The Complainant is Mastercard International Incorporated of Purchase, New York, United States of America (“US”), represented by Partridge IP Law P.C., US.
The Respondent is Yerect International Limited of Toronto, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2013. On December 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2013, the Registrar 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 December 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2014.
The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on January 15, 2014. 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.
The language of the procedure is English. 4. Factual Background
The Complainant, Mastercard International Incorporated, is a company specialized in global payments solutions such as deposit access, electronic cash or payment programs. In particular, the Complainant manages various payment cards.
The Complainant develops its activities under various trademarks consisting of or containing the word MASTERCARD throughout the world since its first trademark application for MASTERCARD in the United States in April 1980.
The Complainant indicates that it owns several US trademark registrations (among other registrations) consisting of or containing the term MASTERCARD, such as:
- US trademark registration No. 3.102.985 for MASTERCARD INTERNATIONAL & design registered on June 13, 2006 for “association services, namely, promoting the interest of banks, credit unions, and other regulated financial institutions”;
- US trademark registration No. 1.292.519 for MASTERCARD registered on August 28, 1984 for “financial services, namely, assisting its members in the sale of traveler’s cheques, integrated funds management programs, and money order services”;
- US trademark registration No. 1.186.117 for MASTERCARD registered on January 12, 1982 for “financial services, namely, providing bank card services”; and
- US trademark registration No. 1.257.853 for MASTERCARD & design registered on November 15, 1983 for “financial services, namely, providing bank card services”.
The disputed domain name was registered on July 17, 2013, in the name of Yerect International Limited.
According to the WhoIs search results, Yerect International Limited has an address in Toronto, Canada.
The Complainant has submitted a non-dated printout showing that the disputed domain name was connected to a website displaying links to competing services, including services of competitors such as Visa and American Express.
As of the date of the Decision, the Panel observes that the disputed domain name is leading to a web page displaying various links on the topic of credit card related services, some of which mentioning competitors of the Complainant such as Visa and American Express.
The Respondent did not file any response and was declared in default. 5. Parties’ Contentions A. Complainant
The Complainant’s submissions may be summarized as follows:
The disputed domain name contains the mark MASTERCARD in its entirety and is thus confusingly similar to the marks of the Complainant.
The adjunction in the disputed domain name of the term “international” to the MASTERCARD trademark does not change the overall impression of the disputed domain name nor does it avoid confusion, as the term “international” is a non-distinctive, generic term.
The Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent is not affiliated or related to the Complainant, nor is it licensed by the Complainant or otherwise authorized to use the MASTERCARD marks. Furthermore, the Respondent is not offering the goods and services at issue, but only uses the disputed domain name to display links to external websites, some of which offer the goods and services of the Complainant’s competitors. The Respondent is therefore not making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Indeed, the disputed domain name offers links to services directly competing with the Complainant’s services. Since the Respondent registered the disputed domain name after the Complainant’s trademarks registrations and after the long use by the Complainant of its MASTERCARD trademarks, it is unconceivable that the Respondent did not have actual knowledge of the Complainant’s long-standing rights in the valuable MASTERCARD trademarks. The Respondent’s registration and use of the disputed domain name is an intentional attempt to divert customers for commercial gain and disrupt the Complainant’s business.
The Complainant consequently requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant states that it is the owner of various registrations for the mark MASTERCARD (word mark), the mark MASTERCARD & design or MASTERCARD INTERNATIONAL & design. The Complainant does not submit evidence to support these allegations, as no copies of certificates of registration or excerpts of official online registries are provided.
Other UDRP panels have been faced with the same lack of evidence in prior cases involving the Complainant. These panels have admitted the existence of the Complainant’s trademark rights (see MasterCard International Incorporated (“MasterCard”) v. Dynamic Travel & Cruises,WIPO Case No. D2013-1089: “The Complainant contends that it has numerous worldwide registrations of the MASTERCARD Mark. Respondent has not contested these contentions. Therefore, the Panel finds that the MASTERCARD Mark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the MASTERCARD Mark”; see also MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions,WIPO Case No. D2008-1999, where the panel concluded that “there is no question that Complainant has rights in its longstanding and famous MASTERCARD mark”).
On the basis of these prior decisions, the lack of contestation of the Complainant’s trademark rights by the Respondent, and the high likelihood that a major player like the Complainant would indeed own numerous trademark registrations for its core brand, the Panel will consider that the Complainant owns the trademark registrations cited in the Complaint.
The disputed domain name is strictly identical to the word element of the mark MASTERCARD INTERNATIONAL & design. It is furthermore highly similar to the word mark MASTERCARD as it incorporates it entirely. The additional term “international” is descriptive and devoid of distinctiveness (see MasterCard International Incorporated v. Dynamic Travel & Cruises,WIPO Case No. D2013-1089, where the panel decided that the addition of a non-distinctive, descriptive or generic term such as “travel” does not change the overall impression of a mark or avoid confusion). Furthermore, the term “international” only refers to activities taking place on a worldwide basis (see for instance MasterCard International Incorporated v. Protected Domain Services -- Customer ID DSR-2156800 / Piyabute Fuangkhon,WIPO Case No. D2011-1507, where the panel ruled that the addition of the word “world” to the term “mastercard” does not serve to distinguish the disputed domain name from the Complainant’s trademark, having regard particularly to the fact that the Complainant’s operations and reputation in its trademark are global).
The disputed domain name is accordingly identical or confusingly similar to trademarks in which the Complainant has rights. The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent is not a licensee of the Complainant, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no indication that the disputed domain name corresponds to the Respondent’s name.
The Respondent has used the disputed domain name in connection with a website featuring sponsored links promoting services of the Complainant’s competitors. A number of UDRP panels have found that use of a domain name corresponding to the trademark of another for the purpose of offering sponsored links is generally not evidence of any rights or legitimate interests (see Woolworths Limited v. DomainAdminkPrivacyP/Smvs Consultancy Privacy Limited,WIPO Case No. D2010-1046, Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation,WIPO Case No. D2009-0776, Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe,WIPO Case No. D2007-1695). Furthermore, sponsored links to the webpages of the Complainant’s competitors does not constitute a bona fide offering of goods and services (see MasterCard International Incorporated v. Eric Hochberger,WIPO Case No. D2006-1050).
Furthermore, the Respondent did not file a Response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). It is the Panel’s inference that the Respondent’s silence corroborates the Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the well-known character of the trademark MASTERCARD, the Panel finds is highly likely that the Respondent had knowledge of the Complainant’s mark when it registered the disputed domain name (see for instance MasterCard International Incorporated v. Protected Domain Services -- Customer ID DSR-2156800 / Piyabute Fuangkhon,WIPO Case No. D2011-1507, where the panel held that there was a presumption that the Respondent was aware of the Complainant’s trademark and of its rights and reputation in the mark at the time of registration).
As set forth above, the Respondent has used the disputed domain name in connection with a website consisting essentially of sponsored links promoting services directly competing with the Complainant’s services. This shows, in the Panel’s opinion, an intention on the part of the Respondent to exploit and profit from the Complainant’s mark. The Panel is of the view that the Respondent is attempting to generate financial gains by means of “click through” revenues to sites offering goods and services directly competing with the Complainant’s goods and services. Such conduct constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy (see for instance MasterCard International Incorporated v. Keyword Marketing, Inc.,WIPO Case No. D2007-1138; F. Hoffmann-La Roche AG v. James Lee,WIPO Case No. D2009-1199, Scania CV AB v. Michael Montrief, WIPO Case No. D2009-1149, Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation,WIPO Case No. D2009-0776, AllianceBernstein LP v. Texas International Property Associates,WIPO Case No. D2008-1230).
For the reasons set out above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy. 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.
Anne-Virginie La Spada-Gaide
Sole Panelist
Date: January 29, 2014
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