The Complainant is Mastercard International Incorporated of Purchase, New York, United States of America (“United States”), represented by Partridge Partners PC, United States.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama / Tan Chin Kee, AZ Affiliate Marketing Enterprise of P.Pinang, Malaysia, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2017. On September 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 27, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 29, 2017, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 4, 2017.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint and the proceedings commenced on October 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2017. On October 12, 2017, the Respondent submitted an email indicating that it has received the Complaint and will study it. The Respondent did not file any substantive response by the specified due date. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on October 27, 2017.
The Center appointed Michael D. Cover as the sole panelist in this matter on November 10, 2017. 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.
At the request of the Panel, the Center granted an extension of the time for forwarding the Decision to December 1, 2017. 4. Factual Background
The Complainant is a substantial global payments solutions company providing a broad variety of services in support of its members’ credit, payment card, deposit access, electronic cash and related payment programmes. The Complainant, including through its predecessors in interest, has been in the payment card business since 1966 and has operated under the MASTERCARD name and trademark since 1980. The Complainant operates its business in a substantial number of countries around the world.
The Complainant is the proprietor of numerous trademark registrations for MASTERCARD around the world. These trademark registrations include a significant number of registered trademarks for MASTERCARD in the United States, as well as in Panama (see, e.g., United States trademark, MASTERCARD, registration number 1,186,117, registered on January 12, 1982). The Complainant is also the registrant of numerous domain names consisting of or including the word “mastercard”, the earliest of which was registered in July 1994.
The Disputed Domain Name was first registered on September 3, 2004. The Disputed Domain Name did not resolve to any active website at the time of filing the Complaint. Currently, the Disputed Domain Name redirects to a third-party website which appears to be unrelated to the word “mastercardcredit” or the mark MASTERCARD. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar:
The Complainant submits that the Disputed Domain Name is identical or confusingly similar to the Complainant’s MASTERCARD trademark. The Complainant notes that the Disputed Domain Name incorporates the Complainant’s trademark MASTERCARD in its entirety and that the only difference between the Disputed Domain Name and the Complainant’s MASTERCARD trademark is the addition of letters forming the word “credit”. The Complainant submits that these changes and additions are insufficient to distinguish the Disputed Domain Name from the Complainant’s MASTERCARD trademark. The Complainant notes that the phrase “credit” is generic and descriptive and does nothing to distinguish the Disputed Domain Name from the Complainant’s trademark MASTERCARD and does nothing to avoid confusion. The Complainant notes that the addition of the generic Top-Level Domain (“gTLD”) “.com” is required for technical reasons and can be ignored for the purpose of comparison of the Disputed Domain Name with the Complainant’s trademark MASTERCARD.
Rights or Legitimate Interests:
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In particular, the Respondent has not at any time been generally known by the Disputed Domain Name, has not used or made demonstrable preparations to use the Disputed Domain Name and is not making a legitimate noncommercial of fair use of the Disputed Domain Name. The Complainant also notes that the Complainant has not licensed or authorized the Respondent to use the MASTERCARD trademark and that the Respondent is not affiliated to the Complainant.
The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Registered and Used in Bad Faith:
The Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith. The Complainant states that the Respondent has acquired and is passively holding the Disputed Domain Name long after the Complainant’s adoption, use and registration of its MASTERCARD trademarks. The Complainant submits that the Respondent had constructive and actual notice of the substantial use and registration of its MASTERCARD trademarks in the United States and Panama. The Complainant goes on to submit that there could have been no plausible reason for the Respondent’s selection of the Disputed Domain Name other than as a deliberate attempt to profit unfairly from confusion with the Complainant’s registered trademark MASTERCARD.
In this connection, the Complainant cites two UDRP cases, where a respondent’s registration and passive holding of a domain name incorporating a well-known trademark constituted the registration and use of a trademark in bad faith. One case that is cited by the Complainant is Veuve Clicquot Ponsardin, Maison Fonde en 1772 v. The Polygenix Group Co., WIPOCase No. D2000-0163, where the panel found registration and use in bad faith where the registration of a domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”
The Complainant concludes that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent has not responded substantively to the Complaint. 6. Discussion and Findings The Substantive Issues
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established both registered and common law rights in its MASTERCARD trademark. The Complainant owns and uses its registered trademark in the United States and around the world and uses a large number of domain names in connection with its business, those domain names all having the common element of the letters “mastercard”.
The Panel also accepts the Complainant’s submission that the Disputed Domain Name is confusingly similar to the Complainant’s trademark MASTERCARD. It is well established that the addition of generic or descriptive words or the addition of a gTLD or other non-distinctive elements is not sufficient to avoid confusing similarity. The dominant element of the Disputed Domain Name is the Complainant’s trademark MASTERCARD.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark MASTERCARD and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Dispute Domain Name. The Panel notes that the Complainant has not permitted or licensed the Respondent to use the MASTERCARD trademark and that the Respondent is not affiliated to the Complainant.
It is a reasonable inference that the Respondent was aware of the Complainant’s well-known MASTERCARD trademark when it registered the Disputed Domain Name. According to the Complaint, the Disputed Domain Name did not resolve to any active website when it was filed with the Center. Currently, the Disputed Domain Name redirects to a third-party website which appears to be unrelated to the word “mastercardcredit” or the mark MASTERCARD. There is no evidence that the Respondent has used or prepared to use the Disputed Domain Name in connection with a bona fide offering of goods or services and nor is there any evidence that the Respondent was commonly known by the Disputed Domain Name, so those routes are not available to the Respondent. The Respondent has not come forward to assert any rights or legitimate interests in the Disputed Domain Name.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been met. C. Registered and Used in Bad Faith
The Panel accepts the submissions of the Complainant on this head and finds that the Disputed Domain Name has been registered and is being used in bad faith. The Panel accepts that the registration and passive holding of a domain name including a well-known trademark constitutes the registration and use of that domain name in bad faith. The subsequent redirection of the Disputed Domain Name to a third-party website unrelated to the Complaint does not alter the Panel’s finding in this regard.
The Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Michael D. Cover
Sole Panelist
Date: December 1, 2017
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