The Complainant is Mastercard International Incorporated, Purchase, New York, United States of America (“US”), represented by Partridge Partners PC, US.
The Respondent is Registration Private, Domains By Proxy LLC, Scottsdale, Arizona, US / Amir Soleymani of Liverpool, United Kingdom of Great Britain and Northern Ireland (“UK”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2018. On July 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2018, 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 July 16, 2018 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 July 24, 2018. The Respondent submitted an email communication to the Center on July 16, 2018.
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 July 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2018. Due to a clerical error, the Complaint was re-notified to the Parties on August 22, 2018, including an additional email address of the Respondent and granting the Respondent an additional five day period (i.e., through August 27, 2018) in which to indicate whether it wished to participate to this proceeding. The Respondent submitted a second email communication to the Center on August 22, 2018, to which the Center responded by sending a possible settlement email to the Parties on August 28, 2018. The Complainant submitted an email communication the Center on September 3, 2018, requesting the Center to proceed to appoint the Panel. No formal Response was filed with the Center.
The Center appointed Torsten Bettinger as the sole panelist in this matter on September 4, 2018. 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 Complainant is a well-known worldwide provider of financial services under its MASTERCARD marks. The Complainant owns many trademark registrations around the world for the mark MASTERCARD, and indicates first use of the Mark since as early as 1980.
The Complainant provided evidence that it registered the trademark MASTERCARD with the US Patent and Trademark Office in 1980.
In addition to maintaining an international portfolio of trademark registrations the Complainant has registered numerous domain names incorporating MASTERCARD or variants including, inter alia, , , , , and . It registered in July 1994.
The Respondent registered the disputed domain name on August 21, 2017, and uses it to resolve to a website called “Mastercard Hub” which claims to offer prepaid MASTERCARD debit cards. 5. Parties’ Contentions A. Complainant
With regard to the requirement of identity or confusing similarity between the trademark and the domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain name is confusingly similar to a trademark in which it has rights as the disputed domain name incorporates the Complainant’s MASTERCARD trademark in its entirety and only differs from the Complainant’s trademark by the addition of the descriptive term “hub”.
The Complainant further argues that it is generally accepted that the gTLD, such as “.com”, is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- the Respondent is not sponsored by or affiliated with the Complainant in any way;
- the Respondent is not commonly known by the disputed domain name, and cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(c)(ii);
- it has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark;
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:
- the Respondent acquired and began the unauthorized use of the disputed domain name long after the Complainant’s adoption, use and registration of its MASTERCARD mark;
- at the time the disputed domain name was registered, the Complainant had made substantial use of its MASTERCARD mark in the US through the domain name as well as other domain names incorporating the MASTERCARD mark and that therefore, the Respondent had constructive and actual notice of the Complainant’s rights in its MASTERCARD mark;
- there is 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 MasterCard’s MASTERCARD mark;
- it is apparent that the disputed domain name is deliberately used for commercial gain to attract Internet users to the Respondent’s website based on a likelihood of confusion with the Complainant’s MASTERCARD marks, which satisfies the bad faith requirement of paragraph 4(b)(iv) of the Policy. B. Respondent
In his email response dated August 22, 2018, the Respondent submits that he has never intended to use the disputed domain name in bad faith and that as the disputed domain name was available for registration simply registered it legally and developed a website to promote the domain name. 6. Discussion and Findings A. Identical or Confusingly Similar
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case, the disputed domain name only differs from the Complainant’s trademark MASTERCARD by the addition of the dictionary term “hub”.
The addition of merely descriptive wording to a trademark in a domain name is insufficient to distinguish a domain name from a complainant’s trademark and in itself to avoid a finding of confusing similarity under the first element of the UDRP. (See, for instance, Facebook, Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547 (“The disputed domain names contain as a first and/or dominant element the Complainant’s famous trademark FACEBOOK, combined with a variety of descriptive terms, for example, “account”, “password”, “hacker”, “analytics”, “survey” et cetera. The addition of these terms do not serve to distinguish the disputed domain names in any material way.”); see also, for instance, Dropbox, Inc. v. Mohd Shariq, Techinspire,WIPO Case No. D2016-1194 (“The domain name consists of the Complainant’s registered mark DROPBOX plus the generic words “support” and “number” separated by hyphens. The addition of these generic words and hyphens do not serve to distinguish the domain names from the Complainant’s DROPBOX marks and the Panel finds that the domain names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.”); see also section 1.9 of WIPO Overview 3.0).
Finally, it has been long established under the UDRP that the specific generic Top-Level Domain (“gTLD”) designation such as “.com”, “.net” and “.org” is typically not to be taken into account when assessing the issue of identity or confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
For the foregoing reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark MASTERCARD in which the Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy the Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are 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 or service mark at issue.”
The Complainant has asserted that it never licensed or permitted the Respondent to use the Complainant’s MASTERCARD trademark, the Respondent has no trademark rights that correspond to the disputed domain name and the Respondent has not been commonly known by the disputed domain name.
Furthermore, the Complainant has provided evidence that the Respondent is using the disputed domain name to redirect Internet users to a website that is called “Mastercard Hub” which claims to offer prepaid MASTERCARD debit cards.
This is sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.
Given that the Respondent has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, the Panel concludes that the Complainant has also satisfied the second element set forth by paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Based on the record in this proceeding, the Panel is satisfied that the Complainant’s MASTERCARD mark is highly distinctive and famous throughout the world.
Given the Complainant’s renown and goodwill worldwide it is inconceivable that the Respondent did not have knowledge of the Complainant’s MASTERCARD trademark at the time of registration of the disputed domain name in 2017.
As the disputed domain name reproduces the Complainant’s trademark in its entirety with the mere addition of the dictionary term “hub”, the Panel concludes that on the balance of probabilities the Respondent has registered the disputed domain name with the purpose of deliberately causing confusion amongst Internet users in order to take unfair advantage of the Complainant’s goodwill and reputation.
The Panel therefore concludes the Respondent registered the disputed domain name in bad faith.
The Complainant provided evidence that the disputed domain name has been actively used by the Respondent to redirect Internet users to a website that called “Mastercard Hub” which claims to offer prepaid MASTERCARD debit cards.
In doing so the Respondent attempted to trick and confuse the minds of Internet users that the Respondent’s site was an official site of the Complainant. Internet users who were looking to use the goods and services of the Complainant’s were misled and deceived by the Respondent’s web page into believing that they were accessing an official web page of the Complainant.
The Respondent therefore has used the disputed domain name for commercial gain by offering the Complainant’s products and has caused a likelihood of confusion by passing off the site as if it were the Complainant’s official site.
This demonstrates that the sole purpose of the registration and use of the disputed domain name is to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s MASTERCARD mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location as prohibited by paragraph 4(b)(iv) of the Policy. (See Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044; Fresh Intellectual Properties, Inc. v. Matt Braska,WIPO Case No. D2005-0096 and Nine West Development Corporation v. Registrant [1168318]/Moniker Privacy Services/Registrant [1260512]: Domain Administrator,WIPO Case No. D2008-0154; Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 and Advance Magazine Publishers Inc. v. Pablo Palermao,WIPO Case No. D2008-0026 which confirm that bad faith is evidenced where a respondent uses virtually the same mark as a domain name and where a respondent attempts to trade on the goodwill associated with a mark in which the complainant has rights). 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.
Torsten Bettinger
Sole Panelist
Date: September 17, 2018
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