The Complainant is MasterCard International Incorporated of Purchase, New York, United States of America, represented by Partridge IP Law P.C., United States of America.
The Respondent is Net4U of Paramaribo, Suriname. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2011. On March 31, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On March 31, 2011, Tucows 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 April 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2011.
The Center appointed J. Nelson Landry as the sole panelist in this matter on May 4, 2011. 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 a global payments solutions company which provides under the trademark MASTERCARD various services involving credit, deposit access, electronic cash, business-to-business and related payment programs and has been involved in this field of business through its predecessors in interest since 1966.
The Complainant has used the trademark MASTERCARD in association with bank card services since at least 1980 and is the owner of several registrations of trademarks including the trademark consisting of the term MASTERCARD, various logos incorporating MASTERCARD and several other trademarks consisting of the term “MasterCard” associated with other terms such as MasterCard Advisors and MasterCard International. The Complainant also owns 94 various MASTERCARD trademark registrations in the United States of America (herein the “Trademark MASTERCARD” or the “Family of MASTERCARD Trademarks”). The Complainant is also the owner of several registrations of Trademark MASTERCARD in over 210 countries and territories, including 12 registrations in Suriname, the first two, MASTERCARD and MASTERCARD and Logo registered on October 11, 1982 and the last one on February 27, 2008.
Finally, the Complainant owns numerous registered domain names containing the Trademark MASTERCARD or variance thereof such as MASTERCARD and MASTERCARD ONLINE each with top level domain “.com”, “.net”, and “.org”, and amongst others. The domain name was the first to be registered on July 27, 1994.
The disputed domain name was registered on July 3, 2010. Soon thereafter, the Respondent developed and commenced the use of a website at the address of the disputed domain name which features images for MasterCard’s Interlocking Device and the Trademark MASTERCARD, and the website states that the Respondent offers “Prepaid Credit Card MasterCard in Suriname”.
The Respondent is not affiliated or related to the Complainant in any way and furthermore is not licensed or otherwise authorized by the Complainant to use the Trademark MASTERCARD or to register the disputed domain name.
Some 16 months subsequent to the registration of the disputed domain name, on November 15, 2010, the Respondent communicated by letter to inquire from the Complainant about modalities to offer prepaid credit cards in Suriname. The Complainant answered such request, advising the Respondent of its rights in the Trademark MASTERCARD and that the registration and use of a domain name that includes the Trademark MASTERCARD is reserved exclusively for the Complainant and its licensed financial institutions. The Complainant further stated that it was not possible for the Complainant to give the Respondent permission to own and use the disputed domain name and requested a voluntary transfer of the disputed domain name to the Complainant or the cancellation of the disputed domain name. The Respondent did not provide any response to this letter. 5. Parties’ Contentions A. Complainant
The Complainant represents, pursuant to its own activities following those of its predecessor in interest since 1966, to be a leading global payments solutions company active in providing diversified innovative services related to payment card business, deposit access, electronic cash, and other related payment programs.
The Complainant further represents that it has carried its activities under the Trademark MASTERCARD, registered in the United States of America, along with a Family of MASTERCARD Trademarks as well as numerous registrations of the Trademark MASTERCARD in practically every country around the world, including Suriname.
The Complainant completes its representation about the use and fame associated with its Trademark MASTERCARD in mentioning the numerous domain names incorporating the Trademark MASTERCARD in association with top level domains such as “.com”, “.net” and “.org”.
The Complainant submits that the disputed domain name, which was registered on July 3, 2010, many years after the extensive use of its famous Trademark MASTERCARD and its first registration of the domain name , is confusingly similar to its Trademark MASTERCARD since it incorporates the entirety of its Trademark, e.g., eBay, Inc. v. Progessive Life Awareness Network, WIPO Case No. D2001-0068 and Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Claim No. FA642141. The Complainant further submits that the addition of “suriname”, a geographically descriptive term, to the Trademark does not eliminate or diminish the confusing similarity between the Trademark and the disputed domain name, e.g., PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629.
According to the Complainant, the Respondent is not affiliated or related to the Complainant nor is it licensed by the latter or otherwise authorized to use the Trademark MASTERCARD, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Alta Vista Company v. Jean-Daniel Gamanche, NAF Claim No. FA95249. Furthermore, the Respondent is not generally known by the disputed domain name and has not acquired any trademark rights in the disputed domain name or trademark, e.g., Gallup Inc. v. Amich Country Store, NAF Claim No. FA96209.
The Complainant contends that the Respondent operates at the address of the disputed domain name a website which pretends to offer prepaid credit cards in Suriname under the Trademark MASTERCARD and thereby it unlawfully diverts and takes away Internet visitors which are trying to reach the Complainant’s MasterCard website. The Complainant claims that such use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, e.g., MasterCard International Incorporated v. Unicorn Multi-Media, Inc.,WIPO Case No. D2007-0688.
The Complainant further contends that the unauthorized acquisition and use of the disputed domain name many years after the adoption and use of the Trademark MASTERCARD in the United States of America and Suriname, where the Respondent is located, was done with constructive and actual notice of the Complainant’s rights in its Trademark MASTERCARD and furthermore, that there is no plausible reason for the Respondent’s selection in registering the disputed domain name other than being a deliberate attempt to profit unfairly from the confusion with the Trademark MASTERCARD of the Complainant, e.g. MasterCard International Incorporated v. North Tustin Dental Associates,WIPO Case No. D2007-1412; MasterCard International Incorporated v. Total Card Inc.,WIPO Case No. D2007-1411.
The Complainant alleges that the Respondent is deliberately using the disputed domain name for commercial gain to attract Internet visitors to its website by capitalizing on a likelihood of confusion with the Trademark MASTERCARD and that the use of the disputed domain name to advertise a prepaid MasterCard credit card, which had not been authorized by the Complainant such lack of authorization is demonstrated by the correspondence from the Respondent contact person on November 15, 2010 to the Complainant and the latter subsequent response confirming and refusing such absence of authorization, e.g., Sanofi-Aventis v. Domain Admin/Andrey Volkovich,WIPO Case No. D2010-2009.
On the basis of these representations, the Complainant claims that the Respondent registered the disputed domain name in bad faith and used same in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for the domain name to be cancelled or transferred:
(i) The disputed domain name registered by the Respondent 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant clearly establishes that it has rights in the Trademark MASTERCARD which is registered in the United States of America since at least 1980 and furthermore in the Family of MASTERCARD Trademarks in the United States of America along with registrations in over 210 countries and territories. The MASTERCARD Trademark is also part of numerous domain names registered as MasterCard on the one hand and MasterCard OnLine, in the other hand, each with the suffix “.com”, “.net” and “.org”.
The Panel finds that by reason of the Family of Trademarks incorporating the distinctive Trademark term “MasterCard”, the Complainant has rights in the Trademark MASTERCARD and significant goodwill associated thereto. The Panel is of the view that substantial goodwill is associated with the Trademark MASTERCARD by reason of the extended and significant international use.
The disputed domain name consists of the Trademark MASTERCARD to which the Respondent has added the country name Suriname. As represented by the Complainant, this addition of a country name in a domain name which incorporates in full the Trademark MASTERCARD remains one that is still confusingly similar to the said Trademark. The Panel adopts the statements and findings in the UDRP decisions cited and referred to by the Complainant in this respect.
The Panel finds that the disputed domain name is confusingly similar to the Trademark MASTERCARD and to many other trademarks, within the Family of Trademarks, owned by the Complainant.
The first criterion has been met. B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name, is not making any legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of its Trademark MASTERCARD. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademark.
The Complainant has raised the prima facie case in representing that it has no business relationship of any kind with the Respondent and furthermore has not authorized the Respondent to register the disputed domain name which incorporates its distinctive Trademark. This absence of rights is confirmed by the Respondent itself in the written request to the Complainant to become an authorized prepaid card reseller. In this Panel’s view, it is therefore clear that the disputed domain name was registered without authorization and for a commercial purpose. The Panel finds, in relying on the MasterCard International Incorporated UDRP decision cited supra, that the purpose of this use of the disputed domain name which serves to divert Internet visitors seeking to reach the Complainant’s website is not a bona fide offering of goods or services nor a legitimate noncommercial of fair use of the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The second criterion has been met. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
According to the evidence, the Trademark MASTERCARD is registered in the United States of America and in Suriname where the Respondent is located in respect of the country Suriname and where the Respondent technical contact is located in Burlington (Maine) in the United States. The Respondent was undoubtedly well aware of the existence of the distinctive Trademark MASTERCARD when it registered the disputed domain name on July 3, 2010. The Panel cannot imagine a lack of knowledge of the existence of this distinctive Trademark at the time of registration notwithstanding the fact that it was some 16 months later with a website already setup to offer prepaid MasterCard credit cards in Suriname that the registrant may not have been aware of the existence of the Trademark. The Complainant has advanced that “there is no plausible reason for Respondent’s selection of the Infringing Domain Name other than as a deliberate attempt to profit unfairly from confusion with MasterCard’s Mark”. It is not a surprise that this allegation of both constructive and actual knowledge of the Complainant’s Trademark by the Respondent has not been answered nor rebutted by the Respondent.
The Panel therefore finds that with said undisputed knowledge of the Complainant’s Trademark at the time of the registration of the disputed domain name, the said registration was done in bad faith.
The evidence demonstrates that the disputed domain name is used to advertise a pre-paid MasterCard credit card which is not authorized by the Complainant. The latter clearly declined the Respondent’s request to become an authorized representative to use the Trademark MASTERCARD or the disputed domain name. Notwithstanding the refusal provided by the Complainant in the letter of its representative on November 19, 2010, the Respondent continued its activities under the disputed domain name.
As stated in the UDRP decision Sanofi-Aventis v. Domain Admin/Andrey Volkvich, supra, this use of the website without a license constitutes use in bad faith.
The Panel adopts the findings in this cited case and so finds use in bad faith of the disputed domain name in the present case.
The third criterion has been met. 7. Decision
The Panel concludes that:
(a) the disputed domain name is confusingly similar to the Complainant’s Trademark;
(b) the Respondent has no rights or legitimate interests in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, 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.
J. Nelson Landry
Sole Panelist
Dated: May 11, 2001
Full & Egal Universal Law Academy