WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International Incorporated v. ZJ
Case No. D2007-0687
1. The Parties
The Complainant is MasterCard International Incorporated, Purchase, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is ZJ, Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <platinummastercard.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2007. On May 10, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On May 10, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the 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”), 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 May 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2007.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on June 15, 2007. 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 well-known company providing a broad variety of financial and other services in support of its global members’ credit, deposit access, electronic cash, business-to-business and related payment programmes. Through its predecessors in business, it has been in the payment card business since 1966 and has operated under the name and mark MASTERCARD since at least 1980.
The Complainant annexes pages from its website at “www.mastercard.com” which states, amongst other things, that “MasterCard became the first payment card issued in the People’s Republic of China”.
The Complainant has registered the trademark MASTERCARD in virtually every country around the world, including China. In particular, it holds United States trademark registrations for: PLATINUM MASTERCARD (Reg. No. 2,317,875), MASTERCARD PLATINUM TREASURES (Reg. No. 2,552,988), PLATINUM MASTERCARD VACATIONS (Reg. No. 2,334,670), PLATINUM MASTERCARD VACATIONS (Reg. No. 2,356,697) and PLATINUM MASTERCARD VACATIONS (Reg. No. 2,301,796).
Registration No. 2,317,875, being the most relevant of all the trademark registrations, was filed on April 3, 1998, and was registered on February 15, 2000.
The Respondent is located in China It registered the disputed domain name on April 12, 2002. The web address “www.platinummastercard.com” redirects internet users to a portal-style website located at “www.searchportal.information.com” displaying, amongst other things, a link to “Visa Platinum Card”, a product competitive with the Complainant’s services.
The Complainant petitions the Panel for transfer of the domain name.
5. Parties’ Contentions
(i) Domain name / Trademark Identical
The Complaint submits that the disputed domain name is confusingly similar to the PLATINUM MASTERCARD mark because it wholly incorporates the mark and is identical to the mark. See eBay, Inc. v. Progressive Life Awareness Network., WIPO Case No. D2001-0068, (finding that the domain name <gayebay.com> incorporated the complainant’s mark in its entirety and holding it to be confusingly similar to complainant’s EBAY mark), see also Gilead Science, Inc. v. Kumar Patel, WIPO Case No. D2005-0831 (finding <gilead-sciences.com> confusingly similar to complainant’s GILEAD SCIENCES name and mark); Auxilium Pharmaceuticals, Inc. v. Kumar Patel, FA 642141 (NAF April 6, 2006) (finding <auxilium-pharmaceuticals.com> confusingly similar to complainant’s AUXILIUM name and mark).
(ii) No Rights or Legitimate Interests
The Complainant states that the Respondent is not affiliated or related to it in any way, nor is the Respondent licensed or otherwise authorized by it to use either the PLATINUM MASTERCARD or MASTERCARD marks.
The Complainant argues that the Respondent is not known by the domain name, nor has it acquired any trademark or service mark rights in the name or mark. See Gallup v. Amish Country Store, Case No. FA 96209 (NAF January 23, 2001) (respondent does not have rights in domain name incorporating another’s mark when respondent is not known by that mark).
The Complainant asserts that the Respondent uses the domain name in connection with a website which contains links to other websites offering services of its competitors and therefore the Respondent’s use does not satisfy the test for bona fide use established in Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481.
Therefore, the Respondent does not have rights or a legitimate interest in the domain name under the Policy paragraph 4(a)(ii).
(iii) Registered and Using in Bad Faith
The Complainant argues that the Respondent’s conduct falls squarely within the circumstances described in Paragraph 4(b)(iv) of the Policy, namely, that the Respondent deliberately used the domain name for commercial gain by diverting internet users as a result of the likely confusion with the Complainant’s trademark.
In particular, the Complainant reasons that the Respondent acquired and began using the domain name long after the Complainant’s adoption, use and registration of its MASTERCARD and PLATINUM MASTERCARD marks. At the time the name was registered, the Complainant submits that it had already made substantial, long-term and widespread use of its MASTERCARD and PLATINUM MASTERCARD marks.
The Complainant goes on to state that the Respondent had actual or constructive knowledge of its trademark rights and so registered the domain name in bad faith.
The subsequent use of the domain name was also in bad faith since the website to which internet users are redirected offers services directly competing with the Complainant’s services. Such use of the PLATINUM MASTERCARD mark is clearly bad faith use. See Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (finding bad faith in respondent’s use of complainant’s mark to sell complainant’s products and those of its competitors); Mariah Boats, Inc. v. Shoreline Marina, LLC, Case No. FA 94392 (NAF May 5, 2000) (finding that respondent’s use of complainant’s mark to sell competitive products was in bad faith); Nokia Corp. v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 (finding that respondent’s use of the NOKIA mark in its domain name to sell products compatible with both Nokia and competing phones showed that “Respondent has intentionally used the goodwill of Complainant’s trademark to create traffic to his web site”).
Such conduct combines to demonstrate both bad faith registration and bad faith use of the domain name under Policy paragraph 4(a)(iii).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact the Respondent failed to submit a reply : see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465; and Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.
According to Paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the domain name is 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 domain name; and
(iii) the domain name was registered and is being used in bad faith.
Having considered the Complainant’s case and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar to Trademark Rights
The Panel finds that the trademark registrations sufficiently establish the Complainant’s rights in the PLATINUM MASTERCARD and MASTERCARD marks for the purposes of the Policy paragraph 4(a)(i) (see Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum December 21, 2005); Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum September 25, 2003).
The Panel accepts the consensus view of former panels that for the purposes of testing confusing similarity, the generic top-level domain (“gTLD”), “.com”, is to be ignored (see, for example, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003): “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”.
The Panel has no hesitation in finding that the disputed domain name is identical to the PLATINUM MASTERCARD mark and is confusingly similar to the MASTERCARD mark.
The Panel accordingly holds that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
There is no evidence that the Respondent has permission to use the Complainant’s trade marks. The Respondent has no obvious commercial interest in financial services and is not commonly known by the domain name. In these circumstances the burden of proof passes from the Complainant to the Respondent. The Respondent has provided no explanation for its actions and the only conclusion which can be drawn is that the Respondent has no rights or legitimate interests in the domain name: see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No.D2003-0455 and Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110.
The Panel finds that the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad Faith
The evidence shows that the reputation of the Complainant’s MASTERCARD trade mark is immense. The Panel accepts that on the evidence there is a strong likelihood that the Respondent knew of the Complainant’s marks at the time it registered the disputed domain name.
The Panel accordingly finds that the Respondent registered the name in bad faith.
The domain name was subsequently associated with a website carrying at least one hyperlink to a company which is a major competitor of the Complainant.
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances are listed as evidence of the registration and use of a domain name in bad faith:
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Respondent’s actions fall within one or both of those descriptions and so I also hold that the Respondent’s use of the domain name has been in bad faith: see, for example, Altavista Co. v OFEZ et al, WIPO Case No. D2000-1160.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <platinummastercard.com>, be transferred to the Complainant.
Debrett G. Lyons
Date: June 29, 2007