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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MasterCard International Incorporated v. Ultimate Projects Ltd

Case No. D2007-1034

 

1. The Parties

The Complainant is MasterCard International Incorporated, Purchase, New York, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.

The Respondent is Ultimate Projects Ltd, South Croydon, Surrey, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <goldmastercards.com>, <titaniummastercard.com>, <titaniummastercards.com> are each registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2007. The hardcopies were received by the Center on July 16, 2007.

On July 18, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain names at issue.

On July 19, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Registrar had received a copy of the Complaint, that Fabulous.com is the current registrar of the domain names in dispute, confirming that the Respondent is listed as the current registrant of the domain names in dispute 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 the Respondent of the Complaint, and the proceedings commenced on July 26, 2007. Subsequently, the Center noticed that the Notification of Complaint was inadvertently sent by email to the Respondent at [email address]@gmai1.com (number ‘1’) rather than [email address]@gmail.com (letter ‘l’). Accordingly, the Center forwarded the Notification of Complaint to the correct email address for the Respondent. The Center also noted that the hard copy delivery of the Notification of Complaint was received by the Respondent. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2007.

The Center appointed James Bridgeman as the sole panelist in this matter on August 23, 2007. 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 the owner of numerous trademark registrations for its MASTERCARD and GOLD MASTERCARD marks both as word marks and device marks in jurisdictions throughout the world. The Complainant has furnished a list of 82 countries where its trademark has been registered in addition to its Community trademark.

The registrations are too numerous to list but include registrations in both the United States of America, the jurisdiction where the Complainant is established and the United Kingdom of Great Britain and Northern Ireland where the Respondent is established. Examples being:

United States trademark registration for the word mark MASTERCARD, registration number 2,212,783 registered on December 22, 1998, in respect of goods including “magnetic encoded cards, magnetic encoded card readers, telecommunications equipment”; and

United Kingdom trademark registration for the word mark MASTERCARD, registration number 1,275, 338 registered on September 25, 1992, in class 32 for services including “banking and credit services, charge card, debit card and credit card services, account debiting services, automatic cash dispensing services, administration of issuance, processing, verification and redemption of cheques, travellers cheques, vouchers, electronic funds transfer services electronic payment services”; all included in class 36.

The Complainant is also the owner of numerous Internet domain names incorporating the MASTERCARD mark or variants thereof including <mastercard.com>, <mastercard.net>, <mastercard.org>, <mastercardonline.com>, <mastercardonline.net>, <mastercardonline.org>, <goldmastercard.com> and <mastercardgold.com>.

According to the Whois record, the domain name <goldmastercards.com> was registered on May 16, 2003. The <titaniummastercard.com> and <titaniummastercards.com> domain names were registered on May 17, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the domain names in dispute, <goldmastercards.com>, <titaniummastercard.com>, <titaniummastercards.com> be transferred to the Complainant.

In the Complaint, the Complainant states that it is engaged in the field of payment services and is a provider of a broad variety services in support of its member financial institutions in the field of credit, deposit access, electronic cash, business-to-business and related payment programs. Through its predecessors in interest the Complainant has been engaged in the business of payment cards since 1966 and has operated under the name and mark MASTERCARD since at least as early as 1980.

In the Complaint, the Complainant states that it manages a family of famous and widely accepted payment card brands including MASTERCARD, MAESTRO and CIRRUS. The Complainant serves financial institutions, consumers and businesses in over 210 countries and territories throughout the world.

In addition, the Complainant submits that it has engaged in an award winning advertising campaign that has run in 105 countries and 48 languages. The Complainant has submitted print outs from its websites at “www.mastercard.com/us” and “www.mastercard.com/uk” explaining the history of the Complainant’s business and the services offered through its MASTERCARD and GOLD MASTERCARD brand.

In April 1980, the Complainant filed an application with the United States Trademark Office to register the trademark MASTERCARD. Since then the Complainant has gone to great lengths to protect its valuable goodwill in its name and mark MASTERCARD and has registered its mark in practically every nation around the world. The Complainant’s MASTERCARD mark and variants thereof are exclusively associated with high quality financial services and related goods and services offered by the Complainant. MASTERCARD is currently one of the most famous and widely recognized trademarks in the world.

The Complainant refers to its above listed internet domain name registrations and the websites established at those addresses and states that the earliest was registered on July 27, 1994, long prior to the registration of the domain names at issue.

The Complainant submits that the Complainant’s MASTERCARD mark has become famous, symbolizing an enormous amount of goodwill, as a result of the care and skill exercised by the Complainant, in the sale and promotion of the many goods and services it provides using the MASTERCARD mark, the supervision and control exercised by the Complainant over the nature and quality of those goods and services and the extensive advertising, sale and public acceptance thereof.

The Complainant submits that the Respondent uses the domain names in dispute in connection with searchable portal websites displaying commercial links to the Complainant and its competitors. Copy screenshots of the websites located at the domain names in dispute have been furnished in an annex to the Complaint.

The Complainant submits that the domain names in dispute are each confusingly similar to the Complainant’s MASTERCARD mark. They each incorporate the MASTERCARD mark in its entirety and merely add descriptive and generic terms “titanium” or “gold” to the Complainant’s famous MASTERCARD mark. 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). CMGI, Inc. v. Reyes, WIPO Case No. D2000-0572 (finding that the domain name <cmgiasia.com> was confusingly similar to the complainants CMGI mark).

The Complainant submits that both words “titanium” and “gold” are terms associated with credit cards generally and the Complainant’s business specifically. The addition of those terms to the famous MASTERCARD mark, rather than unrelated terms, increases the likelihood of confusion. See Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant WIPO Case No. D2004-0896 where the Panel stated: “[I]f the addition is a term associated with the business of the Complainant, […] , it can even add to the similarity between the domain name and the trademark in question”.

The Complainant argues that the <goldmastercards.com> domain name is practically identical to the GOLD MASTERCARD mark with only the letter “s” added to form the plural. See Mimran Group, Inc. v. LaPorte Holdings, WIPO Case No. D2005-1016 (finding that infringing domain name <alfredsunbridals.com> was confusingly similar to the complainant’s official website “www.alfredsungbridal.com”). Even if the Complainant did not have a registration of the GOLD MASTERCARD trademark, the addition of the word “gold” to the Complainant’s MASTERCARD mark by the Respondent would be insufficient to distinguish the domain name from the mark.

The Complainant submits that the Respondent is not affiliated with or related to the Complainant in any way, nor is the Respondent licensed by the Complainant or otherwise authorised to use the GOLD MASTERCARD or the MASTERCARD marks. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000- 0003 (respondent had no rights or legitimate interests to use the domain name because the respondent was not licensed or otherwise permitted to use the complainant’s mark). AltaVista Company v. Jean-Daniel Gamache, NAF Case No. FA 95249 (the respondent was not licensed to use the complainant’s mark and therefore had no rights or legitimate interests in the domain name).

The Respondent is not generally known by the domain names in dispute, nor has the Respondent acquired any trademark or service mark rights in the name or mark. See Gallup Inc. v. Amish Country Store, NAF Case No. FA 96209 (the respondent does not have any rights in the domain name incorporating another’s mark when the respondent is not known by that mark). Instead the Respondent is using the domain names in dispute in connection with websites which contain links to other websites offering the services of the Complainant’s competitors.

The Respondent is not offering goods or services but merely using the domain names at issue to list links to different websites which offer information about the Complainant and its direct competitors. It is therefore inappropriate for the Respondent to use the domain names in such a manner. See Six Continents Hotels, Inc. v. Hotel Partners of Richmond, WIPO Case No D2003-0222 (finding that the use of the complainant’s HOLIDAY INN mark in the domain name <holidayinnhotelreservations.com> was avoidable and not a necessary use of a mark to identify the respondent’s services.)

Using the Complainant’s MASTERCARD and GOLD MASTERCARD marks to bring Internet users to a website that contains links to websites offering both the Complainant’s products and the products of the Complainant’s competitors does not constitute a bona fide offering of goods or services. See Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D 2000-1774 (finding that the “use of a trademark owner’s mark to promote and sell competitive goods does not constitute a legitimate use”); Whirlpool Properties, Inc. & Whirlpool Corporation v. Ace Appliance Parts and Service, NAF Case No. FA 109386 (finding that the use of the complainant’s WHIRLPOOL and KITCHENAID marks to sell parts and service for competing products was not a bona fide offering of goods or services); Kosmea Pty Limited v. Carmel Krpan, WIPO Case No. D2000-0948 (“Respondent cannot use the Complainant’s mark in relation to products not those of the Complainant”).

The Complainant submits that the Respondent has registered and used the domain names in dispute to unlawfully divert and siphon off visitors seeking the Complainant’s MASTERCARD websites and its MASTERCARD and GOLD MASTERCARD goods and services. The Respondent’s use of the domain names in dispute for such purposes is not a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the domain names. See National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 (holding that the defendant’s use of common misspellings of registered domain names to redirect Internet users to a different site was not legitimate use).

The Complainant submits that pursuant to paragraph 4(b)(iv) of the Policy, bad faith can be shown by circumstances indicating that the Respondent deliberately used the domain names for commercial gain to divert Internet users based on a likelihood of confusion with the Complainant’s mark.

In casu, the Complainant submits, it is apparent that the domain names in dispute are being deliberately used, for commercial gain to attract Internet users to the Respondent’s websites based on a likelihood of confusion with the Complainant’s MASTERCARD and GOLD MASTERCARD marks.

The Complainant submits that the Respondent acquired and began unauthorized use of the domain names in dispute long after the Complainant had first adopted, used and registered its MASTERCARD and GOLD MASTERCARD marks. In addition, at the time the domain names in dispute were registered, the Complainant had already made substantial and widespread use of its MASTERCARD and GOLD MASTERCARD marks and its <mastercard.com> and <goldmastercard.com> domain names for many years.

The widespread use and fame of the Complainant’s marks in the credit card industry, the inherent distinctiveness of the marks, and the Complainants prior domain name registrations and trademark registrations, lead to the necessary conclusion that the Respondent registered and is using the domain names in dispute with actual knowledge of the Complainant’s rights. See Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551 ( holding “active or constructive knowledge of complainants rights in trademarks is a factor supporting bad faith”). There is no plausible reason for the Respondent’s selection of the domain names in dispute other than as a deliberate attempt to profit unfairly from confusion with the Complainants MASTERCARD and GOLD MASTERCARD marks.

The domain names in dispute direct Internet users to the Complainants goods and services as well as the goods and services of the Complainant’s direct customers. Such use is clearly bad faith use as described in paragraph 4(b)(iv) of the Policy. See Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (finding bad faith in the respondent’s use of the complainant’s mark to sell competitive products and those of its competitors); Mariah Boats, Inc. v. Shoreline Marina LLC, NAF Case No. FA 94392 (finding that the respondent’s use of the complainant’s mark to sell competitive products was bad faith); Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 (finding that the respondent’s use of the NOKIA mark in its domain name to sell products with both the complainant’s and competing phones showed that the respondent had intentionally used the goodwill of the complainant’s trademark to create traffic to his website).

The Complainant further submits that it is likely that the domain names in dispute generate revenue for the Respondent when confused customers “click through” to sites offering goods and services of both the Complainant and its direct competitors. Use of the Complainant’s marks to generate “click through” revenue in this manner is in bad faith. See DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070 (finding that the respondent’s use of the domain name was an attempt to attract for commercial gain Internet users to the respondent’s site by creating a likelihood of confusion with the Complainant’s mark and amounted to bad faith registration and use).

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of the trademarks and service marks MASTERCARD and GOLD MASTERCARD in more than 82 jurisdictions throughout the world both through its extensive portfolio of trademark registrations and at common law through the goodwill that it has established by the extensive use and promotion of the MASTERCARD and GOLD MASTERCARD marks.

This Panel accepts the Complainant’s submissions that the domain names in dispute are each confusingly similar to the Complainants MASTERCARD mark. They each incorporate the Complainant’s MASTERCARD mark in its entirety. The mere addition of the laudatory and descriptive terms “titanium” or “gold” to the mark does not distinguish the domain name in any way from the Complainant’s mark. Furthermore as the Complainant has submitted, the names of rare and precious metals such as “titanium” and “gold” are terms generally associated with credit cards and the addition of such terms that are common to the trade serves to increase the likelihood of confusion. Furthermore the domain name <goldmastercards.com> in particular is practically identical to the Complainant’s GOLD MASTERCARD mark with only the letter “s” added to form the plural.

In the circumstances this Panel is satisfied that each of the three domain names in dispute are confusingly similar to the Complainant’s MASTERCARD mark and in particular, the domain name <goldmastercards.com> is confusingly similar to the Complainant’s GOLD MASTERCARD mark.

It follows that the Complainant has satisfied the first element of the test in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant has stated that the Respondent is not affiliated with or related to the Complainant in any way, nor is the Respondent licensed by the Complainant or otherwise authorised to use the MASTERCARD or GOLD MASTERCARD marks. The Complainant has submitted that the Respondent is not generally known by the domain names in dispute and this has not been denied by the Respondent.

The Complainant has submitted the Respondent has not acquired any trademark or service mark rights in the name or mark. It is clear from the evidence submitted in the Complaint that the Respondent has not acquired any such rights through its use of the domain names as the addresses for its websites. It is not offering goods or services on the websites, but merely using the websites to list links to other websites that offer information about the Complainant and its competitors. This Panel accepts the Complainant’s submission that such use does not constitute a bona fide offering of goods or services.

This Panel also accepts that the Respondent has registered and is using the domain names at issue to unlawfully divert Internet users that may be seeking to access the Complainant’s website and such use cannot be regarded as a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain names

The Complainant has therefore put forward a credible prima facie case that the Respondent has no rights or legitimate interests in the domain names in dispute. In such circumstances, the onus shifts to the Respondent to establish that it has such rights or legitimate interests.

As the Complainant has made out a prima facie case and the Respondent has not filed any Response, the Complainant is entitled to succeed on the second element of the test in paragraph 4(a) of the Policy also.

C. Registered and Used in Bad Faith

This Panel accepts the Complainant’s submissions that the widespread use and fame of the Complainant’s marks in the credit card industry, the inherent distinctiveness of the marks, and the Complainant’s prior domain name registrations and trademark registrations, lead to the necessary conclusion that the Respondent registered and is using the domain names in dispute with actual knowledge of the Complainant’s rights.

On the evidence this Panel is satisfied on the balance of probabilities that the Respondent registered the domain names in dispute to take predatory advantage of the Complainant’s goodwill in the MASTERCARD mark.

The Respondent’s website contains links that are expressly described as “Sponsored Listings” on the website. It can be inferred therefore that the Respondent is receiving sponsorship payments or “click through” income from the website as the Complainant has alleged.

In the circumstances, in the absence of a Response or explanation from the Respondent, this Panel is satisfied on the balance of probabilities that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites and to other on-line locations being those other websites to which the links are provided, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Complainant has therefore also succeeded in establishing the third element of the test in paragraph 4(a) of the Policy and is entitled to succeed in its application.

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 names, <goldmastercards.com>, <titaniummastercard.com>, <titaniummastercards.com> be transferred to the Complainant.


James Bridgeman
Sole Panelist

Dated: September 6, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1034.html

 

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