The Complainant is Mastercard International Incorporated of Purchase, New York, United States of America, represented by Partridge IP Law P.C., United States.
The Respondent is Thi Thanh Nguyen, VPDD UBGM, Ltd. of Hanoi, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2012. On March 6, 2012, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On March 7, 2012, Moniker Online Services, LLC. 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 March 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2012.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on April 17, 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
The Complainant is a payments solutions company, active all over the world, and present in the payment card business since 1966. It has been using the designation “MASTERCARD” since at least as early as 1980.
The sign MASTERCARD is protected as a trademark through numerous trademark registrations all over the world, in particular in the United States, Viet Nam and the European Community. The oldest of these trademarks, the word mark MASTERCARD, has been registered in the United States since January 1982. Since June 12, 2009, the Complainant also holds a Community Trademark MASTERCARD INCONTROL. Furthermore, the Complainant holds several domain names integrating the sign MASTERCARD, in particular, , , .
The majority of these trademarks and domain names were registered prior to the registration of the disputed domain name, . This domain name was registered by the Respondent on April 11, 2008.
On the website “www.”, the Respondent does not appear to offer any goods or services, but merely lists links to external websites. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its MASTERCARD and MASTERCARD INCONTROL trademarks. It stresses the fact that the litigious domain name entirely comprises the trademarks “MASTERCARD” and “MASTERCARD INCONTROL”.
Furthermore, the Complainant states that the Respondent is not affiliated or related to it in any way, and that he did not authorise the Respondent to use the trademarks in question. The Complainant also states that the Respondent is not generally known by the disputed domain name and that he has not acquired any trademark or service mark rights in it.
At last, the Complainant contends that Respondent generates revenue by consumers “clicking through” to sites offering the goods and services of the Complainant’s direct competitors and other third parties, which in its view constitutes bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
A. The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
B. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
C. The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant holds several word and word/device marks for MASTERCARD. These trademarks are registered, in particular in class 36 (financial services), in most countries of the world, in particular in the United States, where the Complainant has its registered office, in the European Union, and in Viet Nam, where the Respondent resides. The trademarks put forward by Complainant are sufficient to found the Complaint.
Under the UDRP, the identity or confusing similarity requirement under paragraph 4(a) of the Policy only requires identity or confusing similarity between complainant’s trademarks and respondent’s domain name. There is no requirement of similarity of goods and/or services (e.g., AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc. / Corporation Texas v. Guillermo Lozada, Jr.,WIPO Case No. D2005-0485 ().
The existence of a confusing similarity within the meaning of paragraph 4(a) of the Policy makes no doubt in the present case, given that the distinctive element in the disputed domain name, i.e. “mastercard” is identical with Complainant’s trademark MASTERCARD. Taking into account that, due to its long and intensive use, MASTERCARD is a well known, if not famous, trademark, it must be considered as being strongly distinctive. Therefore, the other elements of the Domain Names, i.e. the words “in control” and the gTLD “.com”, which has a technical function, are not sufficient to avoid confusing similarity (e.g., Nokia Corporation v. N a.k.a. IBCC,WIPO Case No. D2000-0102 () and , Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 ().
The Community Trademark “MASTERCARD INCONTROL” was registered subsequent to the registration of the disputed domain name. (Even though this does not prevent the Panel’s finding of identity or confusing similarity under the UDRP, it would have been difficult to prove that the disputed domain name was registered in bad faith under the third element of the UDRP, based on this trademark alone (e.g. Reckitt Benckiser Plc v. Eunsook Wi,WIPO Case No. D2009-0239, ). Given that confusing similarity is found by this Panel based on the MASTERCARD trademarks, the MASTERCARD INCONTROL trademark is in any case not decisive for the present dispute.
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has shown that it owns MASTERCARD trademarks, and it has explicitly contested having granted the Respondent any right to use its trademarks. Whether MASTERCARD is a famous trademark or not does not need to be established here, it being sufficient to state that the trademark MASTERCARD is well known. MASTERCARD being a global brand, this is with no doubt the case also for Viet Nam where, by the way, the Complainant also holds several MASTERCARD trademarks.
Therefore, the Complainant made a prima facie showing that the Respondent knew about the Complainant’s trademark when registering the domain names, and that his intention was to take advantage from the well-known MASTERCARD trademark. Furthermore, the Respondent cannot argue that the disputed domain name was being used for legitimate non-commercial or fair use purposes, as he is using the domain names only for providing links to other websites, some of which lead (or lead) to offers from the Complainant’s competitors. It seems very likely that the Respondent receives commercial revenue from the display of these links (Baccarat SA v. Web Domain Names,WIPO Case No. D2006-0038 (). For this reason, there is not either a bona fide offering of goods or services according to paragraph 4(c)(i) of the Policy (Baccarat SA v. S/Troy Rushton,WIPO Case No. D2010-0953 ().
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
As mentioned above, it is more than likely that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name (e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that Respondent registered the domain names in full knowledge of Complainant’s rights and interests”).
The Respondent’s home page only contains links to various other websites, some of which are related to, or competitive with the Complainant’s services. The Complainant has provided screen shots of the websites to which the user was directed when clicking on “Best Credit Card Deals” or on “Credit Card Comparison” on the website “www.”. These screenshots show that the consumer was directed to websites comparing different credit cards and to competitors’ websites, such as the website of American Express (See Exhibit K of the Complaint).
The Panel finds that by using Complainant’s trademark as the distinctive element of the disputed domain name, the Respondent creates a risk of confusion, at least in the sense that the visitors to the website will, at least initially, expect a website operated by the Complainant or by one of its retailers. In any case, the visitor will have the impression that the website to which the disputed domain names resolves is associated with, or endorsed by, the owner of the MASTERCARD trademark, i.e. the Complainant. The fact that the links displayed on the website lead to the Complainant’s competitors and to unrelated products of third party providers, shows bad faith conduct on the Respondent’s part (e.g. deceuninck NV v. William Vaughan, smtm investments ltd,WIPO Case No. D2007-1911 (), all the more that the Respondent likely derives commercial revenue from the display of these links.
The Panel thus finds that the Respondent registered and is using the disputed domain name to intentionally attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website (paragraph 4(b)(iv) of the Policy).
The Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
For 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.
Lorenz Ehrler
Sole Panelist
Dated: May 1, 2012
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