WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MasterCard International Incorporated v. Sonia Coombs
Case No. D2012-0927
1. The Parties
Complainant is MasterCard International Incorporated of Purchase, New York, United States of America, represented by Partridge IP Law P.C., United States of America.
Respondent is Sonia Coombs of Centennial, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mastercardmerchantaccount.org> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2012. On May 2, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On May 2, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 Respondent of the Complaint, and the proceedings commenced on May 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 7, 2012.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on June 8, 2012. 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
Complainant is a major international provider of payment solutions in the nature of credit and debit card services. Complainant is the owner of numerous marks for MASTERCARD, and for MASTERCARD and design around the world, including, among others, United States Trademark Registration No. 1186117 (1982); United States Trademark Registration No. 1398272 (1986); United States Trademark Registration No. 1604606 (1990); and United States Trademark Registration No. 2212783 (1998). Complainant also owns numerous marks which incorporate the term MASTERCARD along with other terms. These include, among others, MASTERCARD ADVISORS, United States Trademark Registration No. 2790542 (2003), MASTERCARD BUSINESS SAVINGS, United States Trademark Registration No. 2594944 (2002) and MASTERCARD CHARGEBACK NAVIGATOR, United States Trademark Registration No. 2496671 (2001).
Complainant owns the registration for several domain names that include its registered MASTERCARD mark, including, among others, <mastercard.com>, <mastercard.net>, and <mastercard.org>. Complainant runs a website at the URL associated with the domain name <mastercard.com> (registered July 27, 1994). Complainant uses the domain name and associated website to inform customers about its MASTERCARD mark and its payment solution services and products. Complainant also owns the registration to domain names that incorporate the MASTERCARD mark along with other terms. These include <mastercardintl.com> and <mastercardmarketplace.com.>
The disputed domain name <mastercardmerchantaccount.org> was registered on February 26, 2010. Respondent has no affiliation with Complainant. Respondent has provided sponsored links from the URL associated with the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. These include links to competitors of Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that: (i) the disputed domain name <mastercardmerchantaccount.org> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Respondent did not file a reply to Complainant’s contentions in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name <mastercardmerchantaccount.org> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark MASTERCARD, and merely adds the descriptive words “merchant,” and “account.”
The Panel finds that the added words would be perceived by Internet users as descriptive of a website where they could find information about products or services related to business navigation and merchants. Accordingly, the Panel finds that consumers would likely expect to find information offered by Complainant on such a website. This is particularly so, since Complainant owns several trademark and domain name registrations that incorporate the term MASTERCARD along with other terms.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); and CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show respondent’s rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users via sponsored links, to websites that are unaffiliated with Complainant or Complainant’s services. To the extent that the question may be raised as to whether Respondent may be considered a legitimate reseller of Complainant’s goods for purposes of retaining the mark under the UDRP inasmuch as Respondent may in fact be offering “Mastercard merchant accounts,” the information on the URL associated with the disputed domain name does not establish that, and there is insufficient evidence of record to establish the other criteria set out by prior UDRP panels for establishing Respondent’s rights or legitimate interest. See Paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (discussing when an authorized reseller may be considered to have rights or legitimate interest in a domain name incorporating a mark); see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; and BlackRock Institutional Trust Co., N.A. v. Investors FastTrack, WIPO Case No. D2010-1038; cf. Beyonce Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent offers sponsored links to other websites via the disputed domain name, including competitors of Complainant. Hence, the Panel finds that Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with 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 disputed domain name <mastercardmerchantaccount.org> be transferred to Complainant.
Dated: June 11, 2012