WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mastercard International Incorporated v. Wesley Wobles
Case No. D2011-2311
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 Wesley Wobles of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <pricelessamsterdam.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2011. On January 3, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On the same date, 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.
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 January 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 7, 2012.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on February 20, 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 owns numerous trademark registrations in dozens of countries worldwide for the word “priceless” alone and in combination with other terms. For example, Complainant’s United States trademark registrations include PRICELESS, Registration No. 2,370,508 in International Class 36 with a registration date of July 25, 2000 covering the following goods and services: “Financial services, namely, providing credit card, debit card [charge card and stored value smart card services, prepaid telephone calling card services, cash disbursement,] and transaction authorization and settlement services”1 and PRICELESS.COM, Registration No. 3,693,182 in International Class 35, with a registration date of October 6, 2009 covering the following goods and services: “Promoting the goods and services of others by means of coupons, discounts, advertisements, incentives generated in connection with the use of credit and debit cards, electronic links to merchant and retailer web sites, and through promotional contests.”
Complainant’s PRICELESS family of trademark registrations cover many fields but are primarily made in classes associated with financial services. In many instances, Complainant has registered local translations of the linguistic equivalent to the descriptive term “priceless.”
The disputed domain name was registered on November 20, 2008 and presently routes to a parking page displaying sponsored link advertising of miscellaneous products and services, none of which appear to be related to credit cards or financial services.2 Among the products and services to which the parking page links are hotel, restaurant and travel reservations.
5. Parties’ Contentions
Complainant states that it is a leading global payments solutions company providing a broad variety of innovative services in support of its global members’ credit, deposit access, electronic cash, shopping, travel, business-to-business and related payment programs.
Complainant alleges that it has made extensive use for several years of the PRICELESS and PRICELESS.COM trademarks and that therefore the marks are famous. 3 Attached to the Complaint are copies of limited promotional materials making use of the trademarks, including an advertising campaign entitled “Priceless New York.” The Complaint also appends several pages from its French website referring to some promotional campaigns; only one of these campaigns relates to Complainant’s rights in the PRICELESS family of marks.
Complainant alleges that the disputed domain name <pricelessamsterdam.com> is confusingly similar to its PRICELESS mark because it wholly incorporates the mark and adds only a geographic term. Complainant points out that previous UDRP panels have held that the addition of a geographic term generally does not reduce confusing similarity resulting from the inclusion of a Complainant’s mark.
Complainant avers that Respondent’s parking page website displays links to competitors of Complainant because those links list offerings of “hotel reservations, restaurant coupons, and tours.”
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name since Respondent (1) is not affiliated or related to Complainant 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; and (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’s competitors. 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 alleges that, by diverting Internet users to a website displaying links to products and services that are not Complainant’s, Respondent’s use of the disputed domain name is not bona fide.
Complainant alleges that Respondent registered the disputed domain name in bad faith because Respondent had constructive notice of Complainant’s trademarks because they had been registered and used by Complainant for several years before registration. Complainant infers that Respondent generates click-through revenues when confused visitors use links on Respondent’s site, which under the circumstances constitutes bad faith. Complainant also notes in general terms 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, citing Mastercard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050.
On the basis of the above allegations, Complainant seeks transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition 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 the notification of these proceedings to Respondent by courier. The Center used the addresses listed identified by the Registrar in its verification, but the courier company was unable to deliver to the addresses indicated. The Center also notified Respondent by using email addresses provided by the Registrar in its verification response to the Center, but the electronic notifications returned delivery errors.
The Panel is satisfied that by sending communications to the contacts made available through the Registrar, and those provided by the registrant to the Registrar, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.
B. Substance of the Complaint and Applicable Standards
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:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) 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).
A. Identical or Confusingly Similar
Complainant owns several registrations for the marks PRICELESS and PRICELESS.COM, which support its claim of rights in the terms “priceless” and “priceless.com.”
Ignoring the generic top-level domain “.com”, the disputed domain name consists of the PRICELESS mark, adding only the geographical term “Amsterdam.” The Panel recognizes that the mere addition of a geographical term to another’s mark is normally not sufficient to avoid confusion. See, e.g., Viceroy Hotels, L.L.C. , Kor Cayman Ltd. v. Mr. Syed Hussain, WIPO Case No. D2009-0962 (“Consistent with previous decision the Panel agrees that the addition of a city name to Complainants’ trademarks does not alter the confusion between Complainants’ marks and the disputed domain name that Internet users would experience.”).
On the other hand, Complainant’s PRICELESS and PRICELESS.COM marks correspond to terms that are also descriptive. Moreover, the Panel takes notice that, even examining only a single country’s trademark registration database (from the United States Patent and Trademark Office), dozens of other trademark holders use and have registered the descriptive term “priceless” in a variety of trademark classes covering retail goods and services. This Panel notes that such evidence of third-party use combined with the descriptive nature of the terms comprising the marks at issue may also serve to limit the scope of protection to which Complainant is entitled and may reduce the potential for confusion of the disputed domain name with Complainant’s PRICELESS family of marks.
Indeed, this Panel believes that Complainant’s marks and the disputed domain name may create readily distinguishable commercial impressions. Given the nature of the terms at issue and that the marks exist in a crowded field, the Panel might conceivably conclude in cases such this that Complainant’s marks can coexist with the disputed domain name without a very high likelihood of creating confusion. See Pinnacle Intellectual Property v. World Wide Exports, WIPO Case No. D2005-1211. It is also the case that many panels have applied a test for confusing similarity which does not call for any likelihood of Internet confusion as such. See e.g. the range of views discussed in Apple Inc. v. Fred Bergstrom, LottaCarlsson, Georges Chaloux and Marina Bianchi, WIPO Case No. D2011-1388.
Ultimately, however, this Panel need not to decide the question of whether the Complaint establishes that Respondent’s disputed domain name is confusingly similar to marks of Complainant, since the Panel has determined that the Complaint fails on other grounds, as elaborated below.
B. Rights or Legitimate Interests
The Panel agrees with Complainant that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when 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) an entity 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.” Policy, paragraphs 4(c).
Complainant must show a prima facie case proving that a respondent lacks rights or legitimate interests. 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 a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant avers that: (1) Respondent is not commonly known by the disputed domain name; (2) Respondent has no trademark registration to use the PRICELESS marks; and (3) Respondent has no authorization from Complainant to use the PRICELESS marks. In the absence of a response, the Panel accepts these undisputed factual averments as true.
The record shows that the website to which the disputed domain name routes displays commercial links to third parties offering goods and services. The Panel agrees with Complainant that it is fair to infer that Respondent receives revenue when users click through the links displayed on the parking page to which the disputed domain name routes. 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 Ltd, WIPO Case No. D2006-1079. Therefore the Panel rules that Respondent is not making a legitimate noncommercial, bona fide, or fair use of the disputed domain name.
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 use of the disputed domain name.
Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established.
C. Registered and Used in Bad Faith
The Panel finds however, that the Complaint fails to establish the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use.
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, such as whether there is no response to the complaint, concealment of identity, and other circumstances. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel accepts Complainant’s undisputed factual averments that the PRICELESS marks have been in use for a number of years. Complainant contends that the fame of its PRICELESS family of marks should also be accepted by the Panel as the basis for constructive notice of Complainant’s rights, from which Respondent’s bad faith registration should be implied. See, e.g., WIPO Overview 2.0, paragraph 3.2.
While Complainant’s claim of broad public recognition for its marks may be verifiable, the Panel finds that the record in this proceeding fails to establish that Complainant’s PRICELESS marks are well known or famous. The Complaint does not provide brand recognition surveys, costs associated with promotion, or revenues related to the PRICELESS family of marks, the kind of information traditionally provided to support claims that a mark is famous or well known.4 In any case, even if the Panel were to agree with Complainant’s conclusion that the disputed domain name was registered in bad faith, the Panel nonetheless finds that the Complaint fails to establish use in bad faith.5
Complainant’s claim that the disputed domain name is used in bad faith is largely based on Complainant’s allegation that Respondent’s website displays links to competitors of Complainant. The presence of commercial links to competitors of a complainant is often accepted as evidence of bad faith use in UDRP proceedings. See, e.g., mVisible Technologies, Inc. v. Navigation Catalyst Sys., Inc., WIPO Case No. D2007-1141; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400). If such links were clearly in evidence in this proceeding, taken together with the fact that it appears that Respondent has not maintained accurate contact details in the Whois record, the Panel would be prepared to find bad faith use. However, unlike in some earlier cases in which Complainant was apparently able to point to such evidence of competitor links (See e.g. MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139), it is not evident from the record provided in this case.
Examining the record before it, however, the Panel finds that the links on Respondent’s webpage do not evidence competition with Complainant supporting an inference of bad faith use.
Complainant’s rather general allegations that Respondent uses the disputed domain name in competition with Complainant rests on two implicit assertions: (1) that the PRICELESS family of marks is associated with some of the areas represented by third-party links on Respondent’s website, which, according to the Complaint, are “hotel reservations, restaurant coupons, and tours”; or (2) that the PRICELESS family of marks is broadly associated with virtually any promotion of goods and services on the Internet – by “merchant and retailer web sites.”
As to the first assertion, there is no direct claim by Complainant that the PRICELESS family of marks is associated with hotel reservations, restaurant coupons, and tours.6 Instead, the Complaint states that the PRICELESS marks are “exclusively associated with the high quality financial services and related goods and services offered by MasterCard.” Although hotel reservations, restaurant coupons, and tours may be among the millions of things that might be obtained through use of Complainant’s trademarked products and services, the Panel finds that the Complaint in this proceeding has not established that the PRICELESS family of marks is associated in the trademark sense with “hotel reservations, restaurant coupons, and tours.”
As to the second implicit assertion, the Panel finds Complainant’s claims to goods and services associated with its marks to be very broad. For example, claims under United States Registration No. 3,693,182 for PRICELESS.COM (registered in October 2009) include “Promoting the goods and services of others by means of coupons, discounts, advertisements, incentives generated in connection with the use of credit and debit cards, electronic links to merchant and retailer web sites, and through promotional contests.”
The Panel observes that most links to commercial web sites that appear throughout the Internet fall within the quoted trademark claim, because they “[p]romote the goods and services of others . . . through electronic links to merchant and retailer web sites….” The Panel feels that to infer bad faith use on the basis of competition with Complainant from the display of links on a website “promoting the goods and services of others,” without more, is not merited. Such an inference would mean that bad faith use would be established for virtually any website displaying commercial links if the website’s domain name was confusingly similar to Complainant’s PRICELESS family of marks. As noted above, the Panel has already found that “priceless” is also a descriptive term, one that also appears as in registered trademarks of a large number of third party rightholders in addition to Complainant.
Having chosen to adopt such a descriptive term in a field occupied by other trademark holders, the Panel finds Complainant’s trademark rights are necessarily limited for purposes of assessing the elements of this particular Policy dispute. Given the breadth of Complainant’s trademark claims and the number of other apparently legitimate users of marks including the term “priceless,” or confusingly similar terms, the Panel is not prepared to embrace such a sweeping conclusion.7
In summary, the Complaint fails to establish that the disputed domain name is being used in bad faith.
For the foregoing reasons, the Complaint is denied.
Nasser A. Khasawneh
Dated: March 8, 2012
1 Brackets in original, official registration record.
2 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 4.5.
3 The Panel notes that Complainant chooses to make no reference to its recent United States applications for the marks PRICELESS NEW YORK, PRICELESS MIAMI (filing date on September 1, 2011) and PRICELESS CITY (filing date on October 14, 2011) – all filed three years after registration of the disputed domain name. The Panel therefore will not consider the potential implications of these pending trademark registrations in the present proceeding.
4 Apart from the Complaint’s allegations, the only material in the record that marginally supports Complainant’s claim to broad use of the marks is a statement on Complainant’s French language website that Complainant has used the PRICELESS ad campaign in 96 countries and 48 languages. The Panel finds that the representations by Complainant in the Complaint and in its own on-line publicity are not sufficiently probative to permit the Panel to conclude that the mark is famous.
5 Both bad faith use and bad faith registration must be established for Complainant to prevail under the Policy. E.g., E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
6 In the table of 19 United States trademark registrations appended to the Complaint, no registrations are described as relating to hotel reservations, restaurant coupons and tours. Complainant’s French webpages attached to the Complaint show a link between Complainant’s MASTERCARD trademarks and hotel and travel reservations, but do not show any such link between hotel and travel arrangements and the PRICELESS family of marks. The Panel has undertaken limited research on the United States Patent and Trademark Office database, and finds that Complainant recently applied for registration of the mark PRICELESS in International Class 35, in association with hotel and travel reservations. That application was not lodged until October 2011; the application claims first use dating only back to May 2011.
7 The hazard of embracing such a sweeping conclusion involving Complainant’s descriptive marks is not academic. Complainant has also filed a similar UDRP proceeding against a different respondent, involving that respondent’s parking page and based on the same marks of Complainant, concurrently pending before this Panel. In that proceeding, the Panel reaches a result consistent with this ruling. See Mastercard International Incorporated v. Education, Ersin Namli, WIPO Case No. D2011-2312 (transfer denied for insufficient weight of evidence of bad faith use).