WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mastercard International Incorporated v. Mr. Greg Tieu

Case No. DBIZ2002-00124

 

1. The Parties

The Complainant is Mastercard International Incorporated, of 2000 Purchase Street, Purchase, N.Y. 10577-2509, United States of America, represented by Abigail Rubinstein Esq., of Baker Potts L.L.P. of New York City, United States of America.

The Respondent is Mr. Greg Tieu of 550 Royale Avenue East, Suite 219, New Westminster, British Columbia, Canada.

 

2. The Domain Name and Registrar

The disputed domain name is <mastercard.biz> and the Registrar is Namescout.com of Bridgetown, Barbados.

 

3. Procedural History

This is an administrative proceeding under the Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("the STOP Policy"), the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("the STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules"), in effect as of October 23, 2001.

The Complaint was received by the WIPO Arbitration and Mediation Center ( "the Center") by email on April 26, 2002, and in hard copy on April 29, 2002. The Center acknowledged receipt on May 3, 2002, and on May 7, 2002, sought from the Registrar an indication of the language of the Registration Agreement. That day the Registrar confirmed that this was English

On May 24, 2002, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. That day the Center formally notified the Respondent by post/courier (with enclosures) and email (without attachments) of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.

The formal date of the commencement of the proceeding was accordingly May 24, 2002. The last day specified in the notice for a response was June 13, 2002. On June 10, 2002, by email and on June 14, 2002, in hard copy, the Respondent filed an unsigned Response and by email on June 10, 2002, made corrections to the footnotes. On June 11 and 13, 2002, the Center notified the Respondent of certain deficiencies in the Response which were not corrected.

On June 19, 2002, the Center notified the parties of the appointment of Alan L. Limbury as a Single-Member Panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality. The Center nominated July 3, 2002, as the date by which, absent exceptional circumstances, the Panel is required to forward its decision to the Center.

The language of the proceeding was English.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the STOP Rules and WIPO Supplemental STOP Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified in accordance with paragraph 2(a) of the STOP Rules; the Response was filed within the time specified in with the STOP Rules and the Administrative Panel was properly constituted.

 

4. Factual Background (Uncontested Facts)

The Complainant has been in the payment card business since 1966 and has used the trademark MASTERCARD since at least 1980 in relation to financial services and products. It has registered that mark in almost every country of the world, including Canada, where Respondent has an address. In the last 3 years, the Complainant has spent over US$510 million on marketing and advertising its services under the mark. Globally, there are over half a billion MASTERCARD payment card users, over 23 million merchants who accept MASTERCARD payment cards and over 23,000 licensed member banks and other financial institutions having over 200,000 branches. In 2001, over US$986 billion of transactions were made under MASTERCARD marks.

The Complainant filed an IP Claim under the IP Claim Service for the mark MASTERCARD based on four of its U.S. registrations.

On March 27, 2002, the disputed domain name was registered in the name of the Respondent. The domain name does not resolve to an active website.

 

5. Partiesí Contentions

A. Complainant

Identity

The Complainantís trademark MASTERCARD is one of the most famous and widely recognized trademarks in the world. The disputed domain name is identical to the mark.

Illegitimacy

Because the mark is so famous, it is extraordinarily unlikely that anyone, such as the Respondent, would not have encountered the mark or would have the right to use or a legitimate interest in using it in any domain name. The Respondent cannot set forth any of the circumstances listed in STOP Policy para. 4(c). The Respondent is not a licensee of the Complainant. In view of the fame of the Complainantís mark, there is no legitimate, lawful justification for the Respondentís registration. The conclusion is inescapable that he has no right or legitimate interest in the disputed domain name.

Bad Faith

In view of the worldwide fame of the mark, it is impossible to conceive of a legitimate actual or intended use of the disputed domain name by a party other than the Complainant that would not infringe the Complainantís intellectual property rights and not be in bad faith. Thus it is fair to infer that the Respondentís intent is to utilize the disputed domain name in bad faith.

An applicant for registration of a .biz domain name through Namescout.com must select a payment card to be charged. The only choices presented by Namescout.com are MASTERCARD or VISA. There is a 50% chance the Respondent used a MASTERCARD payment card to apply for the disputed domain name. In any event it is likely the Respondent was fully aware of the MASTERCARD mark and its fame and goodwill by virtue of the Complainantís extensive advertising. Accordingly, one can reasonably conclude the domain name was registered in bad faith.

In the circumstances of this case, there is a rebuttable presumption of registration in bad faith: see PRL USA Holdings, Inc. v. Search Hound, WIPO Case No. DBIZ2001-00010. Because the mark is exclusively associated with the Complainant around the world, it is reasonable to conclude that there is no actual or intended use of the disputed domain name by the Respondent.

B. Respondent

The Respondent makes the following submissions:

Identity

"[The Complainantís] entire case rests on the fact that the disputed domain name is identical or similar to its registered trademark."

Legitimacy

"I do have a legitimate interest in this disputed domain name." Ö "It is composed of two common English words. It is a generic domain name that is capable of a multitude of products or services. The words "MASTER" and "CARD" generally means [sic] a card of some kind that provides the user with instant conveniences or accessibilities."

[Ö]

"Numerous companies use the name, "MASTER CARDí in the world for a variety of products or services and most of them have used the mark, "MASTER CARD"."

[Ö]

I registered the disputed domain name because I knew that it was generic and was capable of so many commercial goods. I am a web developer by profession, I registered the domain name with the intent of either developing a web site and [sic] on-line sale of goods.

The disputed domain name was certainly not registered with the Complainant in mind, or any specific company in mind. I knew that there were hundreds of companies who might be interested in the domain name if I was unable to develop the goods myself."

[Ö]

"There is absolutely no evidence to demonstrate that [the Complainant] was in mind, or any specific company in mind at the time that I registered the subject generic domain name."

[Ö]

"To date, I have maintained the domain name and have not solicited its sale to any party, especially [the Complainant].

As [the Complainant] concedes, at least a few other online companies use the mark "MASTER CARD", pursuant to United States registered trademarks, for goods and services entirely unrelated to Complainant. This proves that the disputed domain name is appropriately used by persons other than [the Complainant], without any trademark infringement.

Other generic domain name extensions that use the exact generic domain name "MASTER CARD" for goods entirely unrelated to Complainant are: [Ö] <www.mastercard.cc> , <www.mastercard.tv>, and <www.mastercard.ws>.

Furthermore, numerous companies have used the mark "MASTER CARD" for a variety of goods or services pursuant to United States registered trademarks. This too demonstrates that the mark "MASTER CARD" is a common combination of two English words used by a variety of businesses."

[Ö]

"So many companies use the mark "MASTER CARD" all over the world that it must be considered a generic term, similar to "CONVENIENCE CARD", "CALLING CARD", "WEB CARD", "AIR CARD", "POST CARD", "DEBIT CARD", "PHONE CARD", AND "GAS CARD".

A search of Google.com search engine reveals 1,670,000 web sites that use the term, MASTER CARD. While most of these entries are in connection with [the Complainantís] services but some provide other goods and non-commercial uses that are totally unrelated to [the Complainant]. [Ö]

For example:

- Welcome to the Cardmaster

Send someone special a card, and save a tree! Free E-Card made available by 800-777-CLUB, Inc. ... Card for Today. ... www.cardmaster.com/.

- Master Card Trick List

Card Trick Central Index, Card Trick Central Bookstore, Exclusive

Offer. Impromptu Index, Mathematical Index, Trick Terminology. ...

ps.superb.net/cardtric/tricks/master.htm.

- Web Site Design-Hosting-Graphics-Craft Shopping Mall, We have it ...

Full Service Web Development Company with Web Design, Host Services, Country and Primitive Graphics, Site Promotion, Online Craft Mall with personal service. www.bcdservices.com/ .

- Get Your Word Master Card Game Here - New From Word Master!

Word Master Card Game can be shipped to anywhere in the world for US$12, postage included. So, order your deck today without further delay. .online-wealth.com/wordmaster/wmcardorder.htm.

- Teleporting Cards

Teleporting Cards. Trick Courtesy of: Bran G. wayoutwesthawaii@hotmail.com. Original Author: anonyomous ... ps.superb.net/cardtric/tricks/easy/teleport.htm.

- Rune Master: Card Game

... The card game, known as Rune War, is played with a deck resembling the tarot and the following assumes that a tarot deck is the one used. ... www.rollanet.org/~drakki/RuneMaster/cards.html ."

[Ö]

"Where a domain name is generic, the first person to register it in good faith is entitled to the domain name. This is considered a "legitimate interest". Pursuant to CRS Technology Corporation v. CondeNet (Concierge.com) (NAF Case No: FA0002000093547)."

[Ö]

"Generic and descriptive words and phrases will generally not be transferred to a Complainant just because a Complainant has a registered trademark. Pursuant to Coming Attractions v.ComingAttractions.com, (NAF Case No. FA0003000094341)."

[Ö]

"In Canned Foods, Inc. v Ult. Search Inc. (NAF Case No. FA0012000096320) the Panel explained:

"Where the domain name is a generic term, it is difficult to conclude that there is a deliberate attempt to confuse. It is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them. There are dozens of other enterprises that use the term "Grocery Outlet," therefore one cannot conclude that Complainant must necessarily be the special target."

[Ö]

"Pursuant to Nutrisystem.com, Inc. v. Easthaven, Ltd. (CPR Case No. 012):

" The scope of Complainantís trademark rights is insufficient to bar Respondent from acquiring legitimate rights in the same term when used for a different purpose, such as a URL. "

[Ö]

"I have a legitimate interest in keeping the subject domain name for future development."

No Bad Faith

"The fact is that no bad faith exists in this case."[Ö] "Without proving "bad faith registration", [the Complainant] cannot succeed. There is absolutely no evidence to show that I registered the domain name with [the Complainant] in mind. This is required to show that I registered the domain name in bad faith: Coming Attractions, supra."

[Ö]

"Because the Complainant has no evidence of Respondent registering the domain name with Complainant in mind, it attempts to infer bad faith."

[Ö]

"[N]umerous other companies use the mark MASTER CARD in the world."

"[See] [A]lso Lumena s-ka zo.o. v. Express Ventures LTD, (NAF Case No. FA0003000094375) (no bad faith where domain name incorporates generic term, absent direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainantís trademark interest)"

 

6. Discussion and Findings

Paragraph 15(a) of the STOP Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the STOP Policy, namely:

- the disputed domain name is identical to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the disputed domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy ("UDRP") and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may be filed only when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property claim form. Therefore, every STOP proceeding, properly brought, necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the ".biz" generic top-level domain (gTLD) in the disputed domain name is not a factor for the purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Rights

There is no dispute that the Complainant has rights in the trademark MASTERCARD and the Panel is satisfied on the evidence that this is so.

Fame of the Mark

In support of its contention that the mark is famous worldwide, the Complainant relies upon a declaration of Colm Dobbyn Esq., Senior Vice President and Assistant General Counsel of the Complainant attesting to the facts as to the mark and its use and promotion set out above (Complaint Ex. 4). The Respondentís defense is primarily that the mark is generic. The Respondent has not questioned the length or extent of the Complainantís use of the mark nor the level of its expenditure on advertising and promotion.

As to the Respondentís contention that the Complainant concedes that other online companies use the mark "MASTER CARD", pursuant to United States registered trademarks, for goods and services entirely unrelated to Complainant, the Complainant has made no such concession. Rather the Complainant has asserted that the only third parties using the mark throughout the world are the Complainantís authorized licensees.

The Respondent specifies various sites at which he claims there can be found use by third parties, unconnected to the Complainant, of the mark "MASTER CARD".

It is not the role of the Panel to conduct an independent investigation outside the materials submitted in the record or materials of which judicial notice may be taken: Benefitslink.com v. Mike Haynes (NAF Case No. FA0007000095164); Jazid, Inc. / Michelle McKinnon v. Rennemo Steinar (eResolution Case No, AF-0807). However, where a party to the proceedings makes reference in the materials it places before the Panel to third party websites, the Panel may visit them without violating this principle, always bearing in mind that caution is required because site content changes.

None of the sites on which the Respondent relies supports his contention. The site <www.cardmaster.com> offers greeting cards. Cardmaster is not the same as Mastercard. Other sites offer a "Master List of Card Tricks", a "Word Master Card Deck", "Teleporting Cards" and a "Rune Master Card Game". In only two of these cases does the word "master" immediately precede the word "card" and in those cases the word "master" is attached to the preceding word, as in "Word Master" and "Rune Master", not to the succeeding word "card" as in the trademark "MASTERCARD". In failing in its attempt to produce any example of third party use of the words "master card" as a trademark, the Respondent strengthens the Complainantís case that its mark is exclusively used by the Complainant and its licensees.

The Respondent contends there are other generic domain name extensions that use the exact generic domain name "MASTER CARD" for goods entirely unrelated to Complainant, namely <www.mastercard.cc>, <www.mastercard.tv>, and <www.mastercard.ws>. Attempts by the Panel to reach <www.mastercard.cc> produced no result. Attempts to reach <www.mastercard.tv> produced the information that the domain name was "not available". No website was found. Attempts to reach <www.mastercard.ws> produced a statement that it is "under construction". Google.com searches for all three websites found "no information available".

Accordingly, no support was found for the Respondentís contention that these domain name extensions are being used at all, let alone for goods unrelated to the Complainant.

On the evidence, there is nothing to contradict the Complainantís assertion that its MASTERCARD mark is distinctive of the Complainantís services and is famous worldwide. The evidence of Mr. Dobbyn clearly establishes that this is so. The Panel so finds. This finding is of critical importance to the outcome of this case and distinguishes this case from those on which the Respondent relies.

Identity

The Respondent accepts the fact that the disputed domain name is "identical or similar" to the Complainantís trademark MASTERCARD. Bearing in mind that the addition of the gTLD <.biz> is inconsequential when considering the issue of identity, the Panel finds the disputed domain name to be identical to the trademark. The Complainant has established this element.

Legitimacy

The Complainant has the onus of proving the absence of rights or legitimate interests on the part of the Respondent. The Complainant relies on the worldwide fame of its MASTERCARD mark and on its assertion (not contradicted by the Respondent) that the Complainant has not authorized the Respondent to use the mark nor to include that mark in any domain name.

These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited.

Paragraph 4(c) of the STOP Policy sets out, without limitation, circumstances which, if proved, establish a registrantís rights to or legitimate interests in a disputed domain name. The Respondent has not sought to establish any of these circumstances.

Instead, the Respondent claims a legitimate interest as the first to register what he claims is a generic domain name, relying on such cases as CRS Technology Corporation v. CondeNet (Concierge.com) (NAF Case No: FA0002000093547); Coming Attractions v.ComingAttractions.com, (NAF Case No. FA0003000094341); Canned Foods, Inc. v Ult. Search Inc. (NAF Case No. FA0012000096320) and Lumena s-ka zo.o. v. Express Ventures LTD, (NAF Case No. FA0003000094375).

None of these cases (nor even FreedomCard, Inc. v. Mr. Taeho Kim, WIPO Case No. D2001-1320 in which many of the above cases were discussed and in which the Response bore an uncanny similarity to the Response in this case) can assist the Respondent in the face of the Panelís finding that the MASTERCARD mark is distinctive of the Complainantís services and is famous worldwide.

This finding also distinguishes this case from Nutrisystem.com, Inc. v. Easthaven, Ltd. (CPR Case No. 012), which involved the domain name <sweetsuccess.com>. Because the mark MASTERCARD is famous worldwide, the scope of the Complainantís trademark rights extends beyond the classes of services with respect to which the mark is registered and is sufficient to bar the Respondent from acquiring legitimate rights in the same term when used for a different purpose, such as a URL.

In CRS Technology Corporation v. CondeNet, Panelists Bernstein and Ayers specifically stated: "This is not a case in which CondeNet selected a domain name incorporating a famous or distinctive mark that, it should have known, it was not entitled to use". The Panel finds that is exactly what the Respondent did in this case.

The Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has established this element of its case.

Bad Faith

The evidence does not clearly establish circumstances within subparagraph 4(b) of the STOP Policy, although it may be appropriate to infer that, in light of the fame of the Complainantís MASTERCARD mark, the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name - 4(b)(ii). The circumstances in 4(b) are not exhaustive, however.

In SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (NAF case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (NAF case FA94737); Canada Inc. v. Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF case FA95037).

Significantly, the Respondent has not asserted that he was unaware of the Complainantís mark when he registered the disputed domain name. Rather, he asserts that he did not have the Complainant or its mark "in mind" at the time.

The Response says a Google.com search reveals 1,670,000 web sites that use the term MASTER CARD and that most of these entries are in connection with the Complainantís services. It beggars belief that the Respondent was unaware of the Complainant or its mark before registering the disputed domain name and that he became aware of them only after having done so.

Further, the .biz procedures are such that the Complainantís IP Claim would have been notified to the Respondent before he proceeded with his domain name registration application. In light of the worldwide fame of the Complainantís mark and the .biz procedures, the Panel is unable to accept that the Respondent was unaware of the Complainant or its famous MASTERCARD mark prior to his registration of the disputed domain name.

The Panel finds the Respondent registered the disputed domain name in bad faith because he must have known of the Complainantís famous mark at the time and because, in light of that fame, there cannot be any use to which the domain name may be put without infringing the Complainantís rights or misleading Internauts into believing that the Respondentís website is approved by the Complainant.

The Complainant has established this element of its case.

 

7. Decision

Pursuant to paragraph 4(i) of the STOP Policy and to paragraph 15 of the STOP Rules, the Panel requires the domain name, <mastercard.biz>, to be transferred to the Complainant.

 


 

Alan L. Limbury
Sole Panelist

Dated: June 29, 2002