WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International Incorporated v. Michael J. Yanda
Case No. D2008-0697
1. The Parties
The Complainant is MasterCard International Incorporated, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is Michael J. Yanda, United States of America.
2. The Domain Name and Registrar
The disputed domain name <platinummastercards.com> is registered with Blueberry Hill Communications, Inc. dba 4domains.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 Blueberry Hill Communications, Inc. dba 4domains.com a request for registrar verification in connection with the domain name at issue. On May 5, 2008, Blueberry Hill Communications, Inc. dba 4domains.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 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2008.
The Center appointed Dennis A. Foster as the sole panelist in this matter on June 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
The Complainant is a United States of America company that has engaged in the credit card business for several decades throughout the world. It has valid United State Patent and Trademark Office (the “USPTO”) registrations for, among others, the marks, MASTERCARD (Registration No. 1,186,117; January 12, 1982) and PLATINUM MASTERCARD (Registration No. 2,317,875; February 15, 2000). The former mark is among the most famous service marks in the world.
The disputed domain name was registered by the Respondent on February 20, 2005. The website found at the domain name provides links to the services of the Complainant as well as those of the Complainant’s competitors.
5. Parties’ Contentions
The Complainant’s predecessors in interest began operating in the credit card business as early as 1966. The Complainant provides a broad variety of innovative services in support of its global members’ credit, deposit access, electronic cash, business-to-business and related payment programs in some 210 countries and territories around the world and has done so under the service mark MASTERCARD since at least 1980.
The Complainant holds many valid USPTO registrations for marks incorporating the Complainant’s basic mark, including, MASTERCARD and PLATINUM MASTERCARD. Moreover the MASTERCARD mark is registered by the Complainant in virtually every jurisdiction throughout the world.
The Complainant also owns several domain names corresponding to its registered marks, including, among others, <mastercard.com>, <marstercard.net>, <mastercard.org> and <mastercardonline.com>.
Due to the vast degree of commerce under and promotion of its MASTERCARD and PLATINUM MASTERCARD marks, the Complainant has created an enormous amount of global goodwill associated with those marks. Simply put, the MASTERCARD mark is one of the most famous in the world.
The Respondent registered the domain name in question on February 20, 2005, substantially after the Complainant had obtained the service mark registrations noted above.
The disputed domain name is confusingly similar to the Complainant’s PLATINUM MASTERCARD mark as the only difference is the addition of an ending “s” that represents merely a plural version of the words.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is neither a licensee of the Complainant nor is otherwise authorized by the Complainant to use its marks. The Respondent is not known commonly by the domain name. The Respondent uses the disputed domain name only to link internet users to either the Complainant’s services or to the services of Complainant’s competitors – a use that fails to qualify as a bona fide offering of goods or services or a noncommercial or fair use.
The Respondent registered and is using the domain name in question in bad faith. The Respondent has engaged in a pattern of registering domain names that cause confusion with the Complainant’s marks for the Respondent’s monetary gain through collection of click-through fees. The fame of the Complainant’s marks leads to the conclusion that the Respondent knowingly used the disputed domain name to infringe upon the Complainant’s rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraphs 4(a)(i), (ii) and (iii) of the Policy, the Complainant may prevail in this administrative proceeding and gain transfer of the disputed domain name, <platinummastercards.com>, by demonstrating the following:
- The disputed domain name is identical or confusingly similar 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 disputed domain name; and
- The disputed domain name was registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Complainant has furnished the Panel with irrefutable evidence of its valid USPTO registrations for the service marks MASTERCARD and PLATINUM MASTERCARD. The Panels deems such evidence as conclusive in establishing that the Complainant has sufficient rights in those marks for the purposes of paragraph 4(a)(i) of the Policy. See The Cyberbingo Corporation v. 207 Media Inc., WIPO Case No. D2005-0714; and Reebok International Limited v. Shaydon Santos, NAF Case No. FA565685.
The disputed domain name, <platinummastercards.com>, contains the full PLATINUM MASTERCARD mark, adding only an ending “s” and the gtld suffix “.com”. In the Panel’s view, such minor differences lead to the unavoidable conclusion that the domain name is confusingly similar to the mark. See Debbie Robus and Greg Robus v. Nicky Suard (DrivenOne, Inc.), WIPO Case No. D2000-0941 (where the panel, in considering several disputed domain names, found the name, <workampers.com>, to be confusingly similar to the mark, WORKAMPER); and Ameriprise Financial, Inc. v. Domain Park Limited, NAF Case No. FA1108511 (where the panel determined that the disputed domain name, <advisorcompasss.com>, was confusingly similar to the trademark, ADVISOR COMPASS).
As a result, the Panel finds that the Complainant has succeeded in proving that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant clearly owns rights in its service marks and asserts that it never authorized the Respondent to make any use of those marks. Given that the Respondent failed to file a response in this proceeding, the Panel will accept that reasonable assertion as true. (For the discretion in ascertaining the truth afforded a UDRP panel in the absence of a Response, see Bayerische Motoren Werke AG v. Bavarian AG, NAF Case No. FA110830; and Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. FA95095). The foregoing provides a prima facie case in the Complainant’s favor regarding the Respondent’s lack of rights or legitimate interests in the disputed domain name, and call for a rebuttal on the part of the Respondent. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Case No. FA 741828 (“Before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy [paragraph] 4(a)(ii)”); and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, WIPO Case No. D2000-1228.
Even though the Respondent has submitted no evidence to rebut the Complainant’s prima facie case, the Panel will consider whether Policy paragraph 4(c) is applicable in the Respondent’s favor based on the record. That paragraph allows for a finding that the Respondent has rights or legitimate interests in the disputed domain name if: (i) before any notice to [Respondent] of the dispute, [Respondent’s] 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) [Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or (iii) [Respondent is] 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.
The Complainant contends, and the Panel accepts in the absence of any counter filing, that the Respondent is currently using the disputed domain name to link Internet users to either the Complainant’s services or the competing services of third parties to gain so-called “click through” fees. Many panels adjudicating under the Policy have determined that such use does not constitute a “bona fide offering of goods or services” per paragraph 4(c)(i). See for example, Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088 (“The Panel finds that Respondent's registration and use of the Domain Name without Complainant’s permission for a website selling both Complainant's products and directly competing products does not constitute a bona fide offering of goods pursuant to paragraph 4(c)(i) of the Policy”); and Compaq Information Technologies Group, L.P. v. Express Technology, Inc., NAF Case No. FA104186. Furthermore, there is no evidence in the record indicating that the Respondent, or any company that it owns, is commonly known by any name that resembles the disputed domain name. Finally, the use to which the domain name at issue has been put, as noted above, is clearly not noncommercial or fair use. Thus, based on the record, the Panel concludes that the Respondent’s actions do not fall within the purview of paragraph 4(c).
Therefore, the Panel finds that the Complainant has prevailed in establishing that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four specific circumstances which, if found to apply, allow a panel to find bad faith registration and use of a disputed domain name. However, that paragraph is not meant to contain the exclusive reasons to sustain a bad faith finding. In this case, the Panel is aware that the MASTERCARD service mark is one of the most famous in the world. This level of fame attaches a priori to its many derivatives such as PLATINUM MASTERCARD. The Panel thus concludes that the Respondent certainly knew of the mark when it registered the disputed domain name, and certainly knew that it could not use that name, which is nearly identical to said mark, in anything but bad faith. Therefore, a finding by the Panel of bad faith registration and use of the disputed domain name is inescapable in the present case. For supporting URDP rulings relying on the worldwide fame of a mark to sustain a finding of bad faith registration and use of a domain name, see MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412; and Chanel, Inc. v. Buybeauty.com, WIPO Case No. D2000-1126.
In light of the above, the Panel determines that the Complainant has sustained its burden to demonstrate that the Respondent registered and is using the disputed domain name 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, <platinummastercards.com>, be transferred to the Complainant.
Dennis A. Foster
Dated: June 27, 2008