The Complainant is MasterCard International Incorporated of New York, United States of America, represented by Partridge IP Law P.C., United States of America.
The Respondent is Mike Morgan of Newfoundland, Canada.
The disputed domain name <mastercard-marketplace.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2010. On June 9, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On June 10, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 14, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 18, 2010. 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 the Respondent of the Complaint, and the proceedings commenced on June 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2010. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on July 9, 2010.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on July 16, 2010. 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.
On June 19, 2010, the Center received a one-line email from the registrar-confirmed email address for the Respondent which read, in full:
“contacted complainant for transfer details. Never responded.”
Therefore, the Center contacted the Parties by email on June 21, 2010, to determine whether they wished to suspend the proceedings in order to discuss settlement options. No reply from either Party has been received to date, and the Center has proceeded accordingly.
The Complainant, MasterCard International Incorporated, is a leading global payments solutions company which provides a variety of services in support of its members' credit, deposit access, electronic cash, business-to-business and related payment programmes. The Complainant through its predecessors in interest has acted in the payment card business since 1966 and has operated under the MASTERCARD name and mark since at least 1980. MasterCard manages a number of payment cards including Mastercard, Maestro and Cirrus. It serves financial institutions, consumers and businesses in over 120 countries and territories.
In 1980 the Complainant filed an application with the United States Trademark Office to register the trademark MASTERCARD. Since then, the MASTERCARD mark has been registered in most countries around the world.
In addition to its international trademark registrations, the Complainant has registered various domain names that incorporate the MASTERCARD mark or variations of that name: these include <mastercard.com>, <mastercardonline.com> and <mastercardmarketplace.com>.
On April 9, 2010 the Complainant announced the creation of an online shopping mall called “MastecardCard Marketplace”. Information on its new website and service was given, for example, in the New York Times in an article published on April 8, 2010.
The disputed domain name <mastercard-marketplace.com> was registered on April 9, 2010; many years after the Complainant's first registrations of the MASTERCARD mark in numerous countries around the world.
The Complainant says that at the time the Complaint was filed the disputed domain name led to a website containing hyperlinks to websites offering goods and services of its competitors and other third party websites. An Exhibit to the Complaint illustrates how an Internet user of the Respondent's website would be led to websites offering the goods and services of the Complainant's competitors.
The Complainant's contention is that:
The disputed domain name is confusingly similar to its mark;
The Respondent has no rights or legitimate interest in the disputed domain name;
The Respondent registered and is using the disputed domain name in bad faith.
The Complainant seeks the transfer of the disputed domain name to itself.
The Respondent did not reply to the Complainant's contentions.
The Rules state that the Panel is required to decide the 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 appropriate; paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
The domain name incorporates the Complainant's mark entirely into the Respondent's domain name. Numerous WIPO UDRP panels have found that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy: for example, The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137.
Furthermore, the Complainant argues that the addition of a hyphen and the non-distinctive term “marketplace” to the MASTERCARD mark does not change the overall impression: see MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050. In that case the disputed domain name was <mastercard-offers.com>. The panel held that “the addition of a generic term such as ‘offers' is insufficient to avoid confusion.”
The Respondent had the opportunity to challenge the Complainant's case but has not done so.
The Panel is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
The Complainant says that the Respondent is not affiliated or related to the Complainant in any way, and is not licensed or authorised to use the MASTERCARD mark. The Complainant has further produced evidence sufficient to show that the Respondent has no rights or legitimate interest in the disputed domain name. See Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003: “In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks [...] the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.”
Indeed, the Complainant contends that the use to which the Respondent's disputed domain name is put is to “divert and siphon off visitors seeking Complainant's MasterCard website.”
Paragraph 4(c) of the Policy sets out circumstances which, without limitation, may demonstrate a right or legitimate interest in a domain name. The Respondent was entitled to answer the Complainant's allegations against him, and was entitled to demonstrate any right or interest in the domain name by way of — for example - the circumstances listed in paragraph 4(c) of the Policy. The Respondent has not done so and the Panel can find no evidence in the current record which indicates that any of the circumstances of paragraph 4(c) of the Policy are present.
The Panel is satisfied that the Complainant has shown its compliance with the requirements of paragraph 4(a)(ii) of the Policy.
For the purposes of the bad faith provisions of paragraph 4(a)(iii) of the Policy, paragraph 4(b) sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(iv) are that:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Complainant's case, as stated earlier, is that the Respondent's use of the disputed domain name involves diverting and siphoning off visitors seeking the Complainant's website. This “generates revenue for the Respondent when confused consumers ‘click through' to sites offering the goods and services of MasterCard's direct competitors.”
Generating “click through” revenue in this manner, by targeting a complainant's trademark, may be evidence of bad faith: see for example MasterCard International Incorporated v. Hector Cancel, WIPO Case No. D2007-1121.
Tellingly, the Complainant points out that the disputed domain name was registered on the very day that it announced the unveiling of its MasterCard Marketplace website (and a day after that website was mentioned in a New York Times article which gave the name of the site).
Registration of the disputed domain name in these circumstances, contends the Complainant, “was deliberately done for commercial gain to attract Internet users to the Respondent's website [...]”. The Panel agrees with this assessment, especially in light of the use which the Respondent has previously made of the disputed domain name.
Again it is relevant to stress that the Respondent had the opportunity to respond to the Complainant's case but has not done so.
The Panel further notes that the Complainant has previously obtained an order against this Respondent for the transfer of the domain names <easyjetmastercard.com>, <easysavingsmastercard.com>, <goldfishmastercard.com>, <mastercardeasysave.com>, <masterecard.com>, <mastrcards.com> in MasterCard International Incorporated v. Mike Morgan, WIPO Case No. D2008-1927.
The Panel finds that the Complainant has satisfied the bad faith requirements of paragraph 4(a)(iii) of the Policy.
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-marketplace.com> be transferred to the Complainant.
Anthony R. Connerty
Dated: July 28, 2010