Complainant is MasterCard International Incorporated of Purchase, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.
Respondent is C W of Palm Beach, Florida, United States of America.
The disputed domain name <paypasscard.com> is registered with Blue Razor Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2009. On April 17, 2009, the Center transmitted by email to Blue Razor Domains, Inc. a request for registrar verification in connection with the disputed domain name. On April 17, 2009, Blue Razor Domains, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on April 27, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 19, 2009.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on May 28, 2009. 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.
Complainant is a globally famous company providing a variety of payment card services. Complainant owns numerous registrations across the world for the mark PAYPASS and MASTERCARD PAYPASS. These include United States Registration No. 2,841,418 for the mark “PAYPASS” in international classes 9 and 36, with a registration date of May 11, 2004 and first use in commerce in December 2002 and United Kingdom Registration Number 2,316,448, with a registration date of May 16, 2003. Complainant also owns a number of registrations for domain names that include the mark PAYPASS, for example <paypass.com>, which was registered July 9, 1999.
The disputed domain name <paypasscard.com> was registered July 2, 2005; according to the registrar verification to the Center, it was registered to Respondent on December 12, 2007. The registration is presently scheduled to expire July 2, 2009.
The disputed domain name routes to a website displaying a search portal and links to Complainant and also to some of Complainant's competitors in the global payment card services market.1
Complainant avers that in late 2002, it introduced a product under the PAYPASS and MASTERCARD PAYPASS marks. The product was designed to permit consumers to tap or wave their payment card on specially-equipped merchant terminals which would transmit payments details wirelessly, eliminating the need to swipe cards through card readers.
Complainant's legal contentions are summarized below.
Complainant contends that the disputed domain name is confusingly similar to Complainant's marks because it incorporates the entirety of Complainant's PAYPASS
mark, noting that only the non-distinctive term “card” is added to the PAYPASS mark. Thus, Complainant contends, the disputed domain name retains the most dominant feature of Complainant's famous PAYPASS mark. Complainant cites prior UDRP cases decided in its favor for the proposition that the addition of a non-distinctive, descriptive or generic term like “card” does not avoid confusion.2
Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name since Respondent (1) is not affiliated or related to MasterCard and has no license or authorization; (2) is not generally known by the disputed domain name and has not acquired trademark or service mark rights; (3) is not offering the goods or services to which Complainant's mark refers and is using the disputed domain name to route to Complainant and to Complainant's competitors. Taken together with the alleged diversion of visitors seeking Complainant's PAYPASS website, Complainant concludes that such uses are not bona fide.3
Complainant avers that Respondent is deliberately using the disputed domain name for commercial gain by attracting Internet users to Respondent's website based on confusion with Complainant's marks. Complainant infers that Respondent generates click-through revenues when confused visitors use links on Respondent's site, which under the circumstances constitutes bad faith (citing MasterCard International Incorporated v. Hector Cancel, WIPO Case No. D2007-1121; MasterCard International Incorporated v. Keyword Marketing, Inc., WIPO Case No. D2007-1138). Complainant also notes that since some of the links to third parties offer services directly competing with Complainant's services, such use constitutes bad faith use in violation of paragraph 4(b)(iv) of the Policy.
Complainant also avers that Respondent's acquisition and unauthorized use of the disputed domain name began long after Complainant adopted and made widespread use of its marks in the United States; therefore, Complainant directly alleges, “Respondent had actual notice of (…) [Complainant's rights in its marks]. There is no plausible reason for Respondent's selection of the Infringing Domain Name other than as a deliberate attempt to profit unfairly from confusion with [Complainant's] PAYPASS mark.”
On the basis of the above contentions, Complainant seeks transfer of the disputed domain name.
Respondent did not reply to Complainant's contentions.
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent notification of the Complaint to Respondent via courier and email to the address listed in the Whois record. The notification was undeliverable based on the address details provided. The emails transmitting notification of the Complaint to Respondent returned fatal error notices.
Based on the methods employed to provide Respondent with notice of the Complaint and Respondent's obligations to maintain accurate and current contact information under its registration agreement, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings. The Panel finds that the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules and that the failure of Respondent to furnish a response to the Complaint is not due to any omission by the Center.
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a).
Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.
In the absence of a response, the Panel may accept as true the reasonable factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The Panel agrees with Complainant that Respondent's domain name <paypasscard.com> is confusingly similar to Complainant's PAYPASS mark.
Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-13l5.
The Panel concludes that the addition of the descriptive term “card” does not negate the confusion created by Respondent's complete inclusion of the PAYPASS trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629. In fact, given that Complainant's mark is associated with goods and services using plastic charge, credit and debit cards, the Panel finds that the additional of the term “card” to Complainant's mark simply increases the confusion that Internet users would experience. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark”).
The Panel finds therefore that the disputed domain name is confusingly similar to the registered trademark of Complainant and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate that a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if Complainant makes out a prima facie case and Respondent enters no response. See id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant alleges that Respondent is not affiliated or related to MasterCard, has no license or authorization, and is not generally known by the disputed domain name. Complainant also alleges that Respondent has not acquired trademark or service mark rights, and is not offering the goods or services to which Complainant's mark refers. In the absence of a response by Respondent, the Panel accepts these factual allegations as true.
Complainant also alleges that Respondent is using the disputed domain name, among other things, to route users to websites offering goods or services of Complainant's competitors, which is not a bona fide use under the Policy. The Panel agrees.
The Panel infers that Respondent receives revenues when it diverts traffic to third party advertisements through the links appearing on Respondent's website. E.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit (. . .) in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
Screens from Respondent's website online show that Respondent uses the disputed domain name to promote products of Complainant's competitors, as well as links to other businesses unrelated to Complainant's products. The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate non-commercial interest in, or fair use of, the domain name. E.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; Mastercard International Incorporated v. Eric Hochberger, supra.
The Panel finds that Complainant has established a prima facie case. Refraining from submitting a response, Respondent has brought to the Panel's attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in making use of the disputed domain name.
The Panel rules therefore that Complainant has established the second element of paragraph 4(a) of the Policy.
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a respondent's concealment of identity, a lack of conceivable good faith uses for the domain name, or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel infers that whoever initially registered the disputed domain name was aware of Complainant's marks, which had already been registered in many countries, and used for several years. The Panel further infers that the original domain name registration was made with the intention of trading on the value of Complainant's marks. The Panel finds that Respondent itself acquired the registration with awareness of Complainant's mark in a deliberate attempt to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant's mark. The Panel concludes, therefore, that Respondent registered the domain name in bad faith for purposes of the Policy.4
The Panel also concludes that the circumstances demonstrate bad faith use of the domain name by Respondent, as elaborated below.
Currently available online screens from Respondent's website show that Respondent uses the domain name to promote sales of the products of Complainant and its competitors. Respondent has not only declined to submit a response to these proceedings, but also appears to have provided false or inaccurate contact details in violation of the requirements of the registration agreement with the domain name registrar. (In the alternative, if the contact details were correct, Respondent nonetheless refused to receive the notification of the Complaint).
With the addition of the word “card” to Complainant's PAYPASS trademark, the Panel finds that there is no conceivable good faith use for the domain name <paypasscard.com> by Respondent.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy. Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).
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, <paypasscard.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Dated: June 16, 2009
1 Complainant annexed copies of these screen displays to the Complaint. The Panel has also viewed on the Internet the pages to which the disputed domain name resolves. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
2 MasterCard International Incorporated v. Leasedomains.com, WIPO Case No. D2008-1785; MasterCard International Incorporated v. Organization Contact / www.wwwdomains4sale.com, WIPO Case No. D2007-0691.
3 In support, Complainant cites additional prior cases under the Policy decided in Complainant's favor. Mastercard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050; MasterCard International Incorporated v.Unicorn Multi-Media, Inc., WIPO Case No. D2007-0688.
4 While presenting the substantive arguments usually put forth in support of showing bad faith registration under the Policy, Complainant avoids using the term “bad faith registration.” The Complaint does not identify or discuss earlier registrants of the disputed domain name and omits reference to Respondent's 2007 acquisition; the Panel only became aware that Respondent was not the initial registrant because of the registrar's response to the Center's request for verification.
UDRP Panels generally treat acquisition in bad faith as equivalent to registration in bad faith, and “[a]lthough the Policy requires both registration and use in bad faith, it is clear that for the purpose of the Policy ‘registration' may include registration on acquisition by a new holder. This is evident from the Policy, paragraph 4(b)(i).” Mentor ADI Recruitment Ltd (trading as Mentor Group) v. Teaching Driving Ltd, WIPO Case No. D2003-0654. Moreover, it is logical to conclude that a registration in bad faith by Respondent's predecessor is sufficient under these circumstances to evidence bad faith registration upon acquisition by Respondent. See, e.g., DHL Operations B.V. v. Karel Salovsky, WIPO Case No. D2006-0520; Video Images, LLC v. Stoebner, Jeff, WIPO Case No. D2004-0887. It would have been helpful for the Complaint to address this issue.