The Complainant is MasterCard International Incorporated of Purchase of New York, United States of America, represented by Pattishall McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.
The Respondent is 2mhost co., Mohamed Noman of Alexandria, Egypt.
The disputed domain name <mastercard-creditcard.com> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2009. On October 7, 2009, the Center transmitted by email to eNom, Inc a request for registrar verification in connection with the disputed domain name. On October 7, 2009, eNom, Inc 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” 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 the Respondent of the Complaint, and the proceedings commenced on October 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on October 30, 2009. The Center appointed Clive Duncan Thorne as the sole panellist in this matter on November 3, 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.
According to the Complainant, it is a leading global payments solutions company providing a broad variety of innovative services in support of its members' credit, deposit access, electronic cash, business-to-business and related payment programmes. Through its predecessors in interest 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.
The Complainant manages a family of famous and widely accepted payment card brands including MASTERCARD, MAESTRO and CIRRUS and serves financial institutions, consumers and businesses in over 210 countries and territories.
Exhibited to the Complaint are printouts from the Complainant's website at “www.mastercard.com” explaining the history of the Complainant's business.
In April 1980 the Complainant filed an application with the United States Patent and Trademark Office to register the trade mark MASTERCARD. Since then the Complainant has gone to considerable lengths to protect and register the mark MASTERCARD in practically every nation throughout the world. Examples of these are listed in the Complaint.
In addition to maintaining an international portfolio of trade mark registrations the Complainant has registered numerous domain names incorporating MASTERCARD or variants including, inter alia, <mastercard.com>, <mastercard.net>, <mastercard.org>, <mastercardonline.com>, <mastercardonline.net> and <mastercardonline.org>. It registered <mastercard.com> in July 1994.
Also exhibited to the Complaint is a printout from the “www.mastercard.com” website showing locations in Egypt (the location of the Respondent) where the Complainant's credit cards bearing the mark MASTERCARD can be obtained.
The Complainant submits that as a result of the care and skill exercised by the Complainant in the sale and promotion of its many MasterCard services and products, the supervision and control exercised by the Complainant over the nature and quality of these services and products and the Complainant's extensive advertising, sale and public acceptance of the mark MASTERCARD, the mark has become famous symbolising “an enormous amount of goodwill”.
The Complainant owns numerous registrations in the United States for the mark MASTERCARD. These are listed in the Complaint. It also owns at least 19 Egyptian trade mark registrations for the mark MASTERCARD or marks incorporating the MASTERCARD name. A chart setting these out is contained within the Complaint. In addition copies of the Complainant's trade mark registrations in Egypt are annexed at Exhibit I to the Complaint.
According to the eNom.com WhoIs record the domain name in dispute <mastercard-creditcard.com> was registered on December 3, 2006 which is a date after the Complainant's adoption and registration of the marks MASTERCARD. The website accessed by the domain name in dispute contains links to websites offering the goods and services of the Complainant and its competitors and also displays images of the Complainant's competitors Visa and Discover. Exhibited to the Complaint is a printout of one of the linked websites and a step-by-step guide to reaching the competing website through the website accessed by the domain name in dispute (Exhibit L to the Complaint).
In the absence of a Response and any submissions or evidence from the Respondent, and having considered the evidence attached to the Complaint, the Panel finds the above evidence to be true.
The Complainant contends:
(i) The domain in dispute is confusingly similar to the Complainant's mark MASTERCARD.
(ii) The Respondent has no rights or legitimate interests in the domain name in dispute. In particular the Respondent is not offering goods or services but is using the domain name in dispute to list links to external websites, some of which offer goods and services from the Complainant's competitors.
(iii) The Respondent registered and is using the domain name in dispute in bad faith. The Complainant submits that on the evidence it is apparent that the domain name in dispute is “deliberately used for commercial gain to attract Internet users to [the] Respondent's website based on a likelihood of confusion with [the] Complainant's MASTERCARD marks”, and that this satisfies the requirement of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
On the evidence adduced by the Complainant the Panel is satisfied that the Complainant has registered trade mark rights in the mark MASTERCARD throughout the world. It also has unregistered rights by virtue of long and extensive worldwide use of the mark.
In the Panel's view the domain name in dispute is confusingly similar to the mark MASTERCARD in that the mark MASTERCARD is incorporated in the domain name in its entirety. In addition the reference to “creditcard” is simply a description of one of the core activities of the Complainant. It also, as is submitted by the Complainant, reinforces the association between the domain name in dispute and the Complainant's trade mark with its primary line of products.
In these circumstances the Panel finds, in accordance with paragraph 4(a)(i) of the Policy, that the domain name in dispute is confusingly similar to marks owned by the Complainant.
The Complainant submits that the Respondent is not affiliated or related to the Complainant in any way, nor is it licensed by the Complainant or otherwise authorised to use the mark MASTERCARD.
There is no evidence that the Respondent is generally known by the name MASTERCARD and has acquired any trade mark rights in the mark MASTERCARD.
The evidence is that the Respondent is not offering goods or services under the mark MASTERCARD, but is using the domain name in dispute to list links to external websites (some of which offer goods and services from competitors of the Complainant).
Taking into account that there is no evidence or submission from the Respondent, the Panel is nevertheless satisfied that the Complainant has shown that the Respondent does not have rights or legitimate interests in the domain name in dispute pursuant to paragraph 4(a)(ii) of the Policy.
The Complainant relies upon paragraph 4(b)(iv) of the Policy which states that:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The Panel is satisfied that the domain name in dispute is “deliberately used for commercial gain to attract Internet users to [the] Respondent's website”. The evidence shows that the domain name in dispute apparently generates revenue for the Respondent when confused consumers click through to sites offering the goods and services of both the Complainant and the Complainant's direct competitors.
The Complainant relies upon an earlier panel decision in MasterCard International Incorporated v. Hector Cancel, WIPO Case No. D2007-1121 where that panel recognised that “UDRP panels have consistently found that, under similar circumstances, receiving clicks-through-revenue by directing visitors to other websites constitutes bad faith”.
In the Panel's view this is sufficient to show that the Respondent's conduct constitutes registration and use of the 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 <mastercard-creditcard.com> be transferred to the Complainant.
Clive Duncan Thorne
Dated: November 17, 2009