WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISIONMasterCard International Incorporated v. Juan CurtisCase No. D2008-12951. The PartiesComplainant is MasterCard International Incorporated, of the United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, of the United States of America. Respondent is Juan Curtis, of the United States of America. 2. The Domain Name and RegistrarThe disputed domain name <free-mastercard.com> is registered with GoDaddy.com, Inc. 3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2008. On August 26, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On August 26, 2008, GoDaddy.com, Inc. 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”), 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 September 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 26, 2008. The Center appointed Gary J. Nelson as the sole panelist in this matter on October 6, 2008. 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 BackgroundComplainant is the owner of numerous trademark registrations for MASTERCARD, by itself, or for trademarks incorporating the word “mastercard” in the United States of America and throughout the world including United States Trademark Registration Nos. 2,212,783 and 2,077,211. These registrations were issued on December 22, 1998 and July 8, 1997, respectively. Respondent appears to have registered the <free-mastercard.com> domain name on January 15, 2008. Respondent has expressed a willingness to transfer ownership of the <free-mastercard.com> domain name. 5. Parties’ ContentionsA. ComplainantThe Complainant has made the following allegations: Complainant 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, business-to-business and related payment programs. Complainant has been in the payment card business since 1966 and has operated under the MASTERCARD name and mark since at least as early as 1980. Complainant serves financial institutions, consumers and businesses in over 210 countries and territories worldwide. Complainant first applied for the MASTERCARD trademark in the United States of America in April of 1980, and has continuously gone to great lengths to protect the valuable goodwill it has developed in its MASTERCARD trademark. Complainant owns numerous United States trademark registrations for its MASTERCARD mark, and owns over 100 United States trademark registrations for other marks incorporating the term MASTERCARD. Respondent offered to sell the <free-mastercard.com> domain name on eBay in January of 2008. In response, Complainant took action to shut down the eBay auction site for this domain name and sent a Cease and Desist letter to Respondent. Upon receipt of Complainant’s Cease and Desist letter, Respondent indicated a willingness to transfer ownership of the <free-mastercard.com> to Complainant. The Respondent never followed through with his offer to transfer the contested domain name. Complainant claims trademark rights in MASTERCARD by virtue of owning numerous trademark registrations for this term (including marks incorporating this term), and based on the development of common law rights. The <free-mastercard.com> incorporates the entirety of Complainant’s trademark. Respondent is not affiliated or related to Complainant or licensed/authorized to use the MASTERCARD trademark. Respondent is not generally known by the name “mastercard.” Respondent is operating a website associated with the <free-mastercard.com> domain name that is being used to attract Internet Users for commercial gain. Respondent’s website generates revenue for Respondent by offering consumers the opportunity to “click through” to other websites offer goods and services for both Complainant and Complainant’s direct competitors. Respondent acquired and began unauthorized use of the <free-mastercard.com> domain name long after Complainant acquired trademark rights in MASTERCARD. Respondent had actual notice of Complainant’s rights in the MASTERCARD trademark and that Respondent selected a domain name incorporating the MASTERCARD trademark to deliberately profit from confusion with Complainant’s MASTERCARD trademark. B. RespondentRespondent did not reply to Complainant’s contentions. 6. Discussion and FindingsParagraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in the contested domain name; and (iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly SimilarComplainant is the owner of United States Trademark Registration Nos. 2,212,783 and 2,077,211, among others, all for the mark MASTERCARD, or for marks incorporating the term MASTERCARD. Complainant is also the owner of numerous trademark registrations for MASTERCARD in a multitude of countries worldwide. Therefore, Complainant has established rights in the MASTERCARD trademark pursuant to paragraph 4(a)(i) of the Policy. See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption”). Respondent’s <free-mastercard.com> domain name is confusingly similar to Complainant’s MASTERCARD trademark because it incorporates the entirety of Complainant’s trademark and merely adds the generic term “free,” along with a hyphen and the generic top level “.com” domain name. The addition of a generic term to another’s trademark or the addition of a hyphen, or the generic top level domain name will be insufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited. v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word [...] nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY,” thus satisfying the Policy, paragraph 4(a)(i).). Confusing similarity is especially acute in this case where the generic term “free” has been tagged onto Complainant’s MASTERCARD trademark and where that term simply relates to the cost of using a credit card offered by Complainant. See Accor, Société Anonyme à Directiore et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“Confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark.”). Complainant has proven the requirement of the Policy, paragraph 4(a)(i) in regard to the <free-mastercard.com> domain name. B. Rights or Legitimate InterestsThe Panel finds that Respondent has no rights or legitimate interests in the contested domain name. Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that the Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the contested domain names). By not filing a Response, Respondent has not provided any evidence that it is commonly known by the <free-mastercard.com> domain name, or that it is commonly known by any name consisting of, or incorporating the name, “free,” “mastercard,” or “free mastercard.” In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) Respondent is not a licensee of Complainant; (2) Complainant’s rights in its related trademarks precede Respondent’s registration of the contested domain name; and (3) Respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a response, the Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the <free-mastercard.com> domain name predates Complainant’s rights in the MASTERCARD trademark. In regard to the <free-mastercard.com> domain name, Respondent is currently operating a website containing numerous sponsored links. Using another’s well-known trademark to mislead users into accessing one’s website, which in turn provides diverting click-through opportunities to websites operated by competitors to Complainant is not a bona fide offering of goods or services. See Mastercard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050 (finding that the use of the <mastercard-offers.com> domain name, which resolved to a website displaying links to complainant’s services and to complainant’s competitors, did not establish that the respondent had rights or bona fide interests in the contested domain name). Furthermore, it is likely Respondent is receiving click-through fees each time an Internet User accesses the website at <free-mastercard.com>, and clicks on any of the available links. The use of another’s well-known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no right or legitimate interest in the <free-mastercard.com> domain name. Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad FaithThe Panel finds that Respondent registered and is using the contested domain name in bad faith. Respondent is using Complainant’s MASTERCARD trademark to attract Internet users to a website associated with the <free-mastercard.com> domain name. This website features click-through opportunities where Respondent is likely generating revenue. Use of another’s trademark for this type of commercial gain by Respondent is sufficient evidence of bad faith registration and use. See MasterCard International Incorporated v. Keyword Marketing, Inc., WIPO Case No. D2007-1138 (“[u]se of the Complainant’s MASTERCARD mark to generate “click through” revenue in this manner is in bad faith.”); MasterCard International Incorporated v. Hector Cancel, WIPO Case No. D2007-1121 (“panels have consistently found that, under similar circumstances, receiving click-through revenue by directing visitors to other websites constitutes bad faith.”). In addition to other click-through opportunities, the website features click-through opportunities to websites featuring products and services that compete with the products and services sold by Complainant under its MASTERCARD trademark. This is sufficient evidence of bad faith registration and use. See Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313. Further, the Panel finds that Respondent likely registered the <free-mastercard.com> domain name with full knowledge of Complainant’s rights in the MASTERCARD trademark. Respondent’s awareness of Complainant’s MASTERCARD trademark may be inferred because the mark became famous prior to Respondent’s registration of the contested domain name. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well known mark to which he has absolutely no connections or rights indicates that he did not have good faith when registering the domain name”). Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 7. DecisionFor 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, <free-mastercard.com> be transferred to Complainant.
Gary J. Nelson Dated: October 20, 2008
: https://xn--c1ad2agd.xn--p1ai/intlaw/udrp/2008/d2008-1295.html
: |
|
|