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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Visa U.S.A. Inc., Visa International Service Association v. The Best Present Company, Inc.
Case No. D2002-1106
1. The Parties
The Complainant is Visa U.S.A. Inc., Visa International Service Association, 900 Metro Center Boulevard, Foster City, California 94404, of United States of America, represented by Carr & Ferrell, LLP of United States of America.
The Respondent is The Best Present Company, Inc., P.O. Box 6805, Concord, CA 94524, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <visagiftcard.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 3, 2002. On December 4, 2002, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 5, 2002, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 the Respondent of the Complaint, and the proceedings commenced on December 9, 2002. The Response was, therefore, due on December 29, 2002, pursuant to Rule 5(a). On December 11, 2002, Respondent requested that the Center grant Respondent a 30-day extension of the response period. After receiving Complainant’s objection to the extension on December 16, 2002, the Center set the date for the Response as January 8, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 10, 2003.
On January 13, 2003, the Center received a Stipulation for the Entry of Judgment dated January 10, 2003. In that Stipulation, Respondent consented to the transfer of the Domain Name to Complainant.
The Center appointed Andrew Mansfield as the sole Panelist in this matter on January 15, 2003. 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 Visa International Service Association is the owner of the VISA and VISA GIFT CARD trademarks and Complainant Visa U.S.A. Inc. is a licensee of the VISA and VISA GIFT CARD marks in the United States. VISA cards are the world’s most widely used form of "plastic" payment. More than US$1.8 trillion in products and services were purchased in 2000 using VISA payment cards, and Visa’s worldwide market share, at 60%, was greater than that of all other major payment cards combined. There are more than 1 billion VISA-branded credit, debit and prepaid cards in the market today. VISA-branded cards are accepted at more than 24 million locations in over 130 countries.
The VISA trademark is a world-renowned brand that has been used in connection with over a billion payment cards since 1976. In 1997, the VISA trademark was ranked number 14 in the "World’s Top 100 Brands." The World’s Greatest Brands, at xvi, (Nicholas Kochan ed., 1997). Visa has taken steps to protect and enforce its famous VISA mark around the globe and has secured trademark registrations for VISA in over 180 countries.
Complainant and its licensees have used the VISA mark continuously for over 26 years. Complainant first used the VISA mark in commerce on July 26, 1976, and registered the VISA mark with the United States Patent and Trademark Office on August 9, 1977, which registration achieved incontestable status under 15 U.S.C. § 1065 in August 1982.
Complainant is the owner of all rights, title, and interest in over 52 United States registrations of, and 34 pending United States applications for its VISA and VISA-prefixed marks. Copies of several of the certificates of U.S. federal registration of these VISA marks were presented to the Panel.
Complainant owns over 1,000 domain names, many of which contain the prefix VISA. Complainant now offers a prepaid gift card under the VISA brand known as a VISA Gift Card.
5. Parties’ Contentions
Complainant’s and its licensees’ extensive, continuous, nationwide use and promotion of the VISA GIFT CARD trademark since 1998, has established protectable common law trademark rights in the VISA GIFT CARD. Complainant further alleges that it has a United States registered and incontestable mark in VISA.
In February 2001, Complainant became aware that Respondent was offering MasterCard Prepaid Gift Cards for sale at the Domain Name. MasterCard is VISA’s main competitor. Complainant sent a cease and desist letter to Respondent, after which he ceased selling competitor cards and sought to enter into a business relationship with Complainant. Complainant declined to enter into such a business relationship.
In January 2002, Complainant noticed that the Respondent was once again selling MasterCard Prepaid Gift Cards at the Domain Name. Again, after contact from Complainant, Respondent stopped selling the competitor cards. Respondent did not agree to transfer the domain name to Complainant for reasonable out-of-pocket expenses. This proceeding followed.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The parties entered a Stipulation for Entry of Judgment on January 10, 2003. In the Stipulation the Respondent "stipulates to entry of judgment in favor of Complainant on the Complaint and consents to transfer of the <visagiftcard.com> domain name to Complainant." As an earlier Panel found, consistent with the Rules, "in view of the Stipulation signed by the parties, the Panel is required to terminate the Administrative Proceeding" and order the transfer of the Domain Name. Tennis Corporation of America, doing business as "Sportscare" v. Chamberlin Chiropractic Corporation, D2000-0331 (WIPO).
While the Parties requested a ruling consistent with the Stipulation, and Respondent agreed to have the Stipulation serve as its Response, the Respondent did not admit or deny any of the Complainant’s other allegations.
Ordinarily, Complainant must prove three distinct elements in order to prevail on its claim for transfer of the Domain Name. These elements are set forth in Paragraph 4(a) of the Policy:
- The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Name; and
- The Domain Name was registered and is being used in bad faith.
Consistent with the Stipulation, and at the Parties’ request, the Panel finds the following as a matter of the record of this proceeding. The Domain Name is confusingly similar to Complainant’s trademarks. Complainant could prevail on the element of confusion on the United State’s registration of Visa alone, without asserting common law rights to Visa Gift Card. Nevertheless, the common law rights make Complainant’s case for confusion even stronger. Respondent clearly had no rights or legitimate interests in the Domain Name. Respondent did not sell any product related to Complainant. In fact, Respondent sold a competitor product at the Domain Name, clearly trafficking in the confusion created, and evidencing bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and paragraphs 15 and 17 of the Rules, the Panel orders that the Administrative Proceeding be terminated and requires that the domain name be transferred to the Complainant in accordance with the Stipulation.
Dated: January 27, 2003