Complainant is Mastercard International Incorporated, of Purchase, New York, United States of America, of United States of America, represented by Partridge IP Law P.C., United States of America.
Respondent is Education, Ersin Namli, of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2011. On January 3, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoD, LLC 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 January 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2012. On January 20, 2012, Respondent sent an email communication to the Center in which Respondent sought further information regarding the course of the proceedings. On the same date, the Center acknowledged receipt of Respondent’s email communication and provided information relative to the course of the proceedings. No formal response to the Complaint was filed by Respondent, however. Therefore, on February 7, 2012, the Center notified the parties the commencement of panel appointment process.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on February 20, 2012. 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 owns numerous trademark registrations in dozens of countries worldwide for the word “priceless” alone and in combination with other terms. For example, Complainant’s United States trademark registrations include PRICELESS, Registration No. 2,370,508 in International Class 36 with a registration date of July 25, 2000 covering the following goods and services: “Financial services, namely, providing credit card, debit card [charge card and stored value smart card services, prepaid telephone calling card services, cash disbursement,] and transaction authorization and settlement services”1 and PRICELESS.COM, Registration No. 3,693,182 in International Class 35, with a registration date of October 6, 2009 covering the following goods and services: “Promoting the goods and services of others by means of coupons, discounts, advertisements, incentives generated in connection with the use of credit and debit cards, electronic links to merchant and retailer web sites, and through promotional contests.”
Complainant’s PRICELESS family of trademark registrations cover many fields but are primarily made in classes associated with financial services. In many instances, Complainant has registered local translations of the linguistic equivalent to the descriptive term “priceless.”
The disputed domain name was registered September 29, 2011 and routes to a parking page displaying link advertising to third-party websites covering a variety of products and services.2 Some of the links route to web pages offering hotel, restaurant and tour reservations and discounts. 5. Parties’ Contentions A. Complainant
Complainant states that it is a leading global payments solutions company providing a broad variety of innovative services in support of its global members’ credit, deposit access, electronic cash, shopping, travel, business-to-business and related payment programs.
Complainant alleges that it has made extensive use for several years of the PRICELESS and PRICELESS.COM trademarks and that therefore the marks are famous. 3 Attached to the Complaint are copies of limited promotional materials making use of the trademarks, including an advertising campaign entitled “Priceless New York.” The Complaint also appends several pages from its Turkish website, some of which relate to Complainant’s rights in the PRICELESS family of marks.
Complainant alleges that the disputed domain name is confusingly similar to its PRICELESS mark because it wholly incorporates the mark and adds only a geographic term. Complainant points out that previous UDRP panels have held that the addition of a geographic term generally does not reduce confusing similarity resulting from the inclusion of a Complainant’s mark.
Complainant avers that Respondent’s parking page website displays links to competitors of Complainant because those links list offerings of “hotel reservations, restaurant coupons, and tours.”
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name since Respondent (1) is not affiliated or related to Complainant and has no license or authorization; (2) is not generally known by the disputed domain name and has not acquired trademark or service mark rights; and (3) is not offering the goods or services to which Complainant’s mark refers and is using the disputed domain name to route to Complainant’s competitors. Complainant avers that Respondent is deliberately using the disputed domain name for commercial gain by attracting Internet users to Respondent’s website based on confusion with Complainant’s marks. Complainant alleges that, by diverting Internet users to a website displaying links to products and services that are not Complainant’s, Respondent’s use of the disputed domain name is not bona fide.
Complainant alleges that Respondent registered the disputed domain name in bad faith because Respondent had constructive notice of Complainant’s trademarks because they had been registered and used by Complainant for several years before registration. Complainant infers that Respondent generates click-through revenues when confused visitors use links on Respondent’s site, which under the circumstances constitutes bad faith. Complainant also notes in general terms that since some of the links to third parties offer services directly competing with Complainant’s services, such use constitutes bad faith use in violation of paragraph 4(b)(iv) of the Policy, citing Mastercard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050.
On the basis of the above allegations, Complainant seeks transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).
Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, the Panel may accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
Complainant owns several registrations for the marks PRICELESS and PRICELESS.COM, which support its claim of rights in the terms “priceless” and “.”
Ignoring the generic top-level domain “.com”, the disputed domain name consists of the PRICELESS mark, adding only the geographical term “Istanbul.” The Panel recognizes that the mere addition of a geographical term to another’s mark is normally not sufficient to avoid confusion. See, e.g., Viceroy Hotels, L.L.C. , Kor Cayman Ltd. v. Mr. Syed Hussain, WIPO Case No. D2009-0962 (“Consistent with previous decision the Panel agrees that the addition of a city name to Complainants’ trademarks does not alter the confusion between Complainants’ marks and the disputed domain name that Internet users would experience.”).
On the other hand, Complainant’s PRICELESS and PRICELESS.COM marks correspond to terms that are also descriptive. Moreover, the Panel takes notice that, even examining only a single country’s trademark registration database (from the United States Patent and Trademark Office), dozens of other trademark holders use and have registered the descriptive term “priceless” in a variety of trademark classes covering retail goods and services. This Panel notes that such evidence of third-party use combined with the descriptive nature of the terms comprising the marks at issue may also serve to limit the scope of protection to which Complainant is entitled and may reduce the potential for confusion of the disputed domain name with Complainant’s PRICELESS family of marks.
Indeed, this Panel believes that Complainant’s marks and the disputed domain name may create readily distinguishable commercial impressions. Given the nature of the terms at issue and that the marks exist in a crowded field, the Panel might conceivably conclude that Complainant’s marks can coexist with the disputed domain name without a very high likelihood of creating confusion. See Pinnacle Intellectual Property v. World Wide Exports, WIPO Case No. D2005-1211. It is also the case that many panels have applied a test for confusing similarity which does not call for any likelihood of Internet confusion as such. See e.g. the range of views discussed in Apple Inc. v. Fred Bergstrom, LottaCarlsson, Georges Chaloux and Marina Bianchi,WIPO Case No. D2011-1388.
Ultimately, however, this Panel need not to decide the question of whether the Complaint establishes that Respondent’s disputed domain name is confusingly similar to marks of Complainant, since the Panel has determined that the Complaint fails on other grounds, as elaborated below. B. Rights or Legitimate Interests
The Panel agrees with Complainant that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) the use of the “domain name in connection with a bona fide offering of goods and services”; (2) an entity being commonly known by the domain name; or (3) the making of “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.” Policy, paragraphs 4(c).
Complainant must show a prima facie case proving that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Complainant avers that: (1) Respondent is not commonly known by the disputed domain name; (2) Respondent has no trademark registration to use the PRICELESS marks; and (3) Respondent has no authorization from Complainant to use the PRICELESS marks. In the absence of a response, the Panel accepts these undisputed factual averments as true.
The record shows that the website to which the disputed domain name routes displays commercial links to third parties offering goods and services. The Panel agrees with Complainant that it is fair to infer that Respondent receives revenue when users click through the links displayed on the parking page to which the disputed domain name routes. E.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079. Therefore the Panel rules that Respondent is not making a legitimate noncommercial, bona fide, or fair use of the disputed domain name.
Complainant has established a prima facie case. Refraining from submitting a response, Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in use of the disputed domain name.
Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
The Panel finds however, that the Complaint fails to establish the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, concealment of identity, and other circumstances. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel accepts Complainant’s undisputed factual averments that the PRICELESS marks have been in use for a number of years. Complainant contends that the fame of its PRICELESS family of marks should also be accepted by the Panel as the basis for constructive notice of Complainant’s rights, from which Respondent’s bad faith registration should be implied. See, e.g., WIPO Overview 2.0, paragraph 3.2.
While Complainant’s claim of broad public recognition for its marks may be verifiable, the Panel finds that the record in this proceeding fails to establish that Complainant’s PRICELESS marks are well known or famous - as such. The Complaint does not provide brand recognition surveys, costs associated with promotion, or revenues related to the PRICELESS family of marks, the kind of information traditionally provided to support claims that a mark is famous or well known. In any case, even if the Panel were to conclude on the basis of constructive notice that the disputed domain name was registered in bad faith, the Panel nonetheless finds that the Complaint fails to establish use in bad faith.4
Complainant’s claim that the disputed domain name is used in bad faith is largely based on Complainant’s allegation that Respondent’s parking page website displays links to competitors of Complainant. The presence of commercial links to competitors of a complainant is often accepted as evidence of bad faith use in UDRP proceedings. See, e.g., mVisible Technologies, Inc. v. Navigation Catalyst Sys., Inc., WIPO Case No. D2007-1141; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400). If the Complaint here clearly demonstrated that the website to which the disputed domain name routes displays links to competitors, that would be one piece of evidence supporting a finding of use in bad faith in this proceeding. However, unlike in some earlier cases in which Complainant was apparently able to point to such evidence of competitor links (See e.g. MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139), it is not evident from the record provided in this case.
Complainant’s rather general allegation that Respondent uses the disputed domain name in competition with Complainant also rests on two implicit assertions: (1) that the PRICELESS family of marks is associated with some of the areas represented by third-party links on Respondent’s website, which, according to the Complaint, are “hotel reservations, restaurant coupons, and tours”; or (2) that the PRICELESS family of marks is broadly associated with virtually any promotion of goods and services on the Internet – by “merchant and retailer web sites.”
As to the first assertion, there is no direct claim by Complainant that the PRICELESS family of marks is associated with hotel reservations, restaurant coupons, and tours.5 Instead, the Complaint states that the PRICELESS marks are “exclusively associated with the high quality financial services and related goods and services offered by MasterCard.”
Going beyond the allegations of the Complaint and examining the record, however, it is arguable that there exists a single piece of proof showing that the links on Respondent’s webpage are in competition with Complainant. Exhibit E, described by the Complaint as a copy of pages from Complainant’s Turkish website, is entitled “The priceless Promotions | MasterCard ®.” The pages reproduced in Exhibit E display small photographs with links apparently to hotels, dining deals, and tours in Turkey, while Respondent’s parking page displays sponsored links to a variety of subjects, including some hotels, tours and dining deals in Turkey.6
In a general sense, therefore, one could say that there is competition between the parties because at some point in time both have displayed websites with links to third parties offering hotel, restaurant, and tour reservations and related discounts. The Panel considers this to be relevant to the question of bad faith. However, the confirmation that this apparent competition exists between the parties through the two web sites using the term “priceless” does not fully answer the question whether the disputed domain name is being used in bad faith.
Turning to Complainant’s second implicit assertion respecting competition and bad faith use, as noted, the Panel finds Complainant’s claims to goods and services associated with its marks to be very broad. The Complaint directs the Panel’s attention to the PRICELESS and PRICELESS.COM trademarks, for which registration and claim details are set forth above. As noted, claims under United States Registration No. 3,693,182 for PRICELESS.COM (registered in October 2009) include “Promoting the goods and services of others by means of coupons, discounts, advertisements, incentives generated in connection with the use of credit and debit cards, electronic links to merchant and retailer web sites, and through promotional contests.”
The Panel observes that most links to commercial web sites that appear throughout the Internet fall within the quoted trademark claim, because they “[p]romote the goods and services of others . . . through electronic links to merchant and retailer web sites….”. In the Panel’s view, under the circumstances, to infer bad faith use on the basis of competition with Complainant from the display of links on a website “promoting the goods and services of others,” without more, is not merited. Such an inference would mean that bad faith use would be established for virtually any website displaying commercial links if the website’s domain name was confusingly similar to Complainant’s PRICELESS family of marks. As noted above, the Panel has already found that “priceless” is a descriptive terms, one that also appears as a term in registered trademarks by a large number of third party trademark holders in addition to Complainant.
Having chosen to adopt such a descriptive term in a field occupied by other trademark holders, Complainant’s trademark rights are necessarily limited for purposes of assessing the elements of this particular Policy dispute. Given the breadth of Complainant’s trademark claims and the number of other apparently legitimate users of marks including the term “priceless,” or confusingly similar terms, the Panel is not prepared to embrace such a sweeping conclusion.7
The sole evidence of circumstances bearing upon bad faith use in this proceeding consists of the display of some competitive links - to hotels, restaurants, and tours - on both parties’ respective web sites. In the Panel’s view, this evidence is too slender a reed to support the weight of the conclusion that Respondent is using the disputed domain name in bad faith.
The Panel concludes therefore that the Complaint fails to establish the requirements of Policy paragraph 4(a)(iii). 7. Decision
For all the foregoing reasons, the Complaint is denied.
Nasser A. Khasawneh
Sole Panelist
Dated: March 8, 2012
1 Brackets in original, official registration record.
2 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 4.5.
3 The Panel notes that Complainant chooses to make no reference to its recent United States applications for the marks PRICELESS NEW YORK, PRICELESS MIAMI (filing date on September 1, 2011) and PRICELESS CITY (filing date on October 14, 2011). The Panel therefore will not consider the potential implications of these pending trademark registrations in the present proceeding.
4 Both bad faith use and bad faith registration must be established for Complainant to prevail under the Policy. E.g., E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
5 In the table of 19 United States trademark registrations appended to the Complaint, no registrations are described as relating to hotel reservations, restaurant coupons and tours. The Panel has undertaken limited research on the United States Patent and Trademark Office database, and finds that Complainant recently applied for registration of the mark PRICELESS in International Class 35, in association with hotel and travel reservations. That application was not lodged until October 2011.
6 The Panel notes that the Complaint does not authenticate this evidence or indicate when its Turkish website displayed the hotel and restaurant links, factors that might bear upon the definition of the scope of Complainant’s business activities for purposes of the Panel making findings regarding competition and the question of bad faith by Respondent. The URL shown at the bottom of the relevant web pages allegedly reproduced in Exhibit E presently generates error messages.
7 The hazard of embracing such a sweeping conclusion involving Complainant’s descriptive marks is not academic. Complainant has also filed a similar UDRP proceeding against a different respondent, involving that respondent’s parking page and based on the same marks of Complainant, concurrently pending before this Panel. In that proceeding, the Panel reaches a result consistent with this ruling. See Mastercard International Incorporated v. Wesley Wobles,WIPO Case No. D2011-2311 (transfer denied for lack of evidence of bad faith use in light of the circumstances).
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