Complainant is MasterCard International Incorporated of Purchase, New York, United States of America (“U.S.”) represented by Partridge IP Law P.C., U.S.
Respondent is Juan Diaz Balladares of Buenos Aires, Argentina. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) was registered with URL Solutions, Inc. (the “Registrar”) on March 2, 2009. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2012. On April 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 25, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 1, 2012.
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 Respondent of the Complaint, and the proceedings commenced on May 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 24, 2012.
The Center appointed Clive L. Elliott as the sole panelist in this matter on May 31, 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 Domain Name was registered with the Registrar on March 2, 2009. 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 members’ credit, deposit access, electronic cash, business-to-business and related payment programs. Complainant asserts that it, through its predecessors in interest, has been in the payment card business since 1966 and has operated under the MASTERCARD name and mark since at least as early as 1980.
Complainant contends that it manages a family of famous and widely accepted payment card brands including MASTERCARD, MAESTRO and CIRRUS, and serves financial institutions, consumers and businesses in over 210 countries and territories.
Complainant states that in April 1980, it filed an application with the U.S. Trademark Office to register the trademark MASTERCARD and that since that date, it has gone to considerable lengths to protect the valuable goodwill in its MASTERCARD name and mark and has registered its mark in practically every nation around the world.
Complainant further states that in addition to its international trademark registrations, it has registered numerous domain names containing the MASTERCARD name and mark or variants thereof, including, among others, , , , , , , and . Complainant states that the earliest of these registered domain names, , was registered on July 27, 1994, which it submits is long prior to Respondent’s registration of the Domain Name.
Complainant submits that as a result of the care and skill exercised by it in the sale and promotion of its many MasterCard services and products, the supervision and control exercised by it over the nature and quality of these services and products, and the extensive advertising, sale and public acceptance thereof, the MASTERCARD mark has become famous, symbolizing an enormous amount of goodwill. Complainant suggests that the MASTERCARD mark and variants thereof are exclusively associated with the high quality financial services and related goods and services offered by MasterCard and that MASTERCARD is one of the most famous and widely recognized trademarks in the world.
Complainant asserts that it owns numerous U.S. trademark registrations for its MASTERCARD mark, as well as over 100 U.S. registrations and applications for other marks incorporating the term MasterCard.
Complainant asserts that the Domain Name was registered on March 2, 2009, which is long after Complainant’s adoption and registration of its MASTERCARD marks, and that the Domain Name is used on a website that offers credit card advertisements and click-through links to credit card companies.
Complainant asserts that it owns the MASTERCARD mark by virtue of long and extensive worldwide use of the mark, and ownership of numerous trademark registrations for the mark. Complainant claims that the Domain Name is confusingly similar to the MASTERCARD mark because it incorporates the entirety of MasterCard’s MASTERCARD mark. Complainant states that the Domain Name adds the letter “m” to the MASTERCARD mark, and asserts that this variation falls within the definition of typosquatting, which is a practice that generates confusion among Internet users who are misled when exposed to the mistakenly typed domain name.
Complainant states that Respondent is neither affiliated with nor related to it in any way, nor is Respondent licensed by MasterCard or otherwise authorized to use the MASTERCARD mark. Complainant contends that Respondent is not generally known and could never be known by the Domain Name, and submits therefore that without any trademark or service mark rights in the name or mark, Respondent lacks rights or legitimate interest in the Domain Name.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name and has registered and is using the Domain Name to unlawfully divert and siphon off visitors seeking Complainant’s MasterCard website. Complainant further submits that Respondent’s use of the Domain Name for such a purpose is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name.
Complainant contends that Respondent’s registration of the Domain Name that is confusingly similar to its famous trademark and the fact that Respondent has no relationship to that mark is evidence of bad faith registration and use. Complainant submits that MASTERCARD is an internationally known mark and that Respondent registered and began using the Domain Name long after MasterCard’s adoption and registration of its MASTERCARD marks. Complainant contends thus that Respondent had constructive and actual knowledge and submits that there is no legitimate reason for Respondent’s selection of the Domain Name other than to deliberately profit from confusing Internet users with MasterCard’s MASTERCARD marks.
Complainant further contends that Respondent also used the Domain Name in bad faith by exploiting the likelihood of confusion for a commercial gain and refers to Respondent’s web page which contains advertisements with click-through links. Complainant notes that such links usually generate revenue every time they are clicked, which it submits constitutes commercial gain. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant provides clear evidence that the MASTERCARD mark (the “MASTERCARD Trademark”) and variants of the mark are exclusively associated with a range of financial goods and services offered by Complainant. Complainant asserts, without contradiction, that the MASTERCARD Trademark is one of the most famous and widely recognized trademarks in the world.
Complainant relies upon rights acquired through its use of the MASTERCARD Trademark as well as by virtue of trademark registrations relating thereto. Such rights date back to since at least as early as 1980, which is well before the date of registration of the Domain Name.
It is clear that by virtue of its worldwide operations and the repute of the MASTERCARD Trademark, none of which is disputed, that an unrelated entity using a similar domain name is likely to lead to members of the public being confused and deceived. In this particular case, Complainant asserts that Respondent is exploiting the likelihood of confusion for a commercial gain, by virtue of Respondent’s web page which contains advertisements with click-through links.
Complainant contends that that slight variation of its MASTERCARD Trademark in the Domain Name; the addition of an extra “m” at the start of the Domain Name, takes advantage of typographical errors likely to be made by Internet users seeking to contact Complainant and to obtain/utilise its services and goods. This contention has obvious merit. It follows that the overall impression is that the Domain Name is necessarily connected in some way to Complainant and/or its MASTERCARD Trademark.
On this basis the Panel finds:
a) Complainant has rights in respect of the MASTERCARD Trademark.
b) The Domain Name is confusingly similar to the MASTERCARD Trademark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
Complainant contends that Respondent is using the Domain Name in connection with a website that offers credit card advertisements and click-through links to credit card companies. The Panel infers that this website allows Respondent to generate revenue from click-through activities by using a deliberately misspelled version of Complainant’s Trademark and Complainant’s inherent goodwill to attract Internet traffic. Respondent’s failure to deny these allegations lends weight to what Complainant asserts is happening and why.
The Panel concludes that the Domain Name is being employed as a means of diverting Internet customers. In those circumstances it is difficult to see how Respondent’s conduct could be characterized as legitimate. The business model of “typo-squatting” and registering well-known trademarks and names as domain names and deriving small but regular revenue from “click through” business is all too well-known.
On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith
Having reached the view that Respondent is engaged in typo-squatting and has intentionally attempted to attract for commercial gain Internet users to its website or other online locations not related to Complainant and thereby creating a likelihood of confusion with Complainant and/or the MASTERCARD Trademark, it may, in appropriate cases, be a relatively small step to finding bad faith. In the absence of any explanation from Respondent the Panel finds that it registered and is using the Domain Name to take bad faith advantage of Internet users who may wish to avail themselves of Complainant’s services and goods. Further, the Panel finds that such Internet users are likely to be attracted to Respondent’s website or other portals and be misled as to their origins, sponsorship or association.
Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainant’s MASTERCARD Trademark significantly pre-dated Respondent’s registration of the Domain Name and in light of the long-established use and widespread protection of the MASTERCARD Trademark that Respondent knew or ought to have known of Complainant’s MASTERCARD Trademark.
The Panel thus has no difficulty in concluding that the third element of the Policy has been met. 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 Complainant.
Clive L. Elliott
Sole Panelist
Dated: July 2, 2012
Full & Egal Universal Law Academy