WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mastercard International Incorporated v. Indy Web Productions

Case No. D2008-0198

 

1. The Parties

Complainant is Mastercard International Incorporated, of Purchase, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.

Respondent is Indy Web Productions, Michael J. Yanda, of Charlestown, Indiana, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <keybankmastercard.com>, <newbpmastercard.com>, <orchardbankmastercard.com>, <overstockmastercard.com>, <paypassvisa.com>, <starbucksmastercard.com>, and <wwwshellmastercard.com> are registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2008. On February 7, 2008, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain names at issue. On February 8, 2008, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.Com 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 Respondent of the Complaint, and the proceedings commenced on February 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 4, 2008.

The Center appointed Jordan S. Weinstein as the sole panelist in this matter on March 13, 2008. 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 twelve United States trademark registrations for the MASTERCARD mark, most incorporating a design. These registrations identify financial services and products and services ancillary to financial services, such as traveler’s cheque services, travel assistance services, financial pamphlets, brochures, newsletters and magazines, credit card, debit card and cash disbursement services, and others. In addition, Complainant owns nearly 100 United States trademark registrations which incorporate the MASTERCARD mark with other words, and often with designs. Again, these registrations identify financial services, and products and services ancillary to financial services.

All of the MASTERCARD and MASTERCARD & Design registrations, and most of the registrations which combine the MASTERCARD mark with other words, were issued prior to September 2004, when the earliest of Respondent’s domain name registrations was created.

Complainant also owns trademark registrations in the United States and other countries for PAYPASS in connection with various computer hardware payment devices, most notably smart cards containing proximity payment devices known as transponders, as well as credit and debit card services. Complainant’s United States registration dates from May 2004, prior to the registration date for any of Respondent’s domain names.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts it is a leading global payments solutions company which provides services to support its global members’ credit, deposit access, electronic cash, business-to-business and related payment programs. Complainant asserts it has been in the payment card business since 1966 and has operated under the name and mark MASTERCARD since at least as early as 1980.

Complainant asserts that it introduced in 2002 a new product named PAYPASS which allows consumers simply to tap or waive their payment card on a specially equipped merchant terminal, and which transmits payment details wirelessly and eliminates the need to swipe the card through a reader.

Complainant has also registered numerous domain names which contain its MASTERCARD and PAYPASS marks or variants thereof, including <mastercard.com> and <paypass.com>.

Complainant asserts that its MASTERCARD and PAYPASS marks have become famous; and that MASTERCARD is currently one of the most famous and widely recognized trademarks in the world. Complainant notes that it owns trademark registrations for MASTERCARD in practically every jurisdiction in the world that recognizes such rights and grants the ability to register marks.

With the exception of <orchardbankmastercard.com>, Complainant asserts that each of Respondent’s domain names at issue resolves to the website “www.financeglobe.com”, which displays links to some of Complainant’s products and services, as well as to the products and services of Complainant’s competitors.

Complainant asserts that the infringing domain names <keybankmastercard.com>, <newbpmastercard.com>, <orchardbankmastercard.com>, <overstockmastercard.com>, <starbucksmastercard.com>, and <wwwshellmastercard.com> are confusingly similar to the word portion of Complainant’s MASTERCARD mark. Complainant asserts that these marks incorporate the entirety of the word portion of Complainant’s marks and combine them with a mark owned by a different entity. Complainant asserts that this combination does not negate the confusing similarity between the domain names at issue and Complainant’s marks.

Complainant asserts that Respondent has no rights or legitimate interests in the domain names at issue because Respondent is not affiliated with or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use Complainant’s MASTERCARD or PAYPASS marks. Complainant asserts that Respondent is not generally known by any of the domain names at issue, and has acquired no trademark or service mark rights in the underlying names.

Complainant asserts that the “www.financeglobe.com” website to which Respondent’s domain names resolve is intentionally trading on the fame and reputation of Complainant’s MASTERCARD and PAYPASS marks.

Complainant asserts that Respondent’s use of its domain names at issue does not satisfy the test for bona fide use because Respondent is not itself offering the goods or services at issue, but is merely using the domain names to list links to different websites that offer information about Complainant and about its direct competitors.

Complainant asserts that Respondent has registered and is using the domain names at issue in bad faith because Respondent is engaging in a pattern of conduct of registering confusingly similar domain names deliberately for commercial gain in order to attract Internet users to Respondent’s website based on a likelihood of confusion with Complainant’s trademarks. Complainant notes that this is the second Complaint it has filed against Respondent.

Complainant asserts that at the time Respondent acquired and began using the domain names at issue, Complainant had long since adopted used and registered its MASTERCARD and PAYPASS marks, and had made substantial and widespread use of those marks and the corresponding domain names for many years. As a result, Complainant asserts that Respondent was on constructive notice of Complainant’s rights in these marks. Furthermore, Complainant asserts that the widespread use and fame of its marks lead to the necessary conclusion that Respondent registered and is using the domain names at issue with actual knowledge of Complainant’s rights. Complainant asserts there is no plausible reason for Respondent’s selection of the domain names at issue other than as a deliberate attempt to profit unfairly from confusion with Complainant’s marks.

Complainant asserts that the domain names <keybankmastercard.com>, <newbpmastercard.com>, <overstockmastercard.com>, <paypassvisa.com>, <starbucksmastercard.com>, and <wwwshellmastercard.com> redirect users to a website offering services which compete directly with Complainant’s services, constituting a bad faith use and violation of Section 4(b)(iv) of the Policy. Although Respondent’s domain name <orchardbankmastercard.com> is currently not in use, Complainant asserts that Respondent’s passive holding this domain name is in itself bad faith. Complainant also asserts that in the aggregate, Respondent’s registration of seven domain names incorporating Complainant’s marks to attract customers to Respondent’s website constitutes a pattern of conduct in registering trademark terms, and also constitutes bad faith use and registration. Complainant asserts and has provided evidence that Respondent has not only registered domain names incorporating Complainant’s trademarks, but has also registered numerous other domain names incorporating the VISA trademark of Complainant’s primary competitor. Complainant asserts that these additional registrations evidence Respondent’s bad faith as well as a pattern of bad faith conduct in registering infringing domain names.

Complainant asserts that Respondent’s domain names at issue likely generate “click through” revenue for Respondent from confused consumers who access Respondent’s websites thinking they are associated with Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

A. Applicable Policy Provisions

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:

(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

It is not sufficient to prevail that a complainant prove only registration in bad faith; rather, the complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.

However, the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that [the respondent has] registered or 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; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the 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 [its] website or location or of a product or service on [its] website or location.

Policy, paragraph 4(b). These circumstances are non-inclusive, and a panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.

The respondent may demonstrate rights in or legitimate interests to the domain name by any of the following, without limitation:

(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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Policy, paragraph 4(c).

Where a respondent is in default, the panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b).

B. Identical or Confusingly Similar

The Complainant’s many United States trademark registrations for MASTERCARD, and its registrations in the United States and other countries for PAYPASS, establish Complainant’s rights in these terms in connection with its financial services and ancillary products and services. Respondent’s domain names each have reproduced exactly the word component of Complainant’s MASTERCARD trademarks. The Panel finds that the addition of third party marks to Complainant’s marks incorporated in the domain names at issue does not decrease the likelihood of confusion with Complainant’s marks. The Panel finds that Complainant has provided sufficient evidence to establish element 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Complainant asserts, and Respondent has failed to rebut, that Respondent is not affiliated with or related to Complainant, that Respondent is not licensed by Complainant or otherwise authorized to use Complainant’s trademark, that Respondent is not generally known by any of the domain names at issue, has not acquired any trademark or service mark rights in the names, and is not making bona fide fair use of Complainant’s marks. In sum, Complainant has made a prima facie showing of bad faith which Respondent has failed to rebut. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.1 and cases cited therein. As a result, Complainant has established element 4(a)(ii) of the policy.

D. Registered and Used in Bad Faith

The Panel finds that Complainant has provided sufficient evidence satisfying paragraph 4(b)(iv) of the Policy, namely that by using the domain names, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

That Respondent was well aware of Complainant and its trademark is clear from the fact that Respondent has already been found to have registered abusively several domain names including Complainant’s MASTERCARD and PAYPASS trademarks. See MasterCard International Incorporated v. Michael J. Yanda, Indy Web Productions, WIPO Case No. D2007-1140. There is no question that Respondent knew what it was doing when it registered domain names incorporating Complainant’s trademarks.

The fact that all but one of the domain names at issue resolve to a website which is not associated with Complainant, but which offers the products and services of Complainant and its competitors, makes it clear to the Panel that the purpose of Respondent’s website is to obtain “click through” revenue from unsuspecting Internet users seeking products or services under Complainant’s trademarks, and possibly under the third party trademarks also incorporated in these domain names. In view of the reputation and goodwill of Complainant’s marks and Respondent’s previous involvement in a UDRP proceeding with Complainant, the Panel finds that Respondent’s registration and passive holding of the domain name <orchardbankmastercard.com> is in bad faith. See Telstra Corp Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Teacher’s Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483.

In addition, the Panel finds that Respondent has engaged in a pattern of registering abusively domain names as evidenced by its serial cybersquatting on Complainant’s marks and those of Complainant’s largest competitor.

The Panel notes that the domain names at issue combine Complainant’s marks with what appear to be the trademarks of third parties, such as Shell, Starbucks, and Visa. As a result, the Panel finds it appropriate to award transfer of these domain names to Complainant without prejudice to the rights of the other legitimate trademark owners. See Canadian Tire Corporation Limited v. Digi Real Estate Foundation, WIPO Case No. D2006-1117.

 

7. Decision

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 names, <keybankmastercard.com>, <newbpmastercard.com>, <orchardbankmastercard.com>, <overstockmastercard.com>, <paypassvisa.com>, <starbucksmastercard.com>, and <wwwshellmastercard.com> be transferred to Complainant.


Jordan S. Weinstein
Sole Panelist

Dated: March 27, 2008