ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Mastercard Prepaid Management Services Limited v. Carolina Rodrigues, Fundacion Comercio Electronico Case No. D2022-1176 1. The Parties The Complainant is Mastercard Prepaid Management Services Limited, United Kingdom, represented by Dechert, United Kingdom. The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 5, 2022. On April 5, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2022, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 25, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 16, 2022. The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 19, 2022. 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. page 2 4. Factual Background The Complainant in this administrative proceeding is MasterCard Prepaid Management Services Limited, an independent legal entity existing under the laws of England and Wales. The Complainant is part of the MasterCard group of companies and focuses its business activities on the management and delivery of consumer and corporate prepaid travel cards to business partners around the world, including financial institutions, retailers, travel agents and foreign exchange bureaux. The Complainant offers a variety of prepaid travel cards including the "Cash Passport" range of prepaid cards. The Complainant has also used the "sub-brand" "Corporate Cash Passport" for a range of business expense and disbursement products for many years. The Complainant operates websites at and . The Complainant has registered, inter alia, the following trademarks: CASH PASSPORT (word), United States Trademark No. 4027701, registered on September 20, 2011; CASH PASSPORT (word), United States Trademark No. 3326139, registered on October 30, 2007; . CASH PASSPORT (word), European Union No. 0949165, registered on October 15, 2007; CASH PASSPORT (word), European Union Trademark No. 2249928, registered on September 27, 2002; The disputed domain name was registered on May 26, 2021. Currently the disputed domain name does not resolve to an active website. The Complainant has however documented that previously (April 1, 2022) the disputed domain name resolved to a website consisting of a directory of pay-per-click ("PPC") links, some of them showing products identical and/or similar to the goods and services covered by the Complainant's trademark registrations and the goods and services for which the Complainant has developed goodwill and reputation under its CASH PASSPORT trademark. 5. Parties' Contentions The Complainant claims that: (a) the disputed domain name is confusingly similar to the Complainant's trademark; (b) the Respondent lacks any rights or legitimate rights in the disputed domain name; and (c) the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and page 3 (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name consists of the CASH PASSPORT trademark combined with the term "comporate". This Panel agrees with the Complainant's assertion that the addition of the term "comporate" in the disputed domain name does not prevent a finding of confusing similarity between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8 states: "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element." Furthermore, the applicable Top Level Domain ("TLD") ".com" is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name "comporatecashpassport" or by any similar name. The Respondent has no connection to or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In fact, it appears that the disputed domain name was used for a website consisting of a directory of PPC links, some of them showing products identical and/or similar to the goods and services covered by the Complainant's trademark registrations. Moreover, the Respondent has not replied to the Complainant's contentions claiming any rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel, based on the evidence presented, accepts and agrees with the Complainant's contentions that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered many years after the Complainant's trademarks were registered. In addition, owing to the substantial presence established by the Complainant worldwide, it is very unlikely that the Respondent was not aware of the existence of the Complainant's trademarks when registering the disputed domain name that is confusingly similar to the Complainant's trademark. Moreover, considering the Complainant use of the sub-brand "Corporate Cash Passport" and the sub-domain , to which the disputed domain name appears to be a typosquatting variation thereof, the Panel's finding on Respondent's awareness of the Complainant is reinforced. Therefore, it is more likely than not that the Respondent, when registering the disputed domain name, had knowledge of the Complainant's earlier rights to the CASH PASSPORT trademark. The disputed domain name, at least for a certain period, has been used for a directory of PPC links, including some showing products identical and/or similar to the goods and services covered by the Complainant's trademark registrations, and offered by the Complainant's competitors (e.g., Visa Travel page 4 Money). While the disputed domain name may no longer resolve to an active website, under the circumstances of this proceeding, the non-use of the disputed domain name does not prevent the Panel's finding of bad faith under the doctrine of "passive holding". See section 3.3 of the WIPO Overview 3.0. In addition, the Respondent has not responded to the Complainant's cease and desist letters in this proceeding; the Respondent has not denied any of the assertions of bad faith made by the Complainant. The bad faith registration and use of the disputed domain name is also affirmed by the Respondent's pattern of conduct. In fact, as evidenced and documented by the Complainant, the Respondent has engaged in a clear pattern of registering domain names corresponding to trademarks held by third parties. Between 2018 and 2022, the Respondent has been found to have registered domain names in bad faith on numerous prior occasions. In Corning Incorporated v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico (WIPO Case No. D2021-4225), the panel stated that: "the Respondent has been a Respondent in two hundred sixty-three prior UDRP cases involving over 400 domain names that contain third party marks to which she is not entitled". In Alight Solutions, LLC v. Carolina Rodrigues, Fundacion Comercio Electronico (WIPO Case No. D2021-4025) it was held that "As additional circumstances suggesting bad faith, the Panel notes that there has been no Response in this case, the publicly available WhoIs is masked via the use of a privacy service, and the disclosed Respondent has been the subject of numerous prior UDRP proceedings, illustrating a pattern of bad-faith registrations". Accordingly, the Panel finds, based on the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Complainant has satisfied 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. /Fabrizio Bedarida/ Fabrizio Bedarida Sole Panelist Date: May 31, 2022
Full & Egal Universal Law Academy