WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mastercard International Incorporated v. Suresh Sellathurai

Case No. D2017-1251

1. The Parties

The Complainant is Mastercard International Incorporated of Purchase, New York, United States of America (“United States”), represented by Partridge Partners PC, United States.

The Respondent is Suresh Sellathurai of Pickering, Canada.

2. The Domain Names and Registrar

The disputed domain names <cibcmastercard.net>, <costcomastercard.com>, <costcomastercard.net>, <hbcmastercard.net>, <mastercardcanada.net>, <rogersmastercard.net>, <searsmastercard.net>, <studentmastercard.net>, <tangerinemastercard.com>, <tangerinemastercard.info>, <tangerinemastercard.net>, <tangerinemastercard.org>, <vanillamastercard.net> and <walmartmastercard.net> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2017. On July 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 6, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2017.

The Center appointed Nicholas Smith as the sole panelist in this matter on August 4, 2017. 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 payments solutions company based in the United States that provides, amongst other services, credit cards. The Complainant, through its predecessors in interest, has been in the payment card business since 1966 and has operated under the Mastercard brand since 1980. The Complainant manages a number of payment card brands, including Mastercard, in more than 210 countries and territories.

The Complainant has held a trade mark registration for the word mark MASTERCARD (the “MASTERCARD Mark”) since at least 1982, in the United States (registration number 11861177, registered for “Financial Services – Namely Providing Bank Card Services”). It has registered the MASTERCARD Mark in numerous countries around the world including Canada, the location of the Respondent, where the design mark MASTERCARD was registered on March 5, 1982, with registration number TMA267139.

The Domain Name <mastercardcanada.net> was registered on February 10, 2014. The Domain Name <vanillamastercard.net> was registered on April 15, 2014. The Domain Name <hbcmastercard.net> was registered on April 15, 2014. The Domain Name <walmartmastercard.net> was registered on September 16, 2014. The Domain Name <costcomastercard.net> was registered on September 19, 2014. The Domain Name <searsmastercard.net> was registered on September 21, 2014. The Domain Name <studentmastercard.net> was registered on November 15, 2014. The Domain Name <rogersmastercard.net> was registered on March 17, 2015. The Domain Names <tangerinemastercard.com>, <tangerinemastercard.org>, <tangerinemastercard.net> and <tangerinemastercard.info> were registered on October 6, 2015. The Domain Name <cibcmastercard.net> was registered on December 4, 2015. The Domain Name <costcomastercard.com> was registered on March 6, 2017.

The Domain Name <mastercardcanada.net> redirects to a website that contains malware. The Domain Names <rogersmastercard.net>, <studentmastercard.net> and <vanillamastercard.net> redirect to a parking page. The remaining ten Domain Names redirect to websites (“Respondent’s Websites”) that advertise credit card products, including credit cards branded as MasterCard and links to competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Names are identical or confusingly similar to the Complainant’s MASTERCARD Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

The Complainant is the owner of the MASTERCARD Mark having registered the MASTERCARD Mark in the United States since 1982 and since then in practically every jurisdiction in the world that recognises trade mark rights.

Each of the Domain Names other than <studentmastercard.com> and <mastercardcanada.net> incorporates the whole of the Complainant’s MASTERCARD Mark and the mark of a third party, which does not decrease the likelihood of confusion with the Complainant’s Marks, see MasterCard International Incorporated v. Indy Web Productions, WIPO Case No. D2008-0198. The <studentmastercard.com> and <mastercardcanada.net> Domain Names incorporate the whole of the Complainant’s MASTERCARD Mark and the non-distinctive terms “student” and “Canada”. These additional terms cannot be sufficient to distinguish the Domain Names from the MASTERCARD Mark.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as any of the Domain Names, nor does the Respondent have any authorization or license from the Complainant to use the MASTERCARD Mark.

The Domain Names were registered and are being used in bad faith. The Domain Names were acquired after the Complainant’s MASTERCARD Mark had been adopted, registered and used. Each of the Domain Names is either being passively held or resolves to a website that displays the MASTERCARD Mark and likely generates revenue for the Respondent when confused consumers “click through” to sites offering the goods and services of the Complainant’s direct competitors and other third parties. There is no plausible reason for Respondent’s selection of these Domain Names other than as a deliberate attempt to profit unfairly from confusion with the Complainant’s Marks. This conduct amounts to registration and use of the Domain Names in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the MASTERCARD Mark, having registrations for MASTERCARD as a trade mark in the United States, Canada (the location of the Respondent) and numerous other countries.

The Domain Names incorporate the MASTERCARD Mark in its entirety with the addition of a third party trade mark, generic term or geographical term. The addition of a third party mark does not decrease the confusing similarity with a complainant’s mark, see. MasterCard International Incorporated v. Indy Web Productions, WIPO Case No. D2008-0198. The addition of a generic term to a complainant’s mark is insufficient to dispel the impression of confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056. The addition of a geographical term to a trade mark is not sufficient to provide any distinctiveness to a domain name, see Carlsberg A/S v Personal / decohouse, decohouse, WIPO Case No. D2011-0972; BP p.l.c.v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 and The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493.

The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s MASTERCARD Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a 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 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.” (Policy, paragraph 4(c))”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the MASTERCARD Mark or a mark similar to the MASTERCARD Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar names. There is no evidence that the Respondent has used or made demonstrable preparations to use any of the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Currently four of the Domain Names (<mastercardcanada.net>, <rogersmastercard.net>, <studentmastercard.net> and <vanillamastercard.net>) are inactive or contain malware while the remaining ten Domain Names resolve to websites that, without the permission of the Complainant:

(a) make reference to the Complainant’s MASTERCARD Mark, potentially indicating that the Respondent and its websites are in some way connected with the Complainant or offer its products; and

(b) contain advertising and links to credit card products that appear on the face of it to compete with the Complainant’s credit card products.

Such use is not a bona fide offering of goods or services. The use of a domain name that contains the Complainant’s MASTERCARD Mark to advertise credit card products in competition with the Complainant does not amount to a bona fide offering of goods or services.

The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registrations to the Complainant who is the owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or

(ii) The Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).

The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the MASTERCARD Mark at the time each of the Domain Names was registered. The Respondent’s Websites make frequent reference to the MASTERCARD Mark and advertise credit card products in competition with the Complainant. Furthermore it is improbable that a person would register fourteen domain names in a 3-year-period that all incorporate the MASTERCARD Mark without having some awareness of the Complainant’s mark rights. In the circumstances, the registration of the Domain Names in awareness of the MASTERCARD Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.

The Respondent may also have registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name. The registration of fourteen Domain Names incorporating the MASTERCARD Mark is sufficient to show a pattern of conduct in registering domain names in order to prevent the Complainant from reflecting its mark in a corresponding domain name.

The Respondent is using most of the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent has used ten of the fourteen Domain Names to operate websites that likely generate revenue for the Respondent when visitors “click through” to sites offering products from the Complainant’s competitors. The Respondent therefore is likely to receive revenue from Internet users who happen to come across the Respondent’s Websites by means of confusion with the MASTERCARD Mark and then purchase credit card products from the Complainant’s competitors.

The fact that certain Domain Names have not yet been linked to an active website does not prevent a finding of bad faith being made in respect of them. In circumstances where the Respondent has registered fourteen Domain Names incorporating the MASTERCARD Mark and redirected ten of them to various websites advertising credit card products of the Complainant’s competitors the Panel is prepared to infer that the Respondent had the same intention when registering and holding the four Domain Names that have not yet resolved to active websites. In any event, the passive holding of a domain name does not prevent a finding of bad faith, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Finally, use of a domain name for malware distribution constitutes bad faith. See section 3.4 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Panel finds that the Respondent has registered and is using the each of the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <cibcmastercard.net>, <costcomastercard.com>, <costcomastercard.net>, <hbcmastercard.net>, <mastercardcanada.net>, <rogersmastercard.net>, <searsmastercard.net>, <studentmastercard.net>, <tangerinemastercard.com>, <tangerinemastercard.info>, <tangerinemastercard.net>, <tangerinemastercard.org>, <vanillamastercard.net> and <walmartmastercard.net> be transferred to the Complainant.¹

Nicholas Smith
Sole Panelist
Date: August 8, 2017

¹ The Panel notes that a number of the Domain Names incorporate the trademarks of third parties. The Panel adopts the reasoning in WhatApp Inc. v. Private Whois whatappandroid.com, Private Whois whatsappipad.com and Private Whois whatsappiphone.com, WIPO Case No. D2012-0674 and sees no reason not to make the requested order of transfer.