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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mastercard International Inc. v. Better, Deals; Finestnames.com

Case No. D2009-0702

1. The Parties

Complainant is Mastercard International Inc., New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.

Respondent is Better, Deals; Finestnames.com, Nevada, United States of America.

2. The Domain Name and Registrar

The disputed domain name <prepaidmastercards.com> (the "Domain Name") is registered with UdomainName.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 28, 2009. On May 29, 2009, the Center transmitted by email to UdomainName.com LLC a request for registrar verification in connection with the Domain Name. On June 4, 2009, UdomainName.com LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 8, 2000 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 12 and June 15, 2009. The Center verified that the Complaint together with the amendments to 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 June 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent`s default on July 17, 2009.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 29, 2009. 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, Mastercard, is a leading global payments solutions company providing a broad variety of services in support of its members` credit, deposit access, electronic cash, business-to-business and related payment programs. Complainant, through its predecessors in interest, 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 manages a family of well-known payment card brands including MASTERCARD, MAESTRO and CIRRUS and serves financial institutions, consumers and businesses in over 210 countries and territories. Complainant`s web site at "www.mastercard.com" explains the history of the business.

In April of 1980, Complainant filed an application with the United States Trademark Office to register the trademark MASTERCARD. Since that date, it has registered this mark in practically every nation around the world. Complainant owns trademark registrations for the mark MASTERCARD in practically every jurisdiction in the world that recognizes such rights and grants the ability to register marks, including: Afghanistan, Argentina, Australia, Austria, Bangladesh, Belize, Benelux, Brazil, Canada, Chile, Peoples Republic of China, Colombia, Croatia, CTM (European Community Trademark), Cuba, Czech Republic, Denmark, Ecuador, Egypt, Finland, France, Germany, United Kingdom of Great Britain and Northern Ireland, Greece, Hong Kong SAR of China, Hungary, India, Indonesia, Iran, Ireland, Israel, Italy, Japan, Jordan, Democratic peoples Republic of Korea, Republic of Korea, Kuwait, Kyrgyzstan, Laos, Latvia, Lebanon, Mexico, Mozambique, Netherlands Antilles, New Zealand, Nicaragua, Nigeria, Norway, Oman, Pakistan, Panama, Philippines, Poland, Portugal, Qatar, Romania, Russian Federation, South Africa, Saudi Arabia, Singapore, Slovenia, Slovak Republic, Spain, Sweden, Switzerland, Syria, Taiwan, Province of China, Thailand, Turkey, United Arab Emirates, United States of America, Ukraine, Uruguay, Uzbekistan, Venezuela, Viet Nam, Zaire, Zambia, and Zimbabwe.

In addition to its trademark registrations, Complainant has registered numerous domain names containing the Mastercard name and mark or variants thereof, including <mastercard.com>, <mastercard.net>, <mastercard.org>, <mastercardonline.com>, <mastercardonline.net>, and <mastercardonline.org>. The earliest of these domain names, <mastercard.com>, was registered on July 27, 1994.

According to the WHOIS record, the Domain Name <prepaidmastercards.com> was registered on April 6, 2002.

5. Parties` Contentions

A. Complainant

Complainant maintains that as a result of its extensive efforts in the sale and promotion of its many Mastercard services and products, the MASTERCARD mark has become famous, symbolizing an enormous amount of goodwill. The MASTERCARD mark and variants thereof are exclusively associated with the financial services and related goods and services offered by Complainant. MASTERCARD is one of the most famous and widely recognized trademarks in the world.

The Domain Name was registered in April 2002, subsequent to Complainant`s adoption and registration of the MASTERCARD marks. Complainant has submitted evidence that the Domain Name resolves to a website containing links to pornographic websites. In addition to the explicit content, Respondent placed a banner at the top of the website which reads "To own this domain name send your phone # to […]@hotmail.com."

Complainant contends that the Domain Name is confusingly similar to the MASTERCARD mark because it incorporates the entirety of the mark. The Domain Name adds only the non-distinctive terms "prepaid" and the letter "s" to the MASTERCARD mark. The most dominant feature of the Domain Name is Complainant`s mark. The addition of a non-distinctive, descriptive or generic term like "prepaid" does not change the overall impression of a mark or avoid confusion. Moreover, the addition of the letter "s" does not change the overall impression of a mark or avoid confusion.

In addition, Complainant emphasizes that Respondent is not affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use the MASTERCARD mark. Respondent is not generally known by the Domain Name, and has not acquired any trademark or service mark rights in that name or mark. Instead, Respondent has used the Domain Name to resolve to a pornographic and adult-oriented website. Such use does not constitute a bona fide offering of goods or services. Respondent`s offer to sell the Domain Name also indicates Respondent`s lack of rights or legitimate interests.

Complainant states that it is apparent that Respondent registered and uses the Domain Name in bad faith, in violation of Policy, Paragraph 4(a)(iii). Respondent`s registration and use of Complainant`s MASTERCARD mark to attract Internet users to pornographic websites constitutes bad faith. In addition to linking the Domain Name to pornographic websites, Respondent is offering the Domain Name for sale to the general public and as such is seeking to gain financially from its ownership. The banner on Respondent`s website, which reads "To own this domain name send your phone # to […]@hotmail.com," indicates bad faith use. Respondent acquired and began unauthorized use of the Domain Name long after Complainant`s adoption, use and registration of its MASTERCARD marks. Moreover, at the time the Domain Name was registered, Complainant had made substantial use of its MASTERCARD marks in the United States through the <mastercard.com> domain name, as well as other domain names incorporating the MASTERCARD mark. Therefore, Respondent had constructive and actual notice of Complainant`s rights in its MASTERCARD marks.

Paragraphs 4(b)(iii) and 4(b)(iv) of the Policy list various, non-exclusive actions as evidence of bad faith. These circumstances include the following:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.

Here, Complainant contends that Respondent uses the Domain Name to attract, for commercial gain, Internet users to its pornographic website based on a likelihood of confusion with Complainant`s marks, satisfying of paragraph 4(b)(iv) of the Policy. Respondent also registered and uses the Domain Name for the purpose of selling the registration at a profit to Complainant, a competitor of Complainant or the public at large, which satisfies the requirement of paragraph 4(b)(i) of the Policy.

B. Respondent

Respondent did not reply to Complainant`s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the 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.

Under paragraph 4(a) of the Policy, Complainant must prove each of the following:

(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 respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) are evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which if proved by Respondent may be evidence of Respondent`s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above. In this case, however, Respondent has not submitted a Response.

A. Identical or Confusingly Similar

Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. The Panel finds that Complainant has fully met its burden. The Domain Name is confusingly similar to Complainant`s well-known MASTERCARD mark because it incorporates the entirety of the mark, adding only the non-distinctive terms "prepaid" and the letter "s". See eBay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068 (March 16, 2001) (finding that the domain name <gayebay.com> incorporated the complainant`s mark in its entirety and holding it to be confusingly similar to complainant`s EBAY mark). The most dominant feature of the Domain Name is Complainant`s MASTERCARD mark, while the addition of a descriptive term like "prepaid" does not change the overall impression of a mark or avoid confusion, instead merely reinforcing a particular functionality that might be associated with one of Complainant`s credit cards. See, e.g., MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050 (October 11, 2006) (finding the addition of the generic term "offers" to <mastercard-offers.com> is insufficient to avoid confusion); MasterCard International Incorporated v. Organization Contact/ www.wwwdomains4sale.com, WIPO Case No. D2007-0691 (July 10, 2007) (finding the addition of the generic term "apply" to MASTERCARD does not change the overall impression of the mark and that <mastercard-apply.com> is confusingly similar to the MASTERCARD mark).

Under Policy, paragraph 4(a)(i), the Domain Name is confusingly similar to Complainant`s MASTERCARD trademark.

B. Rights or Legitimate Interests

The Panel observes that Respondent is not affiliated or related to Complainant in any way, nor is Respondent generally known by the Domain Name or authorized by Complainant to use the MASTERCARD mark. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 13, 2000) (respondent had no rights or legitimate interests to use domain name because respondent was not licensed or otherwise permitted to use complainant`s trademark). Instead, Respondent has used the Domain Name to resolve to a pornographic and adult-oriented website. Such use does not constitute a bona fide offering of goods or services. Hoffmann-LaRoche Inc. v. Mark Mill, WIPO Case No. D2007-0721 (July 11, 2007) ("The use of another`s widely-known trademark to attract Internet Users to a commercial pornographic website is not a bona fide offering of goods and services"). Respondent`s offer to sell the Domain Name also indicates Respondent`s lack of rights or legitimate interests. See Skipton Building Society v. Colman, WIPO Case No. D2000-1217 (December 1, 2000) (finding no rights or legitimate interests where respondent offered to sell domain name for "a reasonable price").

Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the Domain Name under Policy, Paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

This is not a close case. The Panel determines that Respondent`s registration and use of Complainant`s MASTERCARD mark to attract Internet users to pornographic websites constitutes bad faith. See, e.g., Dunkin` Donuts Inc. and Dunkin` Donuts USA, Inc. v. Dazzledesigns, WIPO Case No. D2004-0436 (July 17, 2004) ("Respondent`s use of the domain name, incorporating Complainant`s name and registered marks to a pornographic website is per se evidence of bad faith"). In addition to linking the Domain Name to pornographic websites, as noted above, Respondent is offering the Domain Name for sale to the general public and as such is seeking to gain financially from its ownership. See National Football League Properties, Inc., and Chargers Football Company v. One Sex Entertainment Co., WIPO Case No. D2000-0118 (April 17, 2000) (bad faith found where a domain name incorporating complainant`s mark was linked to a pornographic website and offered to the public for sale). Respondent began use of the Domain Name long after Complainant`s adoption, use and registration of its MASTERCARD marks. There is no plausible reason for Respondent`s selection of the Domain Name other than as a deliberate attempt to profit unfairly from confusion with Complainant`s marks. See MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412 (November 28, 2007) ("Respondent necessarily had both constructive and actual knowledge of Complainant`s [MASTERCARD] trademark by reason of the mark`s long preceding registrations and national and international fame"); Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411 (November 28, 2007) ("respondent necessarily had both constructive and actual knowledge of Complainant`s [MASTERCARD] trademark by reason of the mark`s long preceding registrations and national and international fame").

The Panel finds that Respondent has used the Domain Name to attract, for commercial gain, Internet users to its pornographic website based on a likelihood of confusion with Complainant`s marks, satisfying paragraph 4(b)(iv) of the Policy. Respondent also registered and uses the Domain Name for the purpose of selling the registration at a profit to Complainant, a competitor of Complainant or the public at large, which satisfies the requirement of paragraph 4(b)(i) of the Policy.

Respondent`s conduct demonstrates bad faith registration and use of the Domain Name under Policy, Paragraph 4(a)(iii).

7. Decision

For 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 <prepaidmastercards.com> be transferred to Complainant.

Christopher S. Gibson
Sole Panelist

Dated: August 24, 2009