order dated February 15, 2010, the Panel denied this request.1 4. Factual Background
Complainant provides credit, debit, payment, and other financial services for consumers and businesses worldwide. It has operated under the name MasterCard since 1980. Among its many service marks are MASTERCARD, MASTERMONEY, MASTERRENTAL, all of which have been registered with the United States Patent and Trademark Office (USPTO) since at the latest 2001, and CREDITMASTER, which has been registered in several European countries since 2003. The MasterCard mark is well known the world over for credit and debit cards, and registered as a service mark in many countries.
Respondent acquired the disputed domain name in May 2005, and at this web address maintains a one-page site with hyperlinks to credit- or credit card-related subjects (e.g., “Low Interest Credit Card,” “Mortgage,” “Credit Check,” “Free Credit Report”). 5. Parties' Contentions A. Complainant
The Panel summarizes Complainant's contentions as follows:
The disputed domain name is confusingly similar to Complainant's marks, all of which are duly registered with trademark offices around the world. The disputed domain name merely reverses the two words in Complainant's CREDITMASTER mark and substitutes the word CREDIT – Complainant's business - for “card”, creating similarity to Complainant's other marks. Use of the disputed domain name for a credit-related site makes confusion certain.
Complainant has never licensed Respondent to use its marks, and Respondent has not been commonly known by the name “Master Credit.” Use of the site for links to Complainant or its competitors is not legitimate under the Policy.
By using the disputed domain name for click-through revenues from links to Complainant's competitors, “In this case, it is apparent that the [Disputed] Domain Name was deliberately used for commercial gain to attract internet users to Respondent's website based on a likelihood of confusion with Complainant's MASTERCARD mark, which satisfies the requirement of Paragraph 4(b)(iv) of the [P]olicy.” Respondent registered the disputed domain name long after Complainant's service marks had become well known. Given their renown Respondent had knowledge of Complainant and its marks at the time of registration. B. Respondent
The Panel summarizes Respondent's contentions as follows:
The disputed domain name consists of two descriptive, everyday English words and the combination is likewise a descriptive term. Complainant has not proven secondary meaning in its CREDITMASTER mark. For these reasons Complainant has no exclusive right to MASTERCREDIT. Respondent cites The First Stone Inc. v. Credit Master Online Services, Ltd.,WIPO Case No. D2007-1507, involving the same domain name, in which the panel denied the complaint on this basis.
Respondent objects to Complainant's casual “substitution” of “credit” for “card” in its marks. Without this “substitution” the disputed domain name is not confusingly similar to the MASTERCARD marks and as noted is merely a descriptive phrase to which Complainant lacks any exclusive rights. Respondent has a legitimate right “to attract Internet traffic based on the appeal of a commonly used descriptive phrase.” Further it has used the site for five years to help consumers “master their credit.”
Respondent was unaware of Complainant's CREDITMASTER mark when it acquired the disputed domain name in 2005; the mark was then registered only in Europe. Furthermore in Europe that mark is registered not for credit services but for “Vending Machines, Legal Services, Printing Services, and Professional Consulting.” Hence Respondent's registration was not undertaken in bad faith, and its subsequent use to take advantage of its descriptive character was also not in bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar
Determination of confusing similarity under paragraph 4(a)(i) of the Policy is a comparison of the letters, words, sound, and other sensate aspects of the disputed domain name to those of Complainant's marks. Ordinarily the content of the website at the disputed domain name is not germane to the comparison. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.2, Consensus View. Under this approach Complainant has satisfied this Policy element in two ways. First, the disputed domain name reverses the two words of Complainant's CREDITMASTER mark. Second, the dominant feature of Complainant's MASTERCARD mark (and other, similar marks) and the disputed domain name is the word MASTER. Given the fame of Complainant's MASTERCARD mark, which Respondent does not (and in good faith could not) deny, adding a common word that is an integral part of Complainant's business does not obviate confusing similarity. B. Rights or Legitimate Interests; Bad Faith Use and Registrantion
The website's content is however relevant to the Panel's inquiries under paragraphs 4(a)(ii) and 4(a) (iii) of the Policy. As in many cases, the use of hyperlinks selected for their similarity to Complainant's business betrays Respondent's knowledge of Complainant, its marks, and its business; an intent to take advantage of those marks and that business by attracting Internet users seeking Complainant; and the intent to mine the mark's prominence for commercial gain. As Respondent was certainly aware of Complainant and its MASTERCARD mark when it registered the disputed domain name, unless Respondent can demonstrate a right or legitimate interest in the disputed domain name these facts and conclusions make out bad faith in use and registration.
Respondent first claims that it selected and used the disputed domain name for its descriptive appeal. The site's content indicates no such thing; rather there are prominent links to products and services directly competitive with Complainant's. Respondent's contention that the site enables a user to “master” his “credit” finds no support on the website at the disputed domain name. That site's sole function appears to be taking advantage of Complainant's marks for commercial gain achieved through confusion, and so comes within the example of bad faith in paragraph 4(b)(iv) of the Policy. This has been the only use of the disputed domain name, and the Panel finds it not legitimate. Indeed it is a textbook example of cybersquatting.
Respondent's reliance on The First Stone Inc. v. Credit Master Online Services, Ltd., supra, is misplaced. The complainant in that case held a registered service mark in “The Creditmasters,” which it used for credit clean-up services. The respondent used the disputed domain name at issue here, and in the same manner as Respondent here. The panel did find that the complainant had not established the respondent's lack of a right or legitimate interest, relying in part upon the respondent's business name and the descriptive nature of the disputed domain name. But two factual differences make the case readily distinguishable from the circumstances here present. The respondent in that case had acquired the disputed domain name in 2001, six years before the complaint had registered its mark. Necessary to the Panel's finding under paragraph 4(a)(ii) was its conclusion that there was no evidence of targeting the complainant:
“The Complainant has not demonstrated that the Respondent at the time of registration of the disputed domain name knew or should have known of the existence of the Complainant's trade mark CREDIT MASTER or THE CREDITMASTERS. Accordingly, there is no evidence suggesting that the disputed domain name was chosen by the Respondent with the intent to profit or otherwise abuse the Complainant's trade mark rights.”
In this case Respondent does not deny knowledge of Complainant or its MASTERCARD family of marks, though it does deny any knowledge of the CREDITMASTER mark. As noted, given the circumstances Respondent could not credibly do so. With that knowledge, Respondent's continuous use of the disputed domain name to profit from links to Complainant's competitors establishes the Respondent's lack of rights or legitimate interests in the Domain Name as well as its bad faith in registration and use. 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.
Richard G. Lyon
Presiding Panelist
M. Scott Donahey
Panelist
David E. Sorkin
Panelist
Dated: February 15, 2010
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