Complainant is Mastercard International Incorporated of Purchase, New York, United States of America ("U.S."), represented by Partridge Partners PC, U.S.
Respondent is Mastercard International of Boston, Florida, U.S. 2. The Domain Name and Registrar
The disputed domain name (the "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 March 8, 2017. On March 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 9 and 10, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 13, 2017.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on April 24, 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. 4. Factual Background
Complainant is a global payments solutions company providing a broad variety of services to support its global members' credit, deposit access, electronic cash, business-to-business and related payment programs. Complainant, through its predecessors in interest, has been in the payment card business since 1966 and has operated under the MASTERCARD name and mark since at least as early as 1980.
Complainant manages a family of payment card brands including MASTERCARD, MAESTRO and CIRRUS and serves financial institutions, consumers and businesses in over 210 countries and territories. In addition, Complainant's Priceless advertising campaign has run in 105 countries and 48 languages.
In April of 1980, Complainant filed an application with the U.S. Trademark Office to register the trademark MASTERCARD. Since that date, Complainant has gone to great lengths to protect the valuable goodwill in its MASTERCARD name and mark and has registered its mark in practically every nation around the world (see, e.g., U.S. Registrations Nos. 1,186,117 (registered on January 12, 1982); 1,292,519 (registered on August 28, 1984); 1,398,272 (registered on June 24, 1986); 1,604,606 (registered on July 3, 1990); and 2,212,783 (registered on December 22, 1998) (collectively, the "MASTERCARD Mark" or the "Mark"). In addition to its international trademark registrations, Complainant has registered numerous domain names containing the MASTERCARD Mark or variants thereof, including, inter alia, , , , , , , and . The earliest of these registered domain names, , was registered on July 27, 1994, long before Respondent registered the Domain Name.
According to the WhoIs records, the Domain Name was registered on May 12, 2016, after Complainant's adoption and registration of the MASTERCARD Mark. Currently, the Domain Name does not resolve to any website. However, as recently as December 2016, the Domain Name resolved to a website offering credit card services (as shown in Exhibit H attached to the Complaint.). 5. Parties' Contentions A. Complainant
Complainant owns the MASTERCARD Mark by virtue of long and extensive worldwide use of the Mark, and ownership of numerous trademark registrations for the Mark. From Complainant's care and skill selling and promoting its many services and products under the MASTERCARD Mark and its supervision and control over the nature and quality of these services and products, the MASTERCARD Mark has become famous, symbolizing an enormous amount of goodwill.
The Domain Name is confusingly similar to the MASTERCARD Mark because it incorporates the entirety of Complainant's Mark. The Domain Name adds only the letter "s" to the MASTERCARD Mark. The most dominant feature of the Domain Name is Complainant's MASTERCARD Mark. Adding the letter "s" does not change the overall impression or avoid confusion.
Respondent is not affiliated or related to Complainant in any way, or licensed by Complainant or otherwise authorized to use the MASTERCARD Mark. Respondent is not generally known by the Domain Name, and has not acquired any trademark or service mark rights in the Mark.
Respondent acquired and is now passively holding the Domain Name long after Complainant's adoption, use and registration of its MASTERCARD Marks. When the Domain Name was registered, Complainant had substantial registration and use of its MASTERCARD Marks in the U.S. Therefore, Respondent had constructive and actual notice of Complainant's rights in its MASTERCARD Marks. There is no plausible reason for Respondent's selection of the Domain Name other than as a deliberate attempt to profit unfairly from confusion with the Mark.
Under the circumstances here, Respondent's registration and passive holding of the Domain Name constitutes bad faith use of the Domain Name in violation of the Policy, since there is no plausible legitimate reason for Respondent's action. Further Respondent's prior use of the Domain Name to unlawfully divert and siphon off visitors seeking Complainant's website is evidence of bad faith. Respondent's use of the Domain Name for such a purpose was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name.
Complainant requests transfer of the Domain Name to it. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw such inferences as it considers appropriate. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques,WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the reasonable facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant holds rights in the MASTERCARD Mark by virtue of its long-standing use of the Mark in the U.S. and around the world as well as its many trademark registrations including U.S. Registration No. 2,212,783, registered on December 22, 1998.
UDRP panels have consistently held that if a domain name "wholly incorporates a complainant's trademark", it is sufficient evidence that the domain name is identical or confusingly similar. See, e.g., Intesa Sanpaolo S.p.A. v. Tommy, Bartles associates,WIPO Case No. DCO2015-0001. The Domain Name wholly incorporates the Mark, thus it is confusingly similar to Complainant's registered Mark.
The Domain Name adds only the letter "s" to the MASTERCARD Mark. Adding the letter "s" neither changes the overall impression of the Mark nor avoids confusion. See, MasterCard International Incorporated v. Global Access, Case No. D2008-1940 (finding confusingly similar to the MASTERCARD mark). Further, the top-level portion of a domain name is generally disregarded when determining whether a domain name is identical or confusingly similar for purposes of the Policy. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name because Respondent: (1) is not affiliated or related to Complainant in any way; (2) is not licensed or otherwise authorized to use the Mark by Complainant (see Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003); (3) is not generally known by the Domain Name; and (4) has not acquired any trademark or service mark rights in the Mark.
Complainant has raised a prima facie presumption of Respondent's lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. Thus, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and is using the Domain Name in bad faith. It is uncontroverted that Complainant's use of the Mark in commerce and its trademark registrations date back to the early 1980's (see, e.g., Factual Background section above), long before Respondent registered the Domain Name on May 12, 2016. This coupled with the further facts that Respondent has no rights or legitimate interests in the MASTERCARD Mark, yet it incorporated the entirety of the Mark in the Domain Name and used it for at least some period of time in conjunction with a website offering credit card services. Based on these facts the Panel is lead to conclude that Respondent knew of Complainant and Complainant's rights in the Mark when it registered the Domain Name.
Furthermore, Respondent has been using the Domain Name in bad faith. To begin with, Respondent first used the website associated with the Domain Name to offer credit card services. Such use leads to the conclusion that Respondent was intending to benefit, or was benefitting, commercially from the site and likely causing harm to Complainant. That is, a visitor looking for Complainant's site could have gotten side-tracked by Respondent's site either thinking it was Complainant's actual site or, if it learned it was not Complainant's site the visitor may have nonetheless purchased services from Respondent as opposed to Complainant. In either circumstance, Respondent would have derived commercial benefit on the basis of confusion with Complainant's Mark. See MasterCard International Incorporated v. Unicorn Multi-Media, Inc.,WIPO Case No. D2007-0688 (respondent's use of the "domain name to divert visitors seeking Complainant's websites … is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name").
Respondent is now passively holding the Domain Name that incorporates Complainant's well-known MASTERCARD Mark. There is no plausible reason for Respondent's selection of the Domain Name other than as a deliberate attempt to profit unfairly from confusion with the Mark. See, Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 ("the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith"); Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (finding bad faith when the registration of domain name "is 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 Panel therefore holds that 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 Domain Name be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: May 4, 2017
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