ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Mastercard International Incorporated v. Janne Antikainen, Digitalmoneytransfer.es Case No. D2023-4223 1. The Parties The Complainant is Mastercard International Incorporated, United States of America ("United States"), represented by Baker Botts, LLP, United States. The Respondent is Janne Antikainen, Digitalmoneytransfer.es, Finland. 2. The Domain Names and Registrars The disputed domain name registered with CSL Computer Service Langenbach GmbH dba Joker.com (the "First Registrar"). The disputed domain name is registered with GoDaddy.com, LLC (the "Second Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2023. On October 11, 2023, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 11, 2023, the Second 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 (Anonymous Registrant) and contact information in the Complaint. On October 13, 2023, the First 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 (Anonymous Registrant) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 13, 2023, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 17, 2023. 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"). page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 23, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 13, 2023. The Center appointed Alfred Meijboom as the sole panelist in this matter on November 15, 2023. 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 leading global payment solutions company that provides a variety of products and services in support of the credit, debit, and related payment programs of over 25,000 financial institutions and other entities that are its customers. The Complainant's purpose is to facilitate various financial services transactions, including the interchange of funds through payment cards and through digital payment solutions such as digital wallets, as well as to provide related banking, credit and payment card services, electronic funds and currency transfer services, electronic payment services, and network services to facilitate financial payments. Since 1966, the Complainant has managed a family of well-known, widely accepted payment card brands, including MASTERCARD, to identify its various services and products. The Complainant owns and administers the MASTERCARD payment card program. Today, there are over three billion MASTERCARD branded payment cards in circulation worldwide, which are accepted at tens of millions of locations worldwide, including retail merchants, automated teller machines, and cash advance locations. The Complainant owns MASTERCARD trademarks in nearly all jurisdictions worldwide, including: - European Union trademark MASTERCARD with registration number 185819 of August 9, 2001, for goods and services in classes 9, 16, 35 and 36; and - Finnish trademark MASTERCARD with registration number 222427 of December 14, 2001, for goods and services in classes 9, 16, 35, 36, 38, 39 and 42. Hereinafter jointly referred to as the "MASTERCARD trademark". In addition, the Complainant has registered and/or advertises and conducts business on the Internet through many domain names containing the MASTERCARD trademark or variants thereof, including, inter alia, and . On April 3, 2023, the Respondent reached out to the Complainant via Facebook Messenger, and proposed building a "mastercard cryptocurrency exchange" and "Mastercard blockchain network", and on April 23, 2023, the Respondent claimed to own the disputed domain names and to start building a cryptocurrency market place. When the Complainant informed the Respondent that it could not authorize the use of the Complainant's name and trademarks for such project, the Respondent wrote on May 16, 2023, that it could sell the disputed domain names and that the asking price is EUR 20,000. The Respondent also falsely posted on his LinkedIn profile that he works at Mastercard Foundation in Cryptocurrency. The disputed domain name was registered on April 6, 2023, and the disputed domain name was registered om May 3, 2023. The disputed domain name does not resolve to an active website, while the disputed domain name redirects to the Complainant's official website at "www.mastercard.com". page 3 5. Parties' Contentions A. Complainant The Complainant alleges that the disputed domain names are confusingly similar to the MASTERCARD trademark as they incorporate the MASTERCARD trademark in their entirety, and the additional terms "crypto", "exchange", and "store" do not change the overall impression but rather perceive an affiliation with the Complainant's business. According to the Complainant the Respondent has no rights or legitimate interests in the disputed domain names as the Complainant never authorized the Respondent to make use of the MASTERCARD trademark, the Respondent does not own any registered rights to the term "mastercard" or variants, and the Respondent's use of the disputed domain names has no connection with a bona fide offering of goods and services, and nor does the Respondent intend to make bona fide use of the disputed domain names which it registered for the sole purpose of manipulating the Complainant, and convincing the Complainant to pay EUR 20,000 in exchange for transfer of the disputed domain names, and/or to partner with the Respondent. Further, the Complainant alleges that the use of the disputed domain names does not constitute legitimate noncommercial or fair use because webpages that do not resolve or that resolve back to the trademark holder's own website lack any legitimate noncommercial or fair use, and the registration and use of the disputed domain names is entirely for the Respondent's commercial gain as it intended to use the disputed domain names to convincing the Complainant to partner with the Respondent to create a MASTERCARDbranded cryptocurrency project, and if the Complainant would not agree to such collaboration, the Respondent could sell the disputed domain names to another entity who might use them for a nefarious purpose if the Complainant did not purchase them for an exorbitant price. The Complaint alleges that the Respondent has registered the disputed domain names in bad faith as it had actual or constructive knowledge of the famous MASTERCARD trademark at the time of registration, and the Respondent has made clear that its intention behind registering the disputed domain names was to entice the Complainant to partner with it or potentially suffer the consequences of the disputed domain names being sold to a bad actor, unless the Complainant was willing to purchase the disputed domain names for EUR 20,000. Further, the Complainant alleges that the circumstances that the Respondent registered the disputed domain names for the initial purpose of trying to entice the Complainant to enter into a business relationship, and when the Complainant rejected that offer, the Respondent attempted to extort and threaten the Complainant to sell the disputed domain names to another entity, constitute use of the disputed domain names in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings The Respondent did not file a Response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), the consensus view of UDRP panels is that a respondent's default does not automatically result in a decision in favor of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent's default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances. page 4 Under the Policy, the Complainant must prove that: (i) the disputed domain names are 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 disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar It is well established that the generic Top-Level Domain ".com" should typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy. See section 1.11.1 of the WIPO Overview 3.0. The Panel finds that the disputed domain names are confusingly similar to the MASTERCARD trademark. The disputed domain names incorporate the MASTERCARD trademark in their entirety, and merely add the terms "cryptostore" and "cryptoexchange", respectively, which do not prevent a finding of confusing similarity between the disputed domain names and the MASTERCARD trademark (see section 1.8 of the WIPO Overview 3.0). Consequently, the first element of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The Panel takes note of the Complainant's various allegations with supporting evidence, and more specifically that the Respondent was not authorized to use the MASTERCARD trademark, including for registration of the disputed domain names, the Respondent has not been commonly known by the disputed domain names, and was not using, or preparing to use the disputed domain names or names corresponding to the disputed domain named in connection with a bona fide offering of goods or services, but rather registered the disputed domain names to persuade the Complainant to partner with the Respondent in a MASTERCARD branded cryptocurrency project, or, alternatively, pay a significant amount for the transfer of the disputed domain names. Consequently, there is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy C. Registered and Used in Bad Faith The Panel is satisfied that the Respondent must have had the MASTERCARD trademark in mind when it registered the disputed domain names as the MASTERCARD trademark was already well-known, and the Complainant amply demonstrated that the Respondent registered the disputed domain names with the intent to entice the Complainant to work on a MASTERCARD branded project with the Respondent. Therefore, the Panel finds that the disputed domain names were registered in bad faith. The Panel is also satisfied that the Respondent used the disputed domain names in bad faith, as the communication between the Respondent and the Complainant shows that the Respondent registered the disputed domain names so as to suggest an association with the Complainant, and to convince the Complainant into partnering with the Respondent to create a cryptocurrency project or, when the Complainant refused, to force the Complainant into paying EUR 20,000 in exchange for the transfer of the disputed domain names in absence whereof the Respondent threatened to sell the disputed domain names page 5 to a third party who could possibly use them for illegal purposes. The fact that the disputed domain name does not resolve to an active website does not prevent this finding of bad faith (see section 3.3 of the WIPO Overview 3.0), and neither does the fact that the disputed domain name redirects to the Complainant's official website (e.g., Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533). Consequently, the third and last element of paragraph 4(a) of the Policy is also met. 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 the Complainant. /Alfred Meijboom/ Alfred Meijboom Sole Panelist Date: November 24, 2023
Full & Egal Universal Law Academy