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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MasterCard International Incorporated v. Alberto Gomez Pйrez

Case No. D2008-1052

 

1. The Parties

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

The Respondent is Alberto Gomez Pйrez, Alicante, Spain.

 

2. The Domain Name and Registrar

The disputed domain name <notieneprecio.com> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2008. On July 11, 2008, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On July 12, 2008, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing his 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 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2008. The Response was filed with the Center on August 11, 2008.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on August 19, 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

MasterCard owns the trademark NO TIENE PRECIO in different countries, such us: Mexico (Reg. No. 624,066), El Salvador (Reg. Nos. 0074/0106/0149-0150), Argentina (Reg. Nos. 2,056,547 and 2,056,573), Colombia (Reg. No. 330,335), Dominican Republic (Reg. No. 103,839), Ecuador (Reg. No. 2133-00), Paraguay (Reg. No. 224,520), and Peru (Reg. No. 0017806). MasterCard also owns the trademark MASTERCARD… NO TIENE PRECIO in Argentina (Reg. Nos. 1,807,161 and 1,807,568) and Spain (Reg. No. 2,549,179 M2).

Moreover, MasterCard owns several registrations for the trademark PRICELESS, (English translation for NO TIENE PRECIO) in different countries, such us: Spain (Reg. No. 2233668M0) the United States of America (Reg. No. 2,370,508), and Australia (Reg. No. 767,874).

MasterCard is a widely-known leading global payments solutions company and owner of the payment card MASTERCARD that is promoted through its worldwide PRICELESS advertising campaign since 1997. The campaign was extended to the Spanish language in 2000 through the NO TIENE PRECIO ad campaign.

The Respondent registered the disputed domain name <notieneprecio.com> on July 18, 2003.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

MasterCard is a leading global payments solutions company and manages various payment card brands including MASTERCARD.

To promote its services, MasterCard has used the PRICELESS advertising campaign since 1997 which runs in 105 countries.

In 2000, MasterCard, in an effort to target Spanish speaking consumers introduced the NO TIENE PRECIO ad campaign. The phrase “no tiene precio” is the Spanish translation for “priceless”.

As a result of these promotions, the PRICELESS and NO TIENE PRECIO advertisements have become associated exclusively with MasterCard.

The Complainant has worldwide rights in the trademarks PRICELESS and NO TIENE PRECIO for financial services and other goods and services.

The Complainant has registered numerous domain names containing the PRICELESS name and mark. The earliest of these, was registered on November 3, 1997, a long time before the Respondent registered the disputed domain name.

The PRICELESS and NO TIENE PRECIO marks have become famous and are exclusively associated with the high quality financial services and related goods and services offered by MasterCard.

The disputed domain name <notieneprecio.com> was registered subsequent to the Complainant’s adoption and registration of the famous PRICELESS mark worldwide. Additionally, the disputed domain name was registered subsequent to the Complainant’s adoption and registration of the trademark NO TIENE PRECIO in many countries, including the application for registration in Spain.

The Respondent uses the disputed domain name in connection with a website which perverts the famous PRICELESS and NO TIENE PRECIO ad campaigns by featuring pictures of unconscious individuals in highly unflattering poses. Said website also features banners for third party’s websites which, among other things, offer financial services in the form of mortgages.

The Complainant owns the NO TIENE PRECIO mark by virtue of long and extensive worldwide use of the mark and ownership of numerous trademark registrations.

The disputed domain name <notieneprecio.com> is identical to the Complainant’s trademark NO TIENE PRECIO.

The Respondent is not affiliated or related to MasterCard in any way, nor is the Respondent licensed by MasterCard or otherwise authorized to use the NO TIENE PRECIO mark.

The Respondent is not generally known by the disputed domain name, and has not acquired any rights in this name or mark.

The Respondent does not have rights or a legitimate interest in the disputed domain name.

The disputed domain name is deliberately used for commercial gain to attract Internet users to the Respondent’s website based on a likelihood of confusion with the Complainant’s mark.

The Respondent registered and began use of the disputed domain name long after the Complainant’s use and registration of its NO TIENE PRECIO mark.

There is no plausible reason for the Respondent’s selection of the disputed domain name other than as a deliberate attempt to profit unfairly from confusion with the Complainant’s NO TIENE PRECIO mark.

The Respondent registered and is using the domain name in bad faith.

B. Respondent

The Respondent contends the following:

At the date the Respondent registered the disputed domain name <notieneprecio.com>, the Complainant did not own a registration for the trademark NO TIENE PRECIO in the country of the Respondent, i.e., Spain.

The expression “priceless” is used to designate things that money cannot buy. The Complainant’s intention to own said phrase constitutes an abuse that must be qualified as “Reverse domain hijacking”.

The Respondent registered the disputed domain name <notieneprecio.com> a long time ago.

The website which the disputed domain name redirects Internet users to has a humorous content that is different from the activity of the Complainant.

The Complainant did not prove that the disputed domain name was registered and is being used in bad faith.

 

6. Discussion and Findings

For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

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

In accordance with paragraph 15(a) of the Rules, the Panel shall 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.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <notieneprecio.com> is identical to the NO TIENE PRECIO mark in which the Complainant has proven it has rights.

Therefore, the Panel finds that the Complainant has satisfied the first element required in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name, as follows:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial 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.”

Although the Policy states that the Complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for the Complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence then shifts to a respondent. A respondent must then demonstrate its rights or legitimate interest in the domain name in order to refute the prima facie case.

The Panel, after considering all of the evidence in the Complaint and the exhibits attached thereto, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

That prima facie case comes from the facts that (i) the Complainant has not authorized the Respondent to use its trademark NO TIENE PRECIO, (ii) there is no evidence that the Respondent was known as “no tiene precio” before the disputed domain name was registered and (iii) there is no evidence showing that Respondent has any trademark right in the name.

The Respondent seeks to rebut the prima facie case by arguing that by the date the Respondent registered the disputed domain name the Complainant did not own a registration for the mark NO TIENE PRECIO in Spain; that the expression “no tiene precio” is commonly used to refer to things that money cannot buy; and that the disputed domain name is used in connection with a humorous website.

Although it may be argued that the website “www.notieneprecio.com” has a humorous content, by featuring a parody of the Complainant’s PRICELESS or NO TIENE PRECIO ad campaigns, it is uncontested, and the Complainant has submitted relevant evidence in that regard, that the Respondent has not made a bona fide offering of goods and services. In fact, the Complainant has proved that the website “www.notieneprecio.com” to which the disputed domain name resolves has at one time contained sponsored links that are used to transfer visitors to Complainant’s competitors’ websites. Such use cannot be considered a bona fide use, or fair or noncommercial use.

The Panel finds that the Respondent has not established sufficient evidence of any legitimate interests or fair use in the sense of paragraph 4(c)(iii) of the Policy.

Additionally, there is no evidence showing that the Respondent is commonly known as or identified by “no tiene precio”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.

For the above reasons, the Panel finds that, Complainant has proved as required in paragraph 4(a)(ii) of the Policy, that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that the Complainant must prove is that the disputed domain name has been registered and is being used in bad faith.

The Policy in its paragraph 4(b) sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith, as follows:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you [Respondent] 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; or

(ii) you [Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

The Complainant has proved that it has rights in the trademark NO TIENE PRECIO in different countries, such us: Mexico (Reg. No. 624,066), El Salvador (Reg. Nos. 0074/0106/0149-0150), Argentina (Reg. Nos. 2,056,547 and 2,056,573), Colombia (Reg. No. 330,335), Dominican Republic (Reg. No. 103,839), Ecuador (Reg. No. 2133-00), Paraguay (Reg. No. 224,520), and Peru (Reg. No. 0017806). The Complainant also owns the trademark MASTERCARD… NO TIENE PRECIO in Argentina (Reg. Nos. 1,807,161 and 1,807,568) and Spain (Reg. No. 2,549,179 M2).

Particularly in Spain, the country of the Respondent, the Complainant has filed the application for MASTERCARD… NO TIENE PRECIO on July 4, 2003, prior to the Respondent registering the disputed domain name on July 18, 2003.

Moreover, it is uncontested that the Complainant is a widely-known leading global payments solutions company and owner of the payment card MASTERCARD that is promoted through its worldwide ‘PRICELESS’ advertising campaign since 1997. The campaign was extended to the Spanish language in 2000 through the NO TIENE PRECIO ad campaign.

Furthermore, the Respondent has not denied knowing the Complainant’s mark NO TIENE PRECIO before registering the disputed domain name but rather argues that when registering the disputed domain name, the Complainant had no trademark registration in Spain.

Therefore, the Panel finds that the Respondent knew or should have known the Complainants trademark NO TIENE PRECIO before registering the disputed domain name, which evidences its bad faith registration.

Moreover, and as contended by the Complainant, the Panel finds that by using the domain name <notieneprecio.com> the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.

This is evidenced by the fact that the Respondent’s website “www.notieneprecio.com” has sponsored links that transfer visitors to other on-line locations, which offer financial services in the form of mortgages, which are competing or strongly related to the ones offered by the Complainant.

For these reasons, the Panel finds that Respondent both registered and uses the domain name in bad faith, and that Complainant has therefore made out 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 name <notieneprecio.com> be transferred to the Complainant.

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Miguel B. O’Farrell
Sole Panelist

Date: September 1, 2008