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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MasterCard International Incorporated v. North Tustin Dental Associates

Case No. D2007-1412

1. The Parties

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

Respondent is North Tustin Dental Associates, California, United States of America.

2. The Domain Name and Registrar

The disputed domain names <mastercardservice.info> <mastercardservice.mobi> and <mastercardservices.mobi> (Domain Names) are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2007. On September 26, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On September 26, 2007, Go Daddy Software 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 October 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 29, 2007.

The Center appointed John R. Keys, Jr. as the sole panelist in this matter on November 14, 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

Complainant is an international payments solutions company providing a range of services in support of its members’ credit, deposit access, electronic cash, business-to-business and related payment programs.

Complainant owns 12 registrations for the mark MASTERCARD on the Principal Register of the United States Patent and Trademark Office (USPTO), including the following:

Reg. No. Reg. Date

1,257,853 November 15, 1983

1,186,117 January 12, 1982

1,292,519 August 28, 1984

1,365,901 October 15, 1985

1,398,272 June 24, 1986

1,604,606 July 3, 1990

1,814,279 December 28, 1993

1,738,276 December 8, 1992

1,890,786 April 25, 1995

2,168,736 June 30, 1998

2,077,221 July 8, 1997

2,212,783 December 22, 1998

Complainant owns USPTO registrations for numerous other trade and service marks containing the words “Master Card” in combination with other words, including, for example, the following:

MASTERCARD PREPAID SERVICES, No. 3,108,620, June 27, 2006;

MASTERCARD SITE DATA PROTECTION SERVICE, No. 2,890,052, September 28, 2004;

MASTERCARD GLOBAL SERVICE, No. 2,007,156; October 8, 1996;

In addition, Complainant has registered the MASTERCARD mark in numerous countries around the world and the European Community.

Complainant has registered various domain names using the words “MasterCard”, including <mastercard.com>, which it registered on July 27, 1994.

Respondent registered the Domain Names on April 28, 2007.

Each of the Domain Names resolves to an inactive website at “www.10outlet.com”.

5. Parties’ Contentions

A. Complainant

Complainant contends that it, and its predecessors in interest, operated under the name and mark MASTERCARD since at least as early as 1980. The company manages a family of famous and widely accepted payment card brands, including MASTERCARD. It serves financial institutions, businesses, and consumers in over 210 countries and territories. Its well known “Priceless” advertising campaigns run in 105 countries and 48 languages.

Complainant has obtained the trademark registrations noted above and, it contends, it has gone to great lengths to protect the valuable goodwill in its name and mark. As a result of its efforts, Complainant contends that its MASTERCARD mark has become famous and is in fact one of the most famous and widely recognized trademarks in the world.

Complainant contends that Respondent’s Domain Names are confusingly similar to its MASTERCARD trademark. Each of the Domain Names incorporates Complainant’s MASTERCARD mark in its entirety, adding in each case only the non-distinctive word “service” or “services.” These generic or descriptive terms do not change the overall impression of the mark or avoid confusion with Complainant’s trademark.

Complainant contends that Respondent has no right or legitimate interests in the Domain Names. Respondent is not affiliated with Complainant or authorized by Complainant to use Complainant’s trademarks in any way. Respondent is not generally known by any of the Domain Names.

Respondent has not developed websites at any of the Domain Names and is thus not using the Domain Names in connection with a bona fide offering of goods or services.

Complainant further contends that Respondent registered and is using the Domain Names in bad faith. Respondent registered the Domain Names long after Complainant’s adoption, use, and registration of its MASTERCARD trademark. Respondent had constructive notice of Complainant’s rights in its mark. Moreover, the widespread use and fame of Complainant’s trademark and the inherent distinctiveness of the mark lead to the conclusion that Respondent also had actual knowledge of Complainant’s rights in the MASTERCARD mark. There is no plausible reason for Respondent’s selection of the Domain Names unless Respondent was deliberately attempting to profit from confusion with Complainant’s mark.

Complainant contends that Respondent is not using the Domain Names, which should be construed as evidence of bad faith.

Finally, Complainant alleges that Respondent registered numerous other domain names incorporating the trademarks of third parties, all of which resolve to the same inactive website, “www.10outlet.com”. Such registrations show a pattern of bad faith and constitute evidence of bad faith in this case.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Because Respondent did not respond to the Complaint, the Panel first considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form to the e-mail addresses required under paragraph 2(a)(ii) of the Rules and in hard copy by courier service to the address provided in Respondent’s registration information. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.

Where a respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.

Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:

(i) Respondent’s Domain Name 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) Respondent’s Domain Name has been registered and is being used in bad faith.

The Panel considers each element in order.

A. Identical or Confusingly Similar

The Panel finds that Complainant possesses established legal rights in its MASTERCARD trademark by reason of its long and continuing use of the mark in commerce and Complainant’s multiple registrations of the mark in the United States of America and in numerous jurisdictions around the world. The Panel further finds that Complaint’s mark is a famous trademark.

Respondent necessarily had both constructive and actual knowledge of Complainant’s trademark by reason of the mark’s long preceding registrations and national and international fame. See 15 U.S.C. § 1072; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (“As a matter of United States law, Respondent had prior constructive or actual knowledge of Complainant’s trademark” because the mark was registered); Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090 (registration of a mark puts a respondent on constructive notice). Respondent nevertheless chose to incorporate Complainant’s famous mark in its entirety into each of the Domain Names. This in itself supports an inference of confusing similarity between the mark and the Domain Names. A domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. See, e.g., America Online, Inc. v. aolgirlsgonewild.com, NAF Case No. FA0207000117319 (September 19, 2002) (“aolgirlsgonewild” incorporated complainant’s “entire mark” and implied “an affiliation that simply does not exist”); eBay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068. “[T]he intentional registration of a domain name knowing that the second level domain is another company’s valuable trademark weighs in favor of likelihood of confusion.” Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1059 (9^th Cir. 1999).

Respondent’s Domain Names add the words “service” or “services” to Complainant’s trademark. “Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087, quoting, 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). See, The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004, citing Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000); Yahoo!, Inc. v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195; America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (“aolcasino” found confusingly similar to AOL mark); Revlon Consumer Products Corporation v. Laurent D. Morel, WIPO Case No. D2002-0215 (the “neutral” addition of “girls” in the <revlongirls.com> Domain Name was a difference insufficient to avoid confusion with registered mark); Sony Corporation v. Park Kwangsoo, WIPO Case No. D2001-0167 (<newsony.com> confusingly similar to Complainant’s SONY mark).

The words “service” and “services” are generic or descriptive here. The words are not sufficient to distinguish the Domain Names from Complainant’s dominant trademark and thus do nothing to negate an inference of confusing similarity between them. MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050 (addition of generic “offers” to MASTERCARD insufficient to avoid confusion); MasterCard International Incorporated v. Organization Contact / www.wwwdomains4sale.com, WIPO Case No. D2007-0691 (addition of non-distinctive, descriptive or generic term “apply” does not change the overall impression of a mark).

The Panel concludes that each of the Domain Names is confusingly similar to Complainant’s trademark and that Complainant has established the first element of its case.

B. Rights or Legitimate Interests

Complainant must show, and has established a prima facie case, that Respondent has no rights or legitimate interests in the Domain Names. Complainant has not licensed or authorized Respondent to use its trademark in the Domain Names. See Telstra Corporation, Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Respondent is not generally known by the Domain Names. See Gallup Inc. v. Amish Country Store, NAF Case No. FA 96209 (2001).

Complainant has shown that Respondent has not developed websites at the Domain Names and is therefore not using the Domain Names in connection with any bona fide offering of goods or services. Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483.

Respondent, in default, has not come forward with evidence to establish any rights or interests it may have in order to rebut Complainant’s prima facie case. See MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050; MasterCard International Incorporated v. Organization Contact / www.wwwdomains4sale.com, WIPO Case No. D2007-0691. Under the circumstances, the Panel finds that Respondent does not have rights or legitimate interests in any of the Domain Names and concludes that Complainant has established the second element of its case.

C. Registered and Used in Bad Faith

Complainant must show that Respondent both registered and is using the Domain Names in bad faith. Complainant relies here principally on paragraph 4(b)(iv) of the Policy which provides that bad faith may be shown to exist where a respondent intentionally uses the domain names for commercial gain to attract Internet users to its website by exploiting the likelihood of confusion with the complainant’s trademark.

As discussed above, the evidence is sufficient to attribute to Respondent both constructive and actual knowledge of Complainant’s famous MASTERCARD trademark at the time Respondent registered the Domain Names. See 15 U.S.C. § 1072; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (“As a matter of United States law, Respondent had prior constructive or actual knowledge of Complainant’s trademark” because the mark was registered); Waterman, S.A.S. v. Brian Art, WIPO Case No. D2005-0340 (finding bad faith registration and noting that complainant’s mark was well-known); Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090 (registration of a mark puts a respondent on constructive notice); Microsoft Corporation v. Party Night, Inc. d/b/a/ Peter Carrington, WIPO Case No. D2003-0501 (“It is not reasonable to expect the Respondent to register the disputed Domain Names if the Respondent had no knowledge of the Complainant’s trademark and services in connection thereto.”). The Panel infers from such actual and constructive knowledge, intent on Respondent’s part to exploit the likelihood of confusion between the Domain Names and Complainant’s trademark. Inasmuch as there is no other plausible reason for Respondent to register these Domain Names, and Respondent does not come forward to offer one, the Panel infers that Respondent intended to use the Domain Names for some commercial gain and that there is thus sufficient evidence of bad faith registration.

Inasmuch as Respondent does not presently appear to be using the Domain Names to generate commercial gain for itself, Complainant does not make a case of bad faith use under paragraph 4(b)(iv) of the Policy. However, the Policy does not limit evidence of bad faith to the circumstances described in paragraph 4(b).

The fact that Respondent has not used the disputed Domain Names can be construed as evidence of bad faith. The passive holding of a domain name has been held to evidence bad faith use of the names where there are other factors present. Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090. The Panel finds that such factors exist here.

The principal factor cited in Telstra and other cases is the strength and fame of the trademark involved. Prior WIPO panels have held that actual or constructive knowledge of complainant’s rights in trademarks is a factor supporting bad faith. Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551). There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003; Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith).

As noted above, Complainant’s trademark is a well known mark which Complainant used and registered many years before Respondent registered the Domain Names. Respondent had both constructive and actual knowledge of Complainant’s mark and chose nevertheless to exploit it and the goodwill developed in it.

Another of the Telstra factors exists here in that Respondent submitted no response to the Complaint and has thus provided no evidence of any actual or intended good faith use of the Domain Names. See Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Moreover, as was stated in Telstra and as Complainant contends here, it is not possible to conceive any plausible actual or contemplated actual use of the Domain Names by Respondent that would not be illegitimate. Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Considering the totality of the circumstances here, the Panel concludes that the record is sufficient to infer both bad faith registration and use from the passive holding of the Domain Names.

Finally, the Panel notes Complainant’s contention that Respondent has registered numerous other domain names incorporating the trademarks of third parties and resolving to the same inactive website. However, the Panel finds it unnecessary to its determination of bad faith here to resolve that issue.

Complainant has established the third element of its case.

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 <mastercardservice.info>, <mastercardservice.mobi>; and <mastercardservices.mobi> be transferred to Complainant.

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John R. Keys, Jr.
Sole Panelist

Dated: November 28, 2007