The Complainant is Mastercard International Incorporated of New York, United States of America (“US”), represented by Jose Lloreda Camacho & Co., Colombia.
The Respondent is Mario Antunes of Ergersheim, France. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 4, 2013.
The Center verified that the Complaint together with the amendment to 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 November 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2013.
The Center appointed Gunnar Karnell as the sole panelist in this matter on December 13, 2013. 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 disputed domain name was created on December 19, 2012.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Complainant is the owner of numerous MASTERPASS trademark registrations since 1995 (e.g. Panama registration no. 78606 of January 12, 1995; Annex 3 to the Complaint). Also, since prior to the creation of the disputed domain name, the Complainant owns the widely registered trademark MASTERCARD and the domain name . Regarding the trademark MASTERPASS, the Complainant has directed the Panel’s attention, among a multiplicity of other registrations, to the Community trademark registration no. 010144277 of January 27, 2012 with a filing date of July 22, 2011 (word mark).
The Complainant has based its request for transfer of the disputed domain name on arguments relating to its rights both to its trademark MASTERPASS and to its trademark MASTERCARD. The Policy, paragraph 4(a)(i), requires that the Complainant proves that the disputed domain name is identical or confusingly similar to “a trademark or service mark” in which the Complainant has rights, together with proof of other two elements, mentioned in paragraph 4(a)(ii) and (iii) of the Policy, to be asserted as present by a complainant in support of a request for transfer of a domain name.
Because the Panel, after due consideration of all the Complainant’s arguments related to the conditions for transfer just mentioned, finds identity, as stated here below under Section 6.A, between the Complainant’s trademark MASTERPASS and the disputed domain name and that, on the basis also of the Panel’s findings below under Sections 6.B and C, a transfer of the disputed domain name to the Complainant is justified already by taking into account the Complainant’s trademark MASTERPASS, the Panel will not decide upon, but leave out as irrelevant for its conclusion, most of what has been adduced by the Complainant about its trademark MASTERCARD in support of its claim for transfer of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant is a technology company and payments industry leader. The Complainant has identified one of its product lines with the trademark MASTERPASS. Used along with its trademark MASTERCARD, it has become well-known among consumers on a worldwide basis. The Complainant’s products and services, including MASTERPASS, are commercialized in more than 210 countries and territories of the world in 150 currencies. Its exclusive rights to MASTERPASS are based on registrations since 1995, prior to the registration of the disputed domain name by the Respondent. The Complainant is also the owner of the domain name , registered on April 30, 2011, and a number of other MASTERPASS related domain names.
The disputed domain name gives the consumer the wrong idea that it promotes and commercializes MASTERPASS products and that it is related to the Complainant.
With reference to its rights to the trademark MASTERPASS, the Complainant claims that the disputed domain name is identical to this trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name, not having been authorized or licensed by the Complainant to include its trademark MASTERPASS, that clearly refers to the Complainant’s products, services and rights, which the Respondent should be understood to have learnt about at the time of its registration of the disputed domain name. The Respondent has not used the disputed domain name or the word MASTERPASS to offer specific goods or services under said denomination and it is not, and has never been, known by the disputed domain name. The Respondent’s sole purpose behind its use of the Complainant’s trademark is and has been to obtain financial gain by selling the disputed domain name. It is presently used for a website which simply has a sign stating in French language that the disputed domain name has been registered “for one of our clients” and it contains several links, all redirecting the user to the Registrar’s website.
The disputed domain name was registered and it is being used in bad faith. Due to the notoriety of the Complainant’s trademarks it is not to be believed that the Respondent was unaware of the Complainant’s trademark rights at the registration and ensuing use of the trademark MASTERPASS. A user accessing the disputed domain name will see a sign stating “This domain name has just been registered for one of our clients”, followed by a series of explanations and offers about hosting services provided by the French company 1&1Internet AG (the Registrar of the disputed domain name) along with multiple hyperlinks, all of which redirect the user to the Registrar’s website. From that it can be inferred that the Respondent remains responsible for use of the Complainant’s trademark MASTERPASS with no other intention than to sell or otherwise transfer the registration of the disputed domain name to the Complainant or one of its competitors for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The factual foundation of the Complainant’s contentions, as presented by the Complainant, while supporting its non-contradicted request for transfer of the disputed domain name by written evidence and reference to earlier UDRP case decisions, leads the Panel to the following conclusions: A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s multi-registered and well-known trademark MASTERPASS. The Panel finds that the disputed domain name is identical to the Complainant’s trademark MASTERPASS. B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing on the record gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
In this Panel’s view, there is no indication on the record that might impair the Complainant’s assertions regarding the facts leading up to its conclusion that the disputed domain name has been registered and used in bad faith.
The Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.
In light of the above, the Panel confirms that the conditions for transfer of the disputed domain name to the Complainant are 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.
Gunnar Karnell
Sole Panelist
Date: December 22, 2013
Full & Egal Universal Law Academy