WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cirrus System, LLC v. Salvia Corporation
Case No. D2008-0695
1. The Parties
The Complainant is Cirrus System, LLC, Colm Dobbyn, 2000, Purchase, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is Salvia Corporation, Riga, Latvia.
2. The Domain Name and Registrar
The disputed domain name <cirruscard.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2008. On May 5, 2008, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On May 5, 2008, DSTR Acquisition VII, LLC d/b/a Dotregistrar.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 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2008.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on June 23, 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
The Complainant operates a global interbank network, known as the MasterCard/Cirrus ATM Network, which enables credit and debit cards issued by one of its member financial institutions to be accepted at the ATMs of other members around the world.
Through the Complainant’s processing facility consumers can have an instant access to their funds worldwide, make deposits and withdrawals in places where one’s bank has no branches, and even withdraw local currency in a foreign country.
The MasterCard/Cirrus ATM Network contains over 800,000 ATMs worldwide and is the largest global interbank network in the world. The Cirrus logo appears on over 920 million cards and over 800,000 ATMs in at least 210 countries worldwide.
The Complainant owns U.S. registrations for CIRRUS No. 1.259.615 filed on March 3, 1982 and registered on November 29, 1983 and CIRRUS Design No. 1.298.026 filed on November 29, 1982 and registered on September 25, 1984 for “banking services, namely, providing Automatic Teller Services.”.
Moreover the Complainant owns a Latvian trademark registration for CIRRUS No. M 19 107 filed on June 21, 1993 and registered on December 20, 1994 for goods and services included in the international classes 9, 16, 35 and 36.
The Complainant is also the owner of several additional registrations of CIRRUS in numerous countries all over the world.
The disputed domain name was registered on December 10, 1998.
The contested domain name is used to host a web page containing links to various commercial web sites which offer credit card related goods and services, including links to web sites offering the products and services of unrelated companies.
5. Parties’ Contentions
The Complainant contends that its global interbank network provides an extraordinary convenience to its members cardholders enabling them to have an instant access to their funds and to make deposits and withdrawals worldwide.
The MasterCard/Cirrus ATM Network is the largest global interbank network in the world and contains over 800,000 ATMs worldwide; the Cirrus logo appears on over 920 million cards.
In light of the above factual arguments and as a result of the care and skill exercised by Cirrus in the sale and promotion of its many Cirrus services, the supervision and control exercised by Cirrus over the nature and quality of these services, and the extensive advertising, sale and public acceptance thereof, the Complainant contends that the CIRRUS mark has become famous, symbolizing an enormous amount of goodwill. The CIRRUS mark is exclusively associated with the high quality financial services and related goods and services offered by Cirrus and its member institutions.
The Complainant contends that the domain name <cirruscard.com> is confusingly similar to the CIRRUS mark because it incorporates the entirety of Complainant’s trademark; the addiction of the generic term “card” does not change the overall impression of the mark or avoid confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the contested domain name. The Respondent is not generally known by the CIRRUS mark or the infringing Domain Name, and has not acquired any trademark or service mark rights in the name or mark. The Respondent was not licensed or otherwise permitted to use the Complainant’s trademark.
Moreover, the disputed domain names cannot be considered basis for a bona fide offering of goods or services. The Respondent is not offering the goods or services at issue, but is merely using the contested domain name to list links to different websites, some of which offer services from competitors of the Complainant. Even though some of those links pertain to the Complainant, many do not. Since the Respondent has registered and is using the domain name at issue with the clear intention to divert and siphon off visitors seeking information on the Complainant’s services, it can be stated that such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.
The Complainant contends that the domain name <cirruscard.com> has been registered and is being used in bad faith.
The Complainant contends that the domain name at issue is deliberately used for commercial gain to attract Internet users to the Respondent’s website based on a likelihood of confusion with Complainant’s CIRRUS mark. Indeed the infringing domain name apparently generates revenue for the Respondent when confused consumers “click through” to sites offering the goods and services of Cirrus and other competitors.
Moreover, the Respondent acquired and began unauthorized use of the infringing domain name long after MasterCard’s adoption, worldwide use and registration of its CIRRUS marks. Furthermore, the worldwide use and strong reputation of the Cirrus name and mark lead to the necessary conclusion that the Respondent registered and used the disputed domain name with actual knowledge of Cirrus’ rights.
The bad faith use in violation of the Policy is also demonstrated by the circumstance that the contested domain name offers links to services directly competing with the Complainant’s services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the domain name registered by the Respondent 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 registered by the Respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s CIRRUS trademark, which may be considered a strong, distinctive and widely-known mark, on the basis of its worldwide reputation and goodwill in connection with the high quality financial services and related goods and services offered by Cirrus.
The domain name at issue incorporates in its entirety the Complainant’s trademark CIRRUS; the only differences are the mere adjunction of the term “card” and the suffix “.com”.
The addition of the generic term is not enough to prevent confusing similarity between the domain name and the incorporated trademark.
Indeed, the addition of the generic term ‘card’, that clearly relates to Complainant’s business activity (as referred by the Complainant “The Cirrus logo appears on over 920 million cards”) to a widely-known trademark does not prevent confusing similarity between the domain name and said trademark (see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055, GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195, Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987, for the addition of a geographical indicator see Rolls-Royce Plc v. Hallofpain, WIPO Case No. D2000-1709, PepsiCo Inc. v. QWO, WIPO Case No. D2004-0865). On the contrary, the Panel finds that the adding of the term “card” is likely to enhance the confusion and to lead customers to believe that the disputed domain name is effectively linked to, affiliated with or connected to the Complainant.
The Panel believes that people viewing the disputed domain name without awareness of its content may think that the domain name is in some way connected and associated with the Complainant: this situation is known as “initial interest confusion” (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206, CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988).
With regards to the suffix .com (which indicates that the domain name is registered in the .com gTLD), as it was established in many previous decisions (see A.P. Møller v.Web Society, WIPO Case No. D2000-0135, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Arab Bank for Investment And Foreign Trade v. Mr. Kenn Wagenheim / firstname.lastname@example.org, WIPO Case No. D2000-1400, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.
Therefore, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the 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 the Respondent has rights or legitimate interests in the domain name, such as:
(i) use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate non-commercial 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.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the domain name.
The Respondent is not generally known by the CIRRUS mark or the disputed domain name, and it has not acquired any trademark or service mark rights in that name or mark. Moreover, the Respondent was not licensed or otherwise permitted to use the Complainant’s trademark.
Furthermore, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. As a matter of fact, by registering the domain name at issue the Respondent clearly intended to profit from the use of a domain name which is confusingly similar to the Complainant’s trademark CIRRUS, diverting Internet users to websites where pay-per click links exist and generate gain for the Respondent.
Finally, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain name is also supported by the fact that no response was filed by the Respondent.
According to earlier decisions (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090) “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”.
Therefore, based on the evidence, the Panel is satisfied that the second element is met.
C. Registered and Used in Bad Faith
The Panel finds that the domain name was registered and is being used in bad faith.
The Complainant’s CIRRUS trademark and activity are very widely-known throughout the world and considering the widespread use and reputation of CIRRUS name and mark, the inherent distinctiveness of the mark, and Complainant’s prior trademark registrations (included a registration in Latvia where the Respondent seems to reside), the Respondent most likely was aware of it when it registered the domain name at issue.
The choice of the disputed domain name by the Respondent in the Panel’s view could not result from a mere coincidence. And indeed, the Respondent’s awareness of the Complainant’s activity and rights is suggested by the fact that the Respondent registered a domain name just consisting of the Complainant’s mark CIRRUS and the generic word “card”, that clearly relates to the Complainant’s business activity in the banking services and ATM network industry.
In line with other prior decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395), the Panel believes that, in the absence of any right or legitimate interest and lacking any contrary evidence by the Respondent, the Respondent’s registration of a domain name confusingly similar to the Complainant’s widely-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411 mentioned in the Complaint).
Concerning the use of the domain name, the Complainant has proven that the disputed domain name resolves to a web page containing links to various commercial web sites which offer credit card related goods and services, including links to web sites offering the products and services of unrelated companies.
In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the web site corresponding to the Complainant’s services and to obtain information about the Complainant’s activity, to another variety of banking and financial goods and services by creating a likelihood of confusion with the Complainant’s trademarks and business.
By exploiting the renown of the CIRRUS trademark, the Respondent diverts Internet users looking for the Complainant’s website and seeks to gain profit out of the domain name by providing sponsored links to several other websites (offering goods and services of Cirrus and other competitors) and obtaining revenues from the diverted traffic (besides the decisions mentioned by the Complainant, see also MasterCard International Incorporated v. Abadaba S.A., Administrador de dominiosCase, WIPO Case No. D2008-0325 and Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955).
In light of the above circumstances, the Panel is satisfied that the third element is met and that the domain name <cirruscard.com>, was registered and is being used in bad faith.
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, <cirruscard.com> be transferred to the Complainant.
Dated: July 11, 2008