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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MasterCard International v. Mastercard Mastercard

Case No. D2008-0696

1. The Parties

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

The Respondent is Mastercard Mastercard, Miami, Chile.

2. The Domain Name and Registrar

The disputed domain name <mastercardclub.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2008. On May 5, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On May 5, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2008.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on June 12, 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 Background

The Complainant is a leading global payments solutions company which has been in the payment card business since 1966. Since its beginning the Complainant extended its presence from the United States of America to Mexico, Japan, Europe, People’s Republic of China and in many other countries around the world; today MasterCard serves financial institutions, consumers and businesses in over 210 countries and territories; its famous and award-winning Priceless advertising campaign has run in 105 countries and 48 languages.

The Complainant owns trademark registrations for the mark MASTERCARD in practically every nation around the world. MasterCard submitted documents that it is the owner of several US registrations and applications trademarks for its MASTERCARD mark or for other marks incorporating the term MASTERCARD.

Moreover MASTERCARD owns Chilean registration trademark MASTERCARD No. 703.733 (renewal of the trademark registration No. 428.132) filed on May 6, 2004 and registered on September 21, 2004 and Chilean registration trademark MASTERCARD No. 704.877 filed on June 13, 2003 and registered on October 1, 2004.

The Complainant is also the owner of numerous domain names containing the MASTERCARD name and mark or variant thereof, including <mastercard.com>, <mastercard.net>, <mastercard.org>. The earliest of these domain names is <mastercard.com> and it was registered on July 27, 1994.

The Respondent registered the domain name <mastercardclub.com> on September 28, 2004.

The contested domain name is used in connection with a searchable portal website with different commercial links to the Complainant as well as to the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

The Complainant contends that MasterCard is the leading global payments solutions company providing a broad variety of innovative services, managing a family of famous and widely accepted payment card brands and serving financial institutions, consumers and businesses in over 210 countries and territories.

In light of the above factual arguments and as a result of the care and skill exercised by MasterCard in the sale and promotion of its many MasterCard services and products, the supervision and control exercised by MasterCard over the nature and quality of these services and products, and the extensive advertising, sale and public acceptance thereof, the Complainant contends that the MASTERCARD mark has become famous, symbolizing an enormous amount of goodwill. The MASTERCARD mark is exclusively associated with the high quality financial services and related goods and services offered by MasterCard, and is currently one of the most famous and widely recognized trademarks in the world.

The Complainant contends that the domain name <mastercardclub.com> is confusingly similar to the MASTERCARD mark because it incorporates the entirety of Complainant’s trademark; the addition of the generic term “club” is not sufficient to distinguish the domain name from the trademarks owned by the Complainant or to avoid confusion.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the contested domain name. The Respondent is not affiliated or related to MasterCard in any way, nor is licensed by MasterCard or otherwise authorized to use the MASTERCARD mark. Respondent is not generally known by the infringing domain name, and has not acquired any trademark or service mark rights in the name or mark.

Moreover, the disputed domain name cannot be considered basis for a bona fide offering of goods or services. As a matter of fact, the Respondent is not offering the goods or services at issue, but is merely using the contested domain name to list links to different websites, some of which offer services from competitors of the Complainant. Even though some of those links pertain to the Complainant, many do not. Since the Respondent has registered and is using the domain name at issue with the clear intention to divert and siphon off visitors seeking Complainant’s web-site, it can be stated that such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.

The Complainant contends that the domain name <mastercardclub.com> has been registered and is being used in bad faith.

The Complainant contends that the domain name at issue is deliberately used for commercial gain to attract Internet users to Respondent’s website based on a likelihood of confusion with Complainant’s MASTERCARD mark. Indeed the infringing domain name apparently generates revenue for the Respondent when confused consumers “click through” to sites offering the goods and services of both MasterCard and MasterCard’s direct competitors.

Respondent acquired and began unauthorized use of the infringing domain name long after MasterCard’s adoption, worldwide use and registration of its MASTERCARD mark. By registering the contested domain name the Respondent deliberatly attempted to profit from confusion with MasterCard’s MASTERCARD mark.

The bad faith use in violation of the Policy is also demonstrated by the circumstance that the contested domain name offers links to services directly related to MasterCard’s services.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) 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

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

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

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s MASTERCARD trademark, which has to be considered a strong, distinctive and famous mark, on the basis of its worldwide reputation and goodwill in connection with the payment card business and the related financial services and goods.

The domain name at issue incorporates in its entirety Complainant’s trademark MASTERCARD; the only differences are the mere adjunction of the term “club” and the suffix “.com”.

The addition of the generic term is not enough to prevent a confusing similarity between the domain name and the incorporated trademark.

There are several WIPO UDRP decisions which state that in determining similarity between a trademark and a domain name the addition of a generic/descriptive term does not eliminate the likelihood of confusion. The Panel finds that the adding of the term “club” is likely to enhance the confusion and to lead the customers to believe that the disputed domain name is effectively linked to or affiliated with or connected to the Complainant (besides the WIPO decisions mentioned by the Complainant, see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055, GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195, Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709, Novo Nordisk A/S v. Mr. Jonathan Valicenti, WIPO Case No. D2005-0563 and Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987).

With regards to the suffix “.com” (which indicates that the domain name is registered in the “.com” gTLD), as it was established in many previous decisions (see A.P. Mшller v.Web Society, WIPO Case No. D2000-0135, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Arab Bank for Investment And Foreign Trade v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crйdit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.

There is no doubt that the domain name <mastercardclub.com> is confusingly similar to the Complainant’s trademark. Therefore, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the domain name, such as:

(i) use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record that the Respondent has any rights or legitimate interests in the domain name.

The Complainant states that there is and has never been a relationship between the Complainant and the Respondent. The Respondent is not affiliated or related to MasterCard, nor is a licensee of the Complainant and no authorization has been granted to the Respondent to use the trademark MASTERCARD.

Even if the name of the registrant provided to the Registrar is “Mastercard Mastercard”, this information (together with all other information showed by the WhoIs page) are very likely fake (except for the Respondent e-mail address).

Then, it can be stated that the Respondent is not generally known by the disputed domain name and it has not acquired any trademark or service mark rights in that name or mark.

Furthermore, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. As a matter of fact, by registering the domain name at issue the Respondent clearly intended to profit from the use of domain name which is confusingly similar to Complainant’s trademark MASTERCARD, diverting Internet users to websites where pay-per click links exist and generate gain for the Respondent.

Finally, the Panel finds that the Respondent’s lack of legitimate interest in the disputed domain name is also shown by the fact that no response was filed by the Respondent.

According to earlier decisions (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090) “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”.

Therefore, based on the evidence, the Panel is satisfied that the second element is met.

C. Registered and Used in Bad Faith

The Panel finds that the domain name was registered and is being used in bad faith.

The Complainant’s trademark and activity are well-known throughout the world and considering the widespread use and fame of the MASTERCARD trademark the Respondent must have been aware of it when it registered the domain name at issue.

As the Respondent has no rights or interests in this trademark, in line with other prior decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395) the Panel believes that, in the absence of any right or legitimate interest and lacking any contrary evidence by the Respondent, the Respondent’s registration of a domain name confusingly similar to the Complainant’s well-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411 mentioned by the Complaint).

Concerning the use of the domain name, the Complainant has proven that the disputed domain name resolves to a searchable portal website, offering several commercial links to different websites where information concerning the Complainant’s services and products as well as those of the Complainant’s competitors are offered.

In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s services and to obtain information about the Complainant’s activity, to another variety of banking and financial goods and services by creating a likelihood of confusion with the Complainant’s trademarks and business.

By exploiting the renown of the MASTERCARD trademark, the Respondent diverts Internet users looking for the Complainant’s website and seeks to gain profit out of the domain name by providing sponsored links to several other websites (offering goods and services of both MasterCard and MasterCard’s direct competitors) and obtaining revenues from the diverted traffic (besides the decisions mentioned by the Complainant, see also MasterCard International Incorporated v. Abadaba S.A., Administrador de dominiosCase, WIPO Case No. D2008-0325).

In addition, the Panel finds the Respondent’s bad faith is also demonstrated by the provision of insufficient and false information about the Respondent’s name and address provided to the Registrar. Indeed, the Respondent provided incorrect details to the Registrar, as is proved by the fact that due to insufficient postal address information available, the Center had to send to the Respondent the Notification of Complaint and Commencement of Administrative Proceeding together with the Complaint to the Respondent only by e-mail.

In many prior UDRP decisions, it is established that the use of false contact information is an indication that the Respondent registered the domain name in bad faith (See Chanel v. 1, WIPO Case No. D2003-0218; Action Instruments, Inc v. Technology Associates, WIPO Case No. D2003-0024; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Royal Bank of Scotland Group v. Stealth Commerce, WIPO Case No. D2002-0155; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Home Director, Inc. v. Home Director, WIPO Case No. D2000-0111).

In light of all the above circumstances, the Panel is satisfied that the third element is met and that the domain name <mastercardclub.com>, was registered and is being used in bad faith.

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 <mastercardclub.com> be transferred to the Complainant.

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Alessandra Ferreri
Sole Panelist

Date: June 26, 2008