WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International Incorporated v. John Henry Enterprises
Case No. D2001-0632
1. The Parties
Complainant is MasterCard International Incorporated, 2000 Purchase Street, Purchase, New York 10577-2509 ("MasterCard" or "Complainant").
Respondent is John Henry Enterprises, 2424 Vista Way, Suite 202, Oceanside, California 92054 ("John Henry" or "Respondent").
2. Domain Name and Registrar
The domain name in issue is: <mastercardinternational.com> (the "Domain Name").
The registrar is Internet Names World Wide, Level 2, 120 King Street, Melbourne, 3000, VIC, Australia ("INWW").
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received MasterCardís complaint via email on May 4, 2001, and in hard copy on May 7, 2001. The Center forwarded a copy of the complaint to Respondent, notifying it that there was a complaint filed against it but that it had no duty to act at that time. The transmittal further stated that after the Center verified that the complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), and the Uniform Domain Name Dispute Resolution Policy (the Policy), it would send Respondent an official copy of the complaint after which Respondent would have 20 days to respond. The letter further directed Respondent to the websites where the Rules, Supplemental Rules, and Policy could be found.
The Center emailed INWW on May 8, 2001, requesting verification of the Domain Name registration. On May 9, 2001, the Center received confirmation from INWW via email that:
1) Complainant had sent it a copy of the complaint, 2) the Domain Name was registered with INWW, 3) Respondent was the current registrant, 4) the Policy applies to the Domain Name, and 5) the current status of the Domain Name was active. INWW additionally confirmed the contact names, addresses, email addresses, and phone and facsimile numbers for the organization, administrative, and technical contacts for the Domain Name.
After verifying that the complaint complied with the formal requirements of the Rules, Supplemental Rules, and Policy, the Center notified the registrant and technical contact by mail, facsimile, and e-mail on May 11, 2001, of the commencement of the administrative proceeding. It notified Respondent that Complainant had submitted a complaint as described above. The notification also stated that the complaint satisfied the formal requirements of the Policy, Rules, and Supplemental Rules and the appropriate payment had been made. Accordingly, the administrative proceeding commenced on May 11, 2001. The notification invited Respondent to reply by May 30, 2001, in accordance with Paragraph 5 of the Rules and the Supplemental Rules. Furthermore, the notification identified the consequences of default, namely that a Panel would still decide the case and that, in accordance with Rules, Paragraph 14, the Panel could draw any appropriate inferences from the default. The notification additionally notified Respondent that Complainant elected a single panelist who would be appointed within five days after the Response was due. In the event that Respondent preferred a three member panel, Respondent could so designate, with the required Payment, and would have the option to nominate three panelists for possible inclusion on the panel. Finally, Respondent was notified of the identity and contact information of the Case Manager. A copy of the notification was e-mailed to Complainant.
Having received no response to the notification by the May 30, 2001, deadline, the Center notified Complainant on June 6, 2001, of Respondentís default. The notice stated that the Center would appoint a single panelist to comprise the Panel, the Panel would be informed of Respondentís default and it would be up to the Panelís discretion whether to consider any late-filed Response. Finally, the notice stated that the Center would continue to send case-related materials to Respondent as it deemed appropriate.
On June 19, 2001, Complainant was advised by e-mail of the identity of the undersigned sole panelist. Additionally, the Center notified Complainant that the panelist had complied with Paragraph 7 of the Rules by submitting a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Arbitration and Mediation Center.
4. Factual Background; Partiesí Contentions
a. The Trademark
MasterCardís complaint alleges that its MASTERCARD mark is a distinctive, federally-registered, and world-famous trademark. Its predecessor Interbank Card Association (ICA) formally changed its name to MasterCard International Incorporated in 1979. Since then, MasterCard has continued to use the trademark MASTERCARD and variants thereof to identify itself, its products, and its services.
MasterCard has furthermore invested substantial resources in promoting its mark worldwide. MasterCard has registered more than 37 marks involving MASTERCARD in the United States alone, as evidenced by copies of the U.S. trademark and service mark registrations contained in Annex B of the complaint. Furthermore, Annex B of the complaint contains copies of Columbian and Spanish certificates of registration for the mark MASTERCARD INTERNATIONAL.
Additionally, MasterCard conducts business on the Internet at various domains which contain MASTERCARD as part of the domain name (e.g., <mastercard.com>, <mastercard.org>, <mastercard.net>, <mastercardonline.org>). MasterCard registered the first of these, <mastercard.com>, on July 27, 1994, and has maintained the site since 1995.
b. Jurisdictional Basis
As stated above, INWW verified that the Policy applies to the Domain Name. Therefore, as this proceeding is likewise governed by the Policy and in accordance with it, the Rules, and the Supplemental Rules, the Panel has jurisdiction to decide this dispute.
c. The Complaint
MasterCard asserts as follows:
▪ The registered MASTERCARD mark has worldwide recognition.
▪ The disputed domain name <mastercardinternational.com> is confusingly similar to the corporate name MasterCard International Incorporated.
▪ The domain name <mastercardinternational.com> is identical to certain foreign registrations for MASTERCARD INTERNATIONAL owned by Complainant.
▪ Addition of the word "INTERNATIONAL" to a domain name does not alter the MASTERCARD mark in a way that would reduce the likelihood of confusion.
▪ Complainant has made substantial commercial use of the MASTERCARD mark prior to Respondentís registration of the Domain Name.
▪ Respondent is not a licensee and therefore has no legitimate interest in the domain name <mastercardinternational.com> or in the MASTERCARD mark.
▪ Respondent has not engaged in activity using the MASTERCARD mark, nor has it offered any legitimate reason to use the Domain Name.
▪ Respondent has failed to use the <mastercardinternational.com> site to engage in any legitimate non-commercial or fair use.
▪ Respondent has registered and used the <mastercardinternational.com> domain name in bad faith. In particular, in response to a request from Complainant to transfer the Domain Name, Respondent offered to sell the Domain Name for "fair compensation" and threatened to tie up the Domain Name for "two to three years in costly litigation and appeals." MasterCard subsequently offered to purchase the Domain Name for the costs incurred by Respondent in registering it, but the letter was never answered. Complainant additionally alleges that only a direct threat of civil litigation against Respondent encouraged Respondent to indicate a willingness to cooperate with Complainant. Despite this reluctant concession, Respondent has failed to transfer the Domain Name.
As noted above, Respondent has provided no Response, although the deadline for so doing expired on May 30, 2001. Accordingly, Respondent is in default. Given Respondentís default, the Panel can infer that Complainantís allegations are true where appropriate to do so. Talk City, Inc. v. Robertson, D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of Paragraph 4(a).
5. Discussion and Findings
Accordingly, the Panel now proceeds to consider this matter on the merits in light of the complaint, uncontested as no response was filed, the Policy, the Rules, and other applicable authority.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the Domain Name, each of the following:
(i) The domain name in issue is identical or confusingly similar to MasterCardís trademark in issue here; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances of acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, would demonstrate Respondentís rights or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii) above.
a. Effect of the Default
In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented to the Panel by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.
In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interest in the Domain Name, such as use or preparation to use the Domain Name prior to notice of the dispute, being commonly known by the Domain Name, or making legitimate noncommercial or fair use of the Domain Name.
b. Complainantís Proof
(i) Domain Name Identical or Confusingly Similar to Trademark
The domain name <mastercardinternational.com> is alleged to be identical to certain registered trademarks of Complainant MasterCard, and confusingly similar to others as well as to Complainantís well-known corporate name "MasterCard International Incorporated." Specifically, the Domain Name is identical to foreign registered trademarks in Columbia and Spain for MASTERCARD INTERNATIONAL. Because web users typically add a generic top-level domain name (gTLD) such as ".com" or ".net" to a mark when attempting to locate the markís owner on the Internet, and because the gTLD is a functional necessity rather than an arbitrary trademark choice, the gTLD is properly ignored when considering similarity. See College Summit, Inc. v. Yarmouth Educational Consultants, Inc., D2000-1575 (WIPO, January 17, 2001). Similarly, it is well established in U.S. trademark law that the addition or deletion of the corporate designation "incorporated" does not alter or eliminate the likelihood of confusion between two confusingly similar trade names or marks. Accordingly, Respondentís deletion of the word "Incorporated" from the Domain Name does not distinguish the Domain Name from Complainantís corporate name. Cf. General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (addition of generic term "direct" does not alter the confusing similarity of domain name to mark). Because the Domain Name is identical or virtually identical to the foreign marks and corporate name, the Panel concludes that the requirement of paragraph 4(a)(i) of the Policy has been met.
Moreover, even considering only Complainantís United States trademark or service mark registrations (which do not include MASTERCARD INTERNATIONAL), the Domain Name is confusingly similar to each of numerous marks that MasterCard has registered in the U.S. the dominant portion of each of which is MASTERCARD. The addition of a generic term does not ordinarily serve to distinguish a domain name over registered marks. For example, in AT&T Corp. v. Fred Rice, D2000-1276 (WIPO, November 25, 2000), the panel determined that including the word "global" in a domain name was insufficient to distinguish it from the trademark AT&T, especially considering the global nature of AT&Tís business. Here, likewise, MasterCard has provided evidence and statements establishing that its business is international. For example, Annex B of the Complaint contains copies of foreign registrations for MASTERCARD INTERNATIONAL. Additionally, MasterCard states that its products and services are used extensively outside the United States (about 50% of MasterCard cards are allegedly in circulation outside the U.S.). These representations are credible and stand unrebutted by any contrary assertions of Respondent. Accordingly, the word "international" does not serve to distinguish the domain name <mastercardinternational.com> from the registered U.S. trademark MASTERCARD.
Furthermore, marks that have a "high degree of inherent or acquired distinctiveness" are entitled to a greater scope of protection. Digital City, Inc. v. Smalldomain, D2000-1283 (WIPO, November 6, 2000). MasterCard has demonstrated that its longstanding use of the MASTERCARD mark and variants thereof, its very high volume of business transacted under or in connection with the mark, as well as the worldwide use and recognition of the mark, places its mark in the category of trademarks with a "high degree of Ö acquired distinctiveness" and that accordingly enjoy a wide scope of protection. For all the above reasons, the Panel concludes that the Domain Name is confusingly similar to MasterCardís U.S. marks.
(ii) Whether Respondent Has Rights Or Legitimate Interest In the Domain Name.
There is no evidence in the record that Respondent has any legitimate interest in the Domain Name. Complainant stated in the complaint that Respondent failed to provide reasons for registering the Domain Name despite several contacts with Complainantís attorney. The contention is credible, and is unrebutted. The fame, distinctiveness, strength, and priority of use of Complainantís marks, coupled with the Domain Nameís overwhelming similarity to Complainantís marks and corporate name, and Respondentís failure to advance any of the defenses provided in paragraph 4(c) of the Policy lead this Panel to conclude that Respondent had no rights or legitimate interest in the Domain Name.
(iii) Registration and Use in Bad Faith
As guidance in determining whether the bad faith requirement is met, paragraph 4(b) of the Policy sets forth four non-exclusive illustrations of fact patterns that can evidence registration and use of a domain name in bad faith.
The first illustrative scenario is if Respondent has "registered or Ö acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name." In Annex E of the complaint, MasterCard has submitted a letter of October 25, 2000, from Respondent indicating that any sale of the Domain Name would require "fair compensation" (of unstated amount), and making a veiled threat to tie up the Domain Name "in costly litigation and appeals" for several years. The Complainantís response letter of November 3, 2000, also contained in Annex E of the Complaint, offers to purchase the Domain Name for the registration costs. Respondent apparently did not answer that letter. The record, however, discloses no proof that Respondent actually received the November 3 letter.
Additionally, Complainant alleges, and Respondent has not denied, that Respondent ultimately agreed to "cooperate" with a domain name transfer (after being threatened with civil litigation). Despite this alleged agreement, Respondent failed to transfer the Domain Name for more than three months.
On the above facts, the Panel concludes that Respondentís threat to tie up the Domain Name in litigation, made simultaneously with its suggestion that it might sell the Domain Name for an unstated amount, is indicative of a bad-faith intent to leverage the Domain Name in order to extract value in excess of registration costs. Its failure to take up Complainant on its proposal to compensate Respondent in the amount of the registration costs in exchange for a domain name transfer helps confirm this conclusion.
Notably, the Policy requires that intent to sell a domain name for profit be the primary purpose for obtaining the domain name, if it is to meet this first illustrative example of bad faith. Here, Respondent does not appear to have used the Domain Name for any other purpose. It has no website accessible at the Domain Name, and no evidence of record suggests that it is making any other use of the Domain Name. Accordingly, leveraging its value to MasterCard appears to have been Respondentís sole, and accordingly primary, purpose. Its failure to respond to the Complaint and provide any contrary contentions further supports this conclusion. The Panel therefore finds that Respondent engaged in bad-faith registration and use of the Domain Name as illustrated by Paragraph 4(b)(i) of the Policy.
The second illustrative scenario of bad faith involves registering a domain name in order to prevent the trademark owner from registering the domain name, provided that a pattern of such conduct is shown. In this case, the threat to tie up the Domain Name in lengthy litigation suggests the sort of bad-faith intent to deprive a trademark owner of goodwill from its mark that the second illustration contemplates. Nonetheless, Complainant has not shown that John Henry has registered other domain names in order to prevent the rightful trademark owners from registering the names. Accordingly, there is no "pattern," and the second illustration has not been shown to apply.
The third illustration requires that the registrant have registered a domain name primarily to disrupt the business of a competitor. Nothing in the record suggests that John Henry competes with MasterCard, so this illustration is inapplicable.
Finally, the fourth illustration applies when a domain name is obtained in order to attract Internet users to a website for commercial gain by "creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement" of the website. Because the <mastercardinternational.com> domain name does not resolve to any website, such a purpose does not appear in this record.
In light of illustration 1 discussed above, which alone suffices under the Policy to demonstrate registration and use in bad faith, the Panel finds that there is sufficient evidence to support Complainantís allegation that Respondent has registered and used the Domain Name in bad faith.
In light of the above findings and analysis, the Panel decides that MasterCard has met its burden of proving: (1) the Domain Name is identical or substantially similar to marks belonging to Complainant; (2) Respondent has no rights or legitimate interest in the Domain Name; and (3) the Domain Name has been registered and is being used by Respondent in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that registration of the <mastercardinternational.com> domain name be transferred to MasterCard.
Michael A. Albert
Dated: June 28, 2001