The Complainant is MasterCard International Incorporated of Purchase, New York, United States of America (“U.S.”) represented by Partridge IP Law P.C., U.S.
The Respondent is Protected Domain Services -- Customer ID DSR-2156800 / Piyabute Fuangkhon of Denver, Colorado, U.S. and Bangkok, Thailand, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with Spot Domain LLC dba D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2011. On September 9, 2011, the Center transmitted by email to Spot Domain LLC dba D a request for registrar verification in connection with the disputed domain name. On September 9, 2011, Spot Domain LLC dba D transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 12, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 12, 2011 incorporating that information.
The Center verified that the Complaint together with the amendment to 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 September 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2011. The Respondent sent informal communications to the Center on September 12, 13 and 15, 2011.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on October 31, 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 one of the world’s foremost global payments providers known best for its universally accepted credit card. It operates worldwide. It is the owner of the trademark MASTERCARD under which it has operated since at least 1980 and holds registrations of that trademark in most countries of the world including the U.S. and Thailand. Its earliest U.S. registration dates from 1982. The Complainant is the owner of several domain names which incorporate the trademark MASTERCARD the earliest of which, , was registered in July 1994. The Complainant operates a website at this domain name.
At the date of the Complaint the disputed domain name resolved to the homepage of the Complainant’s major competitor, “Visa”.
The disputed domain name was registered on October 17, 2008. 5. Parties’ Contentions A. Complainant
The Complainant’s submissions may be summarized as follows:
(i) As a result of its extensive and longstanding use and promotion of its MASTERCARD trademark that now has become famous and symbolizes an enormous amount of goodwill which is associated exclusively with the goods and services offered by the Complainant.
(ii) The disputed domain name was not registered until many years after the Complainant’s adoption and registration of its MASTERCARD trademark.
(iii) The disputed domain name differs from the Complainant’s trademark only by the addition of the word “world”. That addition does not negate a confusing similarity between the mark and the disputed domain name.
(iv) The Respondent is not affiliated or in any way related to the Complainant and has not been licensed or otherwise authorized to use the MASTERCARD trademark.
(v) The Respondent is not generally known by the disputed domain name and has not acquired any trademark or service mark rights in it.
(vi) The Respondent’s use of the disputed domain name to divert Internet users to the website of the Complainant’s primary competitor is not a bona fide offering of goods or services by reference to the disputed domain name, nor is it a legitimate noncommercial or fair use of the disputed domain name.
(vii) The Respondent has used the disputed domain name intentionally in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks, to the source, sponsorship, affiliation or endorsement of its website. The Complainant submits that in view of the wide renown of its trademark in the U.S. and through its website, the Respondent must have had constructive and actual notice of the Complainant’s rights in its mark.
(viii) There is no plausible reason for the Respondent’s selection of the disputed domain name otherwise than as a deliberate attempt to profit unfairly from the confusion with the Complainant’s mark. B. Respondent
The Respondent did not file a formal response; however, the second-named Respondent forwarded an email to the Center on September 12, 2011, stating:
“I am not good in English. From what I understand. You want me to release the ownership of . If i am correct. I am willing to release my ownership. Please guide me what I should do next.”
A further email on September 14, 2011 stated:
“ will expire on 17/10/2011. If I won't renew the ownership of , what do I need to do?”
This was followed by a further email on September 15, 2011 advising that:
“I decide to let the domain name expire.”
In response, the Center wrote to the parties asking if they wished to consider requesting a suspension of proceedings to explore a possible settlement. The Complainant advised that it did not wish to suspend the proceedings. The matter therefore proceeds to determination in accordance with the Policy and the Rules. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it is the owner of the trademark MASTERCARD and has established a substantial reputation and goodwill in that trademark. The trademark is registered in many countries of the world, including Thailand. The disputed domain name wholly contains the Complainant’s trademark and differs from it only by the addition to it of the word “world”. The addition of that word does not serve to distinguish the disputed domain name from the Complainant’s trademark, having regard particularly to the fact that the Complainant’s operations and reputation in its trademark are global. See for example, Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
At the time when the disputed domain name was registered in October 2008, the Complainant’s trademark had been widely used and promoted for many years and was well-known throughout the world. The Panel accepts that this was a matter of public knowledge and that there is accordingly a presumption that the Respondent was aware of the Complainant’s trademark and its rights and reputation in the mark at the time of registration. In the light of that knowledge, the Respondent’s use of the disputed domain name to direct to the website of the Complainant’s principal competitor cannot be considered to be a use of the disputed domain name in the connection of the bona fide offering of goods or services. As stated in Drexel University v. David Brouda,WIPO Case No. D2001-0067:
“rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.”
There is no suggestion that the Respondent has been known by the disputed domain name, nor has its use been a noncommercial or fair use. The Complainant has not authorized the Respondent to use the disputed domain name and there is no evidence of any other basis upon which it is open to the Panel to find that the Respondent may have a legitimate right or interest in it.
The Panel therefore finds that the Respondent has no legitimate rights or interests in the disputed domain name. C. Registered and Used in Bad Faith
As noted above, when the disputed domain name was registered in October 2008 the Complainant’s mark MASTERCARD was already famous worldwide and its reputation must be presumed to have been known by the Respondent. The Respondent’s registration of a domain name wholly incorporating that mark cannot have been done in good faith.
Since registering the disputed domain name the Respondent has directed it to the website of the Complainant’s major competitor, “Visa”. There is no evidence as to why it would do so unless it were out of malice or for commercial gain, as by a pay-per-click royalty. The Complainant submits that it was done for commercial gain and the Respondent has not sought to rebut that submission. The Panel accepts the Complainant’s submission and finds that the disputed domain name is being used in bad faith.
The Panel therefore finds 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 disputed domain name be transferred to the Complainant.
Desmond J. Ryan AM
Sole Panelist
Dated: November 9, 2011
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