Complainant is MasterCard International Incorporated (“MasterCard”) of Purchase, New York, United States of America, represented by Partridge IP Law P.C., United States of America.
Respondent is Wavepass AS of Moss, Norway. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Domeneshop AS dba (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2012. On September 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 6, 2012, the Registrar 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 September 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 1, 2012.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on October 8, 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.
On October 12, 2012 the Panel issued Administrative Panel Procedural Order No. 1 asking Complainant to resubmit an Exhibit not part of the file received by the Panel. On October 17, 2012 Complainant stated that there was no such Exhibit referred to above and Complainant submitted an Amended Complaint. In order to treat each party with equality, the Panel issued Administrative Panel Procedural Order No. 2 providing Respondent a further period of 20 days to submit any Response to the Amended Complaint. Respondent did not submit any response. 4. Factual Background
According to the evidence submitted by Complainant, Complainant has numerous trademark registrations for MASTERCARD, including various U.S. and Community trademark registrations dating from the 1980’s forward. Complainant is a leading global payments solutions company. In addition Complainant has multiple domain names and websites containing the MASTERCARD name and mark. The trademark registrations of Complainant have been issued prior to the registration of the Domain Name.
The Domain Name was registered on March 1, 2011. 5. Parties’ Contentions A. Complainant
Complainant submits that the Domain Name is confusingly similar to the MASTERCARD trademark as it contains the MASTERCARD trademark in its entirety. According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name as (1) Respondent is not affiliated or related to MASTERCARD in any way, nor is Respondent licensed by MasterCard or otherwise authorized to use the MASTERCARD mark; (2) Respondent is not generally known by the Domain Name and has not acquired any trademark or service mark rights in the name or mark; and (3) Internet users are directed to a website which is a parking page, and passive holding is not bona fide offering of goods or services. Complainant submits that Respondent has registered and is using the Domain Name in bad faith as Respondent no doubt had knowledge of the well-known trademark of Complainant, and Respondent has engaged in a pattern of conduct by intentionally registering domain names for commercial gain in order to attract Internet users to Respondent's website based on a likelihood of confusion with Complainant's marks. Complainant has previously obtained a UDRP decision against Respondent. See Mastercard International Incorporated v. Ole-Christian Bangstein / WAVEPASS AS, NAF Claim No. FA1204001440785. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that the Domain Name should be transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Panel is satisfied that the registrant of record for the Domain Name is Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by Complainant in this proceeding. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has established that it is the owner of numerous trademark registrations for MASTERCARD. The Panel notes that Complainant’s registrations predate the creation date of the Domain Name.
The Domain Name incorporates the entirety of the MASTERCARD trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety. The addition of the common, descriptive or non-distinctive element “contactless” is insufficient to avoid a finding of confusing similarity.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. This is particularly true as Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. Based on the evidence provided by Complainant, Respondent redirects Internet users to a parking website. Respondent makes use of the value of the MASTERCARD trademark and the likelihood of confusion with the trademark of Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. Respondent is not commonly known by the Domain Name nor has it acquired trademark rights.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The trademarks of Complainant have been existing for a long time. Respondent knew or should have known that the Domain Name included Complainant’s MASTERCARD famous trademark.
The Panel notes the website at the Domain Name is currently a parking page. However, passive holding of the website does not prevent the Panel from finding registration and use in bad faith. The Panel further notes that Respondent undeveloped use of the website at the Domain Name which incorporates Complainant’s trademark in its entirety indicates that Respondent possibly registered the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, as per paragraph 4(b)(iv) of the Policy. Furthermore, the Panel accepts Complainant’s submission that bad faith registration and use of the Domain Name is further indicated by the fact that Respondent has engaged in a pattern of conduct by intentionally registering domain names for commercial gain in order to attract Internet users to Respondent’s website based on a likelihood of confusion with Complainant’s marks.
The Panel finds that Complainant has proven that the Domain Name has been registered and is being 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 Domain Name be transferred to Complainant.
Dinant T. L. Oosterbaan
Sole Panelist
Date: November 13, 2012
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