The Complainant is MasterCard International Incorporated, New York, United States of America, represented by Partridge IP Law P.C., United States of America.
The Respondent is Siegfried Waizenegger, Rheinland-Pfalz, Germany. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2012. On March 29, 2012, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On March 30, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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. Attempts to notify the Respondent of the Complaint by courier at the address provided and confirmed by Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR were not successful. Attempts to communicate with the Respondent by email at the email address as provided and confirmed by Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR were also not successful. Under the Rules, paragraph 2(a) the Center had employed the various forms of communication required “to employ reasonably available means calculated to achieve actual notice to the Respondent” and accordingly the proceedings commenced on April 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2012.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 9, 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 operates the well known international payment card business known as “Mastercard” offering credit and payment card services and related services internationally. It, or its predecessors in interest, have carried on this business since 1960, and under the MASTERCARD name since 1980. It operates in at least 120 countries. It has numerous registered trade marks in respect of the name MASTERCARD.
The Domain Name was registered on February 26, 2012. 5. Parties’ Contentions A. Complainant
The Complainant says that MASTERCARD is one of the best known trademarks in the world which is extremely famous and well known. It relies on its registered trade marks.
The Complainant says the word “sicherheit” in German means “secure”
It says the Respondent has operated a web site at “www.” which is now inactive having been suspended but which was previously used to operate what is commonly known as a “phishing” site, seeking to obtain from visitors to the site, who mistakenly believe they are at a genuine site of the Complainant’s, confidential and valuable financial data, which can then be used to perpetrate frauds on the Complainant. It says that the addition of the word secure in German is part of a deliberate ploy to mislead German speaking customers who reach this site that it is a genuine MASTERCARD site and then trick them into revealing information which compromises their financial security. The Complainant says this is part of a dishonest scheme to defraud the Complainant or its customers. The Complainant says this is use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark MASTERCARD. The filed evidence convincingly demonstrates that this is an extremely well known trade mark which is used very widely indeed throughout the world. There are a very large number of registrations either for or including the word MASTERCARD owned by the Complainant world wide – for example US registration number 2212783 dating from December 22, 1998 for the word MASTERCARD.
The Domain Name is confusingly similar to the MASTERCARD trade mark. The Panel does not speak German but readily available on-line translation resources (such as the Google translate service) confirm that “sicherheit” in German means “security”. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here the word “secure” or “security” in German) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189). See also MasterCard International Incorporated v. Erich Hogeberger,WIPO Case No. D2006-1050 and MasterCard International Incorporated v. Mike Morgan, WIPO Case No. D2008-1927 to similar effect.
Accordingly the Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
“Mastercard” is a term which is very widely recognized and associated with the Complainant’s business. Whilst it is possible to envisage other usages where the word “mastercard” or words “master card” might be used as a matter of English to refer to something other than the Complainant, the Panel finds that there is a very strong association of the word “Mastercard” with the Complainant. The addition of the word “secure” or “security” in German does not provide any additional basis for the Respondent to claim rights in the composite term.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the MASTERCARD trade mark. The Complainant has prior rights in the MASTERCARD trade mark which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
The evidence filed by the Complainant does not in itself clearly establish that the Respondent has used the Domain Name in connection with a “phishing” web site. The evidence simply shows a print out indicating that navigation to the site has been blocked because it is considered unsafe and possibly a phishing site. It is not clear to the Panel but this appears to a print out of a page generated by some intermediate security software rather than the website itself.
However the Respondent has been given an opportunity to provide any legitimate explanation it may have to counter this assertion and relatively limited evidence. Again the burden of production in this respect is shifted to the Respondent. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith use of the Domain Name. Accordingly the Panel accepts the Respondent’s evidence that the Domain Name has been used in connection with activity which is intended to obtain data which can then in all probability be used in further fraudulent activity directed against the Complainant or its customers. See Australia and New Zealand Banking Group Limited v. Bashar Ltd.WIPO Case No. D2007-0031, and the cases therein referred to, for further analysis of why “phishing” activities amount to use in bad faith. See also Grupo Financiero Inbursa S.A. de CV v. ibuirisa,WIPO Case No. D2006-0614 to similar effect.
Under the Policy evidence of registration and use in bad faith is established by, amongst other factors, circumstances which indicate that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location” (Policy paragraph 4(b)(iv)). In the present case the Panel concludes that the deliberate use of the Complainant’s brand name as part of the Domain Name, in combination with the word “secure” (in German) is intended to attract customers of the Complainant who may then be misled into providing confidential information. That falls squarely within the type of circumstances to which the Policy refers.
Accordingly the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Domain Name, , be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Dated: May 21, 2012
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