WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mastercard International Incorporated v. Nirmal Patel, Champion Software Technologies Ltd.
Case No. D2018-0857
1. The Parties
The Complainant is Mastercard International Incorporated of Purchase, New York, United States of America, represented by AZB & Partners, India.
The Respondent is Nirmal Patel, Champion Software Technologies Ltd. of Rajkot, India, represented by Shantanu. R. Phanse & Kamlesh Y. Mali, India.
2. The Domain Name and Registrar
The disputed domain name <masterpay.pro> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2018. On April 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 3, 2018.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2018. The Response was filed with the Center on May 28, 2018.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 14, 2018. 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
The Complainant is a multinational corporation and is renowned for its financial services. It is active in more than 210 countries and territories. Its core area of business is the provision of payment processing services. The Complainant also provides allied goods and services, such as secure payment gateways and online or mobile wallet services through collaboration with various banks.
The Complainant’s roots can be traced back to 1966, when a group of bankers known as Interbank Card Association (“ICA”) came together to launch “Master Charge: The Interbank Card”, renamed as MasterCard in 1979. The Complainant launched a contactless card under the name “PayPass” in 2012. The Complainant launched a digital wallet service under the name “MasterPass” in 2013 which is currently available in 37 countries worldwide. “MasterPass” was launched in India, where the Respondent is based, in association with Citibank under the name “Citi MasterPass”. The Complainant describes this as the launch of “the first global wallet to enter India”. The Complainant provided its corresponding press release in evidence. While this was undated, the Panel was able to identify its date from the Complainant’s website as being July 30, 2015.
The Complainant is the owner of a variety of registered trademarks for the word mark MASTERCARD including Indian registered trademark no. 842950 registered in class 9 with an application date of February 26, 1999. The Complainant is the owner of a variety of registered trademarks for the word mark PAYPASS including Indian registered trademark no. 1236582 registered in class 36 with an application date of September 15, 2003. The Complainant is the owner of a variety of registered trademarks for the word mark MASTERPASS including Indian registered trademark no. 2499438 registered in classes 9, 16, 35, 36, 38, and 42 with an application date of March 20, 2013.
The Respondent is a company incorporated under Indian companies legislation on December 10, 2013. The Respondent is engaged using the marks “MasterPay” and “ChampRecharges” in the business and provision of services with respect to mobile recharge, DTH recharge, utility bill payment and domestic money transfer via retailers. The Respondent provides its services via websites at “www.masterpay.in”, the corresponding domain name for which was registered on August 2, 2014, “www.champrecharges.com”, the corresponding domain name for which was registered on October 15, 2015, “www.masterpay.co.in”, the corresponding domain name for which was registered on February 19, 2016, and the website at the disputed domain name which was registered on November 15, 2017.
The Respondent holds an Indian registered trademark in respect of a device mark featuring the words “ChampRecharge” registered on May 5, 2017. The Respondent also applied for an Indian registered trademark in respect of a device mark featuring the words “Master Pay / SAVE YOUR TIME” on May 5, 2017. This mark has not proceeded to grant as it has been opposed by the Complainant. A screenshot from the administration panel of the Respondent’s online platform dated April 21, 2018 showed total users of its system amounting to over 60,000, the majority of whom were listed as retailers.
The Complainant’s counsel issued a formal cease-and-desist notice to the Respondent dated March 16, 2017 regarding the Respondent’s use of the term “MasterPay”. The Respondent’s counsel in the person of two different firms responded by letters of March 23, 2017 and April 7, 2017. The general approach of the Complainant’s counsel was that the Respondent had adopted the term “MasterPay” not by a mere coincidence but to take advantage of the Complainant’s reputation and goodwill in the MASTERCARD and MASTERPASS trademarks. The general approach of the Respondent’s counsel was that the Complainant does not have rights in a trademark or formative mark in respect of the word “Master”, being devoid of any distinctive character, that the Respondent’s website is for duly authenticated distributors, that there is no possibility for confusion and that the Parties’ services are different being on the one hand a payment gateway and on the other a common access for recharge in respect of the services of varying providers.
The Complainant brought a complaint against the Respondent in respect of the domain name <masterpay.in> in terms of the .IN Domain Name Dispute Resolution Policy (“INDRP”) in respect of which an arbitration award was made on May 14, 20181. The arbitrator rejected the said complaint on the basis that the case was not suited to the INDRP, noting that arbitration under the INDRP is intended for clear cases of cybersquatting and not for resolving significant factual and legal issues which are better addressed through the courts. The Complainant also brought a complaint against the Respondent under the INDRP concerning the domain name <masterpay.co.in> in respect of which an arbitration award was made on June 18, 20182. The arbitrator rejected the said complaint on a similar basis to the reasoning expressed in the previous INDRP case.
The Panel notes that in addition to using the Parties’ submissions and evidence to compile the above factual background, the Panel also made limited factual research into matters of public record by way of (1) the official Indian Trademarks Registry website, to review certain of the Parties’ trademarks and trademark applications; (2) the National Internet eXchange of India’s .IN Registry website to review the INDRP decisions referred to; and (3) the Complainant’s website from which its press release at the Complainant’s Annex 5 was derived in order to determine the date of said release (see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) for a discussion of independent panel research).
5. Parties’ Contentions
The Panel first notes in this section that many of the Parties’ allegations and counter allegations appear to relate to the wider dispute between them and not directly to the disputed domain name. The Panel has therefore endeavored to summarize only the majority of the most relevant contentions to the matter in hand.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that the Respondent provides or intends to provide goods and services associated with financial business, including equipment/platforms used to facilitate transfer of money, which is the Complainant’s core area of business. The Complainant states that the Respondent has adopted a deceptively similar mark to that of the Complainant, adding that the Respondent has no right nor has provided any reason why it would be entitled to adopt a “Master” formative mark for the same services as those of the Complainant, in circumstances where the Respondent had prior knowledge of the Complainant’s reputation in the corresponding field of financial business. The Complainant asserts that it is the prior adopter of “Master” formative marks both in India and globally. The Complainant contends that the use of the disputed domain name is an infringement of the Complainant’s trademark rights and constitutes passing off due to the Respondent’s misrepresentation.
The Complainant asserts that the Respondent has begun to advertise the launch of mobile point of sale systems, debit and credit cards despite the Respondent’s counsel informing the Complainant in correspondence that the Complainant’s apprehensions in this regard are premature. The Complainant states that the consuming public will be confused due to the fact that the Parties provide identical services. The Complainant notes that the Respondent applied for the “MasterPay” trademark in class 36 which covers domestic money transfer.
The Complainant states that bad faith on the part of the Respondent is evident from the number of domain names which it has registered and used for the purpose of offering the same services. The Complainant adds that bad faith is also evident because the Respondent’s brochure misleads in some respects including as to which of its domain names was launched first. The Complainant notes that the Respondent’s use of the Complainant’s MASTERCARD trademark on the Respondent’s brochure also indicates bad faith, as does the adoption of the Complainant’s trademark in a fashion other than would come under the ambit of fair use. The Complainant asserts that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name.
The Complainant submits that the balance of convenience favors the Complainant because the Respondent is duping the consuming public, eroding the distinctive character of and diluting the Complainant’s well-known marks.
The Respondent contends that the Complaint should be denied. The Respondent asserts that it has used the mark “MasterPay” since 2014 with respect to its various services and has acquired distinctiveness in the market through such use. The Respondent asserts that the disputed domain name is completely different from the Complainant’s PAYPASS or MASTERPASS trademark, or <masterpass.com> domain name. The Respondent submits that the appearance of the Parties’ respective logos is different. The Respondent contends that the Complainant has not specified that either its MASTERPASS trademark or domain name are well known and has provided no evidence to this effect. The Respondent notes that several trademark proprietors use the word “Master” as either prefix or suffix to trademarks worldwide, registered in various classes including class 36. The Respondent argues that the Complainant’s promotion and publicity regarding its marks is not relevant to the present dispute as the Complainant’s MASTERPASS mark and the Respondent’s “MasterPay” mark are entirely distinct, dissimilar and used in respect of different services. The Respondent states that its business is restricted to the Indian market and that it does not deal internationally nor take advantage of the Complainant’s rights. The Respondent submits that according to Indian trademark law the entirety of its trademark should be compared with the Complainant’s marks to determine whether any confusion may be caused.
The Respondent contends that it is using the disputed domain name in connection with a bona fide offering of goods and services, noting that “www.masterpay.co.in” is redirected to “www.masterpay.in” through which the Respondent provides services, and that the Respondent likewise provides services through the disputed domain name. The Respondent submits that its mark is completely distinctive from the Complainant’s marks and that these are not similar if the “deceptive similarity” criteria are applied. The Respondent states that the Complainant has misrepresented the services offered by the Respondent and in particular that services regarding prepaid debit cards, which the Respondent had indicated in its brochure, were merely proposed but have not been launched and will not be undertaken. The Respondent seeks to rely on a letter of June 17, 2017 sent by its counsel to the Complainant’s counsel (not produced) and states that it should be at liberty to furnish an undertaking that it will not launch such debit cards. The Respondent states that it will also not be introducing a mobile point of sale system which will accept all cards including “Mastercard” and “Maestro” cards.
The Respondent asserts that its service runs on a business to business platform while the Complainant’s MASTERPASS service runs on a business to consumer platform. The Respondent argues that this demonstrates the main difference between the Parties’ services, noting that the Respondent’s client list consists only of distributors. The Respondent draws a further distinction that the Complainant offers open-ended wallet services while the Respondent offers “close ended” wallet services whereby money can be added only by the authorized distributor or retailer. The Respondent argues that it is effectively providing banking services to distributors and retailers from Gujarat, Delhi, Haryana, Uttar Pradesh, Maharashtra, Rajasthan, Karnataka, Madhya Pradesh, and other states in India, and is not connected to the bank accounts of customers.
The Respondent concludes that if the Complaint is granted the Respondent would incur a significant loss due to its considerable expenditure in software development and marketing. The Respondent points to its expenses sheet (otherwise unvouched) which provides that sales of INR 2,513,691,041 (rounded to the nearest whole number) were generated via <masterpay.in> in 2017-18 while for the same year software development costs of INR 2,296,000 were incurred along with marketing expenditure of INR 2,145,275. The Respondent also notes the INDRP case relative to <masterpay.in> filed by the Complainant, referred to in the factual background section above, which was decided in the Respondent’s favor. At the time of filing the Response, the Complainant’s second INDRP case against the Respondent was still pending. The Respondent asserts that both INDRP cases and the present dispute together demonstrate that the Complainant’s conduct should be treated as Reverse Domain Name Hijacking, further submitting that the Complainant’s cases are designed to harass the Respondent and acquire its well-established business in India.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
A. Identical or Confusingly Similar
To determine the first element under the Policy, UDRP panels typically make a relatively straightforward side-by-side comparison between the textual components of the relied-upon trademark and the disputed domain name, discounting from such comparison the applicable top-level domain suffix, in this case “.pro” (see section 1.7 of the WIPO Overview 3.0). Accordingly, the Panel compares MASTERPASS with “masterpay” and finds that for the purposes of the comparison these are alphanumerically almost identical save for the last two letters of the Complainant’s trademark which are substituted with the single letter “y” in the second level of the disputed domain name. In the Panel’s view, such substitution and/or the fact that “pass” and “pay” are nominally different English words is not sufficient to displace the confusing similarity engendered by the adoption in the disputed domain name of the majority of the letters in the Complainant’s trademark in the correct order.
Considerations put forward by the Parties such as whether the marks are liable to cause confusion with one another in the Parties’ alleged respective marketplaces are not relevant to the assessment under this element of the Policy although they may be relevant to the discussion regarding the second or third elements (see section 1.7 of the WIPO Overview 3.0).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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”.
The essence of the issue between the Parties in the present case is whether the Respondent is a cybersquatter who is targeting the Complainant’s rights in its MASTERCARD, MASTERPASS, and PAYPASS trademarks via the disputed domain name, and who intends to benefit commercially from false association therewith, or whether the Respondent is using the disputed domain to make a bona fide offering of services which can be sufficiently distinguished from the Complainant’s offerings and/or trademarks. At least on the present record, the Respondent appears to be operating a bona fide business which is real rather than merely pretextual and the Complainant has not proved otherwise on the balance of probabilities. In the Panel’s opinion, this is a basis on which the Complaint should fail.
Furthermore, it can be seen from both the detail and volume of the submissions and the associated evidence that the disputed domain name is a relatively minor and, in consequence, comparatively incidental part of a much wider business dispute between the Parties. It is well established that the Policy is not designed to address complex business disputes or broader cases of trademark infringement which involve multiple disputed facts or substantial issues relating to national law (see the discussion in the recent case of Pret A Manger (Europe) Limited v. Prettogo LLC, WIPO Case No. D2018-0782 and the cases cited therein). Accordingly, on the basis that the present case is neither a clear nor a typical case of cybersquatting which the Policy is intended to address, the Complaint should likewise fail. As the panel noted in The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470, “This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting”.
The Panel is in little doubt that the issues raised in the present administrative proceeding would benefit from determination in a court of competent jurisdiction whereby both Parties would typically have access to discovery procedures together with the ability to lead evidence, both oral and documentary, and to test the same by way of cross-examination of witnesses. With that in mind, the Panel adds that the present finding should not be taken as preventing either of the Parties from pursuing the matter in any other forum should they choose to do so. Furthermore, it should be noted that this Decision is not addressed to any such forum that may ultimately be seized of the matter.
In all of the above circumstances, the Panel considers that the following observation of the panel in the recent case of Regency Furniture of Laurel, Inc. v. David Lively, WIPO Case No. D2018-0919 is particularly apposite. “Where judicial court proceedings are necessary, or even preferred, to determine whether a Respondent’s real world business infringes Complainant’s rights, it is not appropriate to resolve the dispute under the UDRP. And a good faith use of a mark in the physical world may be considered bona fide, even where the Complainant has a plausible infringement claim that has not been validated by a judicial ruling.”
The Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy and in these circumstances the Complaint fails.
C. Registered and Used in Bad Faith
Given the failure of the Complainant to satisfy paragraph 4(a)(ii) of the Policy and the Panel’s opinion regarding the unsuitability of the present dispute to resolution by way of the UDRP as outlined above, there is no requirement for the Panel to address the Parties’ submissions on registration and use in bad faith.
D. Reverse Domain Name Hijacking
The Respondent has sought a finding of Reverse Domain Name Hijacking (“RDNH”) in the present case. Although the Complaint has failed, mere lack of success is not itself sufficient for a finding of RDNH (see the discussion in section 4.16 of the WIPO Overview 3.0).
There is at least one aspect of the Complaint which the Panel questions, namely the Complainant’s failure to disclose that the launch date of its “MasterPass” service in India post-dated the registration of the Respondent’s original <masterpay.in> domain name (paragraph 10 of the Complaint and Annex 5 thereto). This does not sit altogether comfortably with the Complainant’s certification of the completeness and accuracy of the information contained in the Complaint in terms of paragraph 3(b)(xiii) of the Rules. Nevertheless, that fact would not have been conclusive of the issues between the Parties and the Panel has reached the view that the Complaint was not lacking in foundation such that it must have been brought in bad faith or constitutes an abuse of the administrative proceeding. It should be noted in particular that the Complainant succeeded on the first element and, as such, has been found to have a bona fide basis for bringing the Complaint (see The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). Furthermore, the Complainant made detailed submissions on the second and third elements of the Policy which underscore a legitimate concern on its part that the Respondent may be targeting it and its various trademarks.
In all of these circumstances, the Panel declines to make a finding of RDNH in the present case.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: June 28, 2018
1 Mastercard International Incorporated v. M/s Champion Software Technologies Limited, .IN Domain Name Dispute Resolution Policy (“INDRP”) Case No. 972.
2 Mastercard International Inc. v. Champion Software Technologies Limited, .IN Domain Name Dispute Resolution Policy (“INDRP”) Case No. 978.