WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International Incorporated v. Paul Barbell
Case No. D2007-1139
1. The Parties
Complainant is MasterCard International Incorporated, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
Respondent is Paul Barbell, Jacksonville, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <priceless.org> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2007. On August 3, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 6, 2007, eNom 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”), 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 August 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2007.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 7, 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
Complainant is the owner of trademark registrations in the United States of America and other countries for the term “Priceless”. Complainant has registered the PRICELESS service mark on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number. 2,370,508, dated July 25, 2000, covering financial services, namely “providing credit card, debit card, charge card …” and other services.1 Complainant has also furnished a list of service mark registrations for PRICELESS showing Canada, Mexico, Denmark, France, Spain, the United Kingdom and Australia, as well as a pending Community Trademark (CTM) application. (Complaint, Annex E). Complainant is the owner of service mark registrations in the United States of America for various combinations terms including Priceless, for example, PRICELESS MEMORIES SWEEPSTAKES, registration number 2,370,508, dated April 22, 2003 (disclaiming “SWEEPSTAKES” apart from the mark as shown) (id., Annex F).
Complainant through its “MasterCard” brand is a well-known provider of credit card processing and related services in the United States and other countries. Commencing in 1997, Complainant has used the term Priceless in connection with an extensive advertising campaign involving its MasterCard credit card services. That advertising campaign has run in 105 countries. As a consequence of wide usage, the term Priceless has become associated with Complainant and its services.
Complainant has registered a number of domain names incorporating the term Priceless, the earliest registration of which is <priceless.com> on November 3, 1997. Complainant operates a commercial Internet website at “www.priceless.com” where, inter alia, it offers video clips of television advertisements featuring the PRICELESS theme.
According to the Registrar’s Verification report, Respondent is the registrant of the disputed domain name, <priceless.org>. According to a Network Solutions WHOIS database report furnished by Complainant, the record of registration of the disputed domain name was created on February 24, 2005.
The disputed domain name directs Internet users to a searchable website portal that includes links to various types of goods and services, including links in the fields of “Credit Card Application” and “Online Payment” services. Clicking through the “Credit Card Application” link, an Internet user is shown further links to Complainant and to competitors of Complainant (such as Visa, American Express and Discover Card) (Complaint, Exhibit H). The searchable website portal addressed by the disputed domain name appears to use a standard format for providing click-through links to third party goods and service providers. It does not appear to be specifically designed by or for Respondent.
The Registration Agreement in effect between Respondent and eNom, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it is the owner of the PRICELESS service mark for use in connection, inter alia, with credit card processing and related services. Complainant argues that the domain name is identical or confusingly similar to this service mark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because, inter alia, Respondent’s offering of the services of third party competitors of Complainant through links on its website is not a bona fide offering of services, and does not constitute fair use of Complainant’s service mark.
Complainant argues that Respondent registered and it is using the disputed domain name in bad faith, inter alia, by intentionally for commercial gain attracting Internet users to its website by suggesting an association with Complainant.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The case file transmitted by the Center to the Panel includes a courier tracking record showing that the Complaint was successfully delivered to the address of Respondent indicated in its record of registration for the disputed domain name. The Center also attempted to contact Respondent by e-mail and telefax. The Panel is satisfied that Respondent was given adequate notice of these proceedings, and that each party has been given adequate opportunity to present its position.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant is the owner of service mark registrations in the United States of America and other countries for the term Priceless, and has made extensive use of that term in connection with advertising and furnishing services in commerce (see Factual Background, supra). The Panel determines that Complainant has rights in the service mark PRICELESS.
The disputed domain name, <priceless.org>, directly incorporates Complainant’s service mark, adding only the generic top level domain (gTLD) identifier “.org”. The disputed domain name is identical to the service mark for purposes of the Policy.
The Panel finds that the disputed domain name is identical to a service mark in which Complainant has rights.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Respondent has not been authorized by Complainant to use its PRICELESS service mark. There is no evidence to show that Respondent has been commonly known by the disputed domain name.
Respondent is using the disputed domain name and Complainant’s service mark to direct Internet users to a website offering services directly competitive with those of Complainant. Respondent is acting solely as a conduit to third party offers of services, and is presumably receiving some form of compensation for click-throughs to such third party offers.2 Complainant is merely taking advantage of the goodwill associated with Complainant’ s mark to offer services of third parties, including direct competitors of Complainant. This does not constitute a bona fide offering of services within the meaning of Paragraph 4(c)(i) of the Policy. See, e.g., Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537.
Respondent is not making fair use of Complainant’s service mark. Respondent is using the domain name in a way that misleads Internet users for commercial gain.
Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website 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 [respondent’s] website or location or of a product or service on your website or location” (id., paragraph 4(b)(iv)) .
Respondent has used the disputed domain name, which is identical to Complainant’s service mark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. While Respondent’s website is being addressed by Complainant’s service mark, the content on Respondent’s website refers to and links to third parties offering services directly competitive with those of Complainant. Respondent is presumably receiving some form of compensation for click-throughs to such third party competitors.3 Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has satisfied each of the three elements necessary for a finding of abusive domain name registration and use within the meaning of the Policy.
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, <priceless.org>, be transferred to Complainant.
Frederick M. Abbott
Dated: September 21, 2007
1 Beyond providing its own list of service mark registration data, Complainant did not provide substantiating evidence, such as TARR database printouts, of the registration of the PRICELESS service mark (standing alone) at the USPTO. In order to avoid delay in these proceedings (through a Panel request to Complainant to provide such substantiating evidence), the Panel independently confirmed the registration referred to in the text accompanying this footnote using the USPTO TARR database on September 21, 2007.
2 Even if Respondent is not directly receiving compensation, the party responsible for placing content on Respondent’s website presumably is receiving compensation. Respondent is ultimately responsible for the content of its website and the commercial activities conducted through it.