Complainant is Mastercard International Incorporated of New York, United States of America, represented by Partridge IP Law P.C., United States of America.
Respondent is Arena Offices of United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , , , , are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 27, 2012. On December 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 28, 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 January 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 30, 2013.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on March 7, 2013. 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
Complainant is a famous worldwide provider of financial services under its MASTERCARD and PAYPASS marks. Complainant owns many trademark registrations around the world for both marks, including those filed with the U.S. Patent and Trademark Office (“USPTO”) dating back to 1982 for MASTERCARD and back to 2004 for PAYPASS. Complainant also conducts business at and and many other domain names incorporating its marks.
Respondent registered the disputed domain names on December 19, 2010, and uses them to resolve to a parked page with links to Complainant’s competitors. 5. Parties’ Contentions A. Complainant states:
1. Respondent’s , , , , , , domain names are confusingly similar to Complainant’s MASTERCARD and PAYPASS marks.
2. Respondent does not have any rights or legitimate interests in the , , , , , , domain names.
3. Respondent registered and used the , , , , , , domain names in bad faith. 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 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 must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(1) the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(3) the disputed domain names have been registered and are being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., NAF Claim No.95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson,WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). A. Identical or Confusingly Similar
The Panel finds that Complainant’s registration of its MASTERCARD and PAYPASS marks with the USPTO confers rights in the mark under Policy, paragraph 4(a)(i). See Bloomberg L.P. v. Johnston, NAF Claim No. 760084 (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
Respondent’s disputed domain names are confusingly similar to Complainant’s MASTERCARD and PAYPASS marks pursuant to Policy, paragraph 4(a)(i), because they wholly incorporate one or both of the marks, and merely add a hyphen and a generic top-level domain (“gTLD”). The and domain names also add a generic word to one of Complainant’s marks. These changes are insufficient to distinguish the disputed domain names from Complainant’s marks. Thus, the Panel finds that Respondent’s , , , , , , domain names are confusingly similar to Complainant’s marks pursuant to Policy, paragraph 4(a)(i). See also Am. Online Inc. v. N Ltd.,WIPO Case No. D2000-1606 (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the domain name confusingly similar to the complainant’s mark); see also Trip Network Inc. v. Alviera, NAF Claim No. 914943 (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy paragraph 4(a)(i) analysis).
The Panel finds that Complainant has satisfied Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Once Complainant makes a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names under Policy, paragraph 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, NAF Claim No. 741828 (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, NAF Claim No. 780200 (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant states that Respondent has no affiliation with Complainant and has not been commonly known by the disputed domain names. The WhoIs information identifies “Arena Offices” as the registrant of the disputed domain names. Past UDRP panels have found WhoIs information to be evidence that respondents are not known by disputed domain names. The Panel thus finds that Respondent is not commonly known by the disputed domain names under Policy, paragraph 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, NAF Claim No. 740335 (finding that the respondent was not commonly known by the domain name under Policy, paragraph 4(c)(ii), based on the WhoIs information and other evidence in the record). See also Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (respondent had no rights or legitimate interests to use the domain name because respondent was not licensed or otherwise permitted to use complainant’s mark).
Complainant contends that the disputed domain names direct Internet users to parked pages featuring links to providers of competing products and services. The Panel finds that the use of the disputed domain names to advertise competing hyperlinks is not a bona fide offering of goods or services and that advertisements are not legitimate noncommercial or fair uses of the disputed domain names. See Royal Bank of Scotland Grp plc et al. v. Demand Domains, NAF Claim No. 714952 (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii).)
The Panel finds that Complainant has satisfied Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant argues that Respondent had constructive and actual knowledge of the marks based on its registrations of the marks around the world. The Panel finds, based on the registrations and on the fame of Complainant’s marks, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names. In the circumstances, this is evidence of bad faith under Policy, paragraph 4(a)(iii). See Univision Comm'cns Inc. v. Norte, NAF Claim No. 1000079 (rejecting the respondent's contention that it did not register the domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the domain name).
Complainant characterizes Respondent’s use as passive holding, and further argues that there is no plausible legitimate reason for Respondent’s registration and holding of the disputed domain names containing its marks, demonstrating bad faith. The Panel agrees but finds that Respondent no doubt collects revenue from the links resolving from the disputed domain names, which constitutes bad faith pursuant to Policy, paragraph 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, NAF Claim No. 201976 (“Respondent's prior use of the domain name is evidence of bad faith pursuant to Policy 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). 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 names , , , , , , and be transferred to Complainant.
Sandra J. Franklin
Sole Panelist
Date: March 20, 2013
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