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 Dolancer Outsourcing Inc. of New York, New York, United States. 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 March 23, 2012. On March 26, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On March 26, 2012, GoD, 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 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2012.
The Center appointed Angela Fox as the sole panelist in this matter on April 26, 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, MasterCard International Incorporated, is one of the world’s best-known global payment solutions companies. It has operated a payment card business under the name and trademark MASTERCARD since at least as early as 1980. The Complainant provides its MASTERCARD-branded services to consumers and businesses in over 210 countries and territories. The MASTERCARD mark is internationally known, including throughout the United States, where both parties are based.
According to the Complaint, the Complainant first applied for a United States trademark registration for MASTERCARD in April 1980, and since then has obtained trademark registrations for MASTERCARD and marks incorporating MASTERCARD in virtually all countries of the world. Details of some of the Complainant’s United States registrations for MASTERCARD and marks incorporating MASTERCARD were annexed to the Complaint, including the following:
- United States Registration No. 1,186,117 for MASTERCARD granted on January 12, 1982;
- United States Registration No. 1,292,519 for MASTERCARD granted on August 28, 1984;
- United States Registration No. 1,257,853 for a stylized MASTERCARD logo granted on November 15, 1983; and
- United States Registration No. 2,212,783 for MASTERCARD granted on December 22, 1998.
The Complainant states that it also owns over one hundred (100) further United States registrations and applications for marks incorporating MASTERCARD, details of some of which were also annexed to the Complaint.
The disputed domain name was registered by the Respondent on March 5, 2012. A printout of the web page linked to the disputed domain name was annexed to the Complaint, showing that it has been used to host a message board on a variety of disparate topics, including foreign exchange services, search engine optimization, e-commerce, social networks, software, entertainment, online earning, design, multimedia and programming. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its registered trademark MASTERCARD and marks incorporating MASTERCARD, since it incorporates the whole of the Complainant’s registered mark and adds only the non-distinctive generic Top-Level Domain (gTLD) suffix “.info”, a hyphen and the generic descriptive word “my”.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent is not affiliated with or authorized by the Complainant to use the MASTERCARD mark. The Complainant submits that the Respondent is not generally known by a name corresponding to the disputed domain name, and observes that the Respondent is not using the disputed domain name to offer genuine MASTERCARD-branded services of the Complainant, but is rather using it in respect of a generic message board with no connection to the Complainant's MASTERCARD business.
Finally, the Complainant submits that the disputed domain name was registered and has been used in bad faith. In particular, the Complainant contends that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s MASTERCARD trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the message board services offered on it under paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
The Complainant provided details of numerous United States trademark registrations within its ownership for marks comprising and incorporating the word “mastercard”. Although the Complainant did not exhibit copies of registration certificates or print-outs from the United States Patent and Trademark Office (“USPTO”) website to corroborate the list annexed to the Complaint, the Panel has confirmed the existence and ownership of the four United States registration numbers listed in Section 4 above.
The disputed domain name, , incorporates the Complainant’s registered MASTERCARD trademark in its entirety, and differs only in its inclusion of the descriptive, generic word “my”, a hyphen between “my” and “mastercard”, and the non-distinctive gTLD suffix “.info”. The hyphen is a non-distinctive element which serves only to represent the natural space between the two words “my” and “mastercard”, which cannot be represented in a domain name except through a device such as a hyphen or an underscore.
The word “my” is also non-distinctive and acts as a possessive modifier of the distinctive word “mastercard”. The word “mastercard” is both the Complainant’s registered trademark and the name of its internationally known payment card. Altogether, the disputed domain name is likely to be taken as relating to the use or management of personal, or individual, MASTERCARD cards or accounts. Rather than helping to distinguish the disputed domain name from the Complainant’s trademark, therefore, the descriptive word “my” serves actually to reinforce, to this Panel, the impression that the disputed domain name is related to the Complainant’s MASTERCARD mark and business.
The Panel therefore concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent has been using the disputed domain name to link to a message board with topics on a wide and disparate range of topics, including foreign exchange services, search engine optimization, e-commerce, social networks, software, entertainment, online earning, design, multimedia and programming, none of which, incidentally, bear any apparent relationship with the Complainant’s well-known MASTERCARD mark and its payment card business.
The website linked to the disputed domain name does not appear to offer any actual goods or services, however, and the Respondent cannot, therefore, be regarded as having used the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c) of the Policy.
The activities carried out at the Respondent’s website appear to be essentially noncommercial in nature, but in the Panel’s view they do not represent a legitimate noncommercial or fair use of the disputed domain name under paragraph 4(c) of the Policy. The disputed domain name is confusingly similar to the Complainant’s distinctive trademark, and has no independent descriptive meaning relevant or otherwise to the content of the message board linked to it. The disputed domain name is inherently likely to draw in Internet users familiar with the Complainant’s internationally known MASTERCARD mark and payment card business, and its value as a means of drawing in visitors to the Respondent’s message board is entirely bound up in its confusing similarity with the Complainant’s trademark. As such, the Respondent’s use, although noncommercial, is not in the Panel’s view a legitimate noncommercial or fair use under the Policy (see similarly, inter alia, American Automobile Association Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc,WIPO Case No. D2007-1141; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448; Champagne Lanson v. Development Services/MailP, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340); and Brink’s Network, Inc. v. Asproductions,WIPO Case No. D2007-0353).
In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and has been using the disputed domain name in bad faith. In particular, the Complainant invokes paragraph 4(b)(iv) of the Policy, under which a panel may find both registration and use in bad faith if there is evidence that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website or of a product or service on it.
In this case, the Respondent registered the disputed domain name on March 5, 2012. The Complainant’s distinctive MASTERCARD trademark had by then long been established as one of the world’s best-known and most successful credit card brands. Its home market was the United States, where the Respondent is also based. It is highly implausible that the Respondent was ignorant of the Complainant’s brand when it registered the disputed domain name.
The Respondent has been using the disputed domain name in relation to a website hosting discussion forums on a variety of different topics. Given the fame and distinctiveness of the Complainant’s mark and the absence of any plausible relevant descriptive meaning in relation to the Respondent’s website, it appears to this Panel to be substantially more likely than not that the Respondent registered and has used the disputed domain name intentionally to attract Internet users familiar with the Complainant’s MASTERCARD brand, with a view to enhancing the profile and usership of its online message board.
It is not clear to this Panel, however, that this case falls squarely within paragraph 4(b)(iv) of the Policy, since there is no evidence that by registering and using the disputed domain name the Respondent was seeking to benefit commercially.
Nevertheless, the instances of bad faith conduct listed under paragraph 4(b) of the Policy are expressly not exhaustive, and the Panel may infer bad faith registration and use in other circumstances as well where the Respondent’s conduct points to it. In this case, for the reasons already given, the Panel considers it implausible that the Respondent registered and has been using the disputed domain name in ignorance of the Complainant’s well-known trademark. The only conceivable benefit to the Respondent in registering and using a domain name that is confusingly similar to the Complainant’s well-known mark is the power of the disputed domain name to draw in Internet users familiar with the Complainant’s brand and thereby to increase (or perhaps more aptly, to divert) traffic to the Respondent’s online message board. Given the fame of the Complainant’s mark and the confusing similarity of the disputed domain name, the Panel thinks it probable that the Respondent set out to derive such benefit and that it is likely to have succeeded.
Taking all these circumstances into account, the Panel believes that the mere absence of evidence that the Respondent’s conduct was intended to lead to, or that it resulted in, identifiable commercial gain should not allow the Respondent to escape a finding of registration and use in bad faith when all other factors point to bad faith conduct. The circumstances discussed above suggest that the Respondent registered and has been using the disputed domain name with the intention of attracting Internet users to its website in order to raise the profile of its online message board. In the Panel’s view, the Respondent’s conduct in adopting a domain name that is confusingly similar to the Complainant’s well-known trademark in order to achieve this objective was not in good faith.
The Panel therefore concludes that the disputed domain name was registered and used in bad faith. 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.
Angela Fox
Sole Panelist
Dated: May 10, 2012
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