MasterCard International Incorporated v. Kelvin Mackole
Case No. D2008-0702
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 Kelvin Mackole, London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <mastercardmegajackpot.com> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2008. On May 6, 2008, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On May 8, 2008, Melbourne IT trading as Internet Names Worldwide 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 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 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 word. 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 15 registrations for its MASTERCARD marks in the United Kingdom and 13 registrations for its MASTERCARD marks in European Community.
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 <mastercardmegajackpot.com> on September 12, 2007.
The contested domain name does not resolve to an active website and the extension <mastercardmegajackpot.com> is used by the Respondent only in connection with an email address for luring individuals to participate in a scam lottery.
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 <mastercardmegajackpot.com> is confusingly similar to the MASTERCARD mark because it incorporates the entirety of the Complainant’s trademark. The most dominant feature of the domain name is the Complainant’s famous and registered MASTERCARD mark; the addiction of the generic term “megajackpot” does not change the overall impression of a mark or 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. The 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.
The Respondent has failed to develop a website at the infringing domain name and thus the Respondent’s use of the infringing domain name is not in connection with a bona fide offering of goods or services.
The Complainant contends that the domain name <mastercardmegajackpot.com> has been registered and is being used in bad faith.
The Complainant contends that even if the Respondent is not actually using the infringing domain name in connection with a website, his use of <mastercardmegajackpot.com> as an email address associated with a lottery scam is incontestable proof of bad faith.
The Respondent acquired 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, who was aware of the MasterCard’s rights, deliberately attempted to profit from confusion with MasterCard’s MASTERCARD mark.
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 the Complainant’s trademark MASTERCARD; the only differences are the mere adjunction of the term “megajackpot” 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. Furthermore, the Panel finds that the adding of the term “megajackpot” is not sufficient to avoid the confusion and to prevent the customers from believing that the disputed domain name is effectively linked to or affiliated with or connected to the Complainant (see The Coca-Cola Company v. Tony Williams,
WIPO Case No. D2007-0479, Nokia Corporation v. IBCC aka Nokiagirls.com, WIPO Case No. D2000-0102 and Eauto L.L.C. v. Net Me Up WIPO Case No. D2000-0104).
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. Møller 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 / [email protected],WIPO Case No. D2000-1400, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crédit 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 <mastercardmegajackpot.com> is confusingly similar to the Complainant’s trademark. Therefore, the Panel finds that the 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 not 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.
The Respondent is not generally known by the disputed domain name and he has not acquired any trademark or service mark rights in that name or mark.
Furthermore, the Respondent has not developed a website at the disputed domain name and the Panel finds that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. (see Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties WIPO CaseNo. D2005-1085, Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483 and MasterCard International Incorporated v. North Tustin Dental Associates,
WIPO Case No. D2007-1412).
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 very 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 he registered the domain names 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 does not resolve to any active website. According to several prior WIPO UDRP decisions, the Panel believes that use in bad faith does not necessarily entail a positive action, but also inaction in the presence of particular circumstances. (Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003; Compaq Computer Corporation v. Boris Beric,
WIPO Case No. D2000-0042; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,
WIPO Case No. D2000-0090).
In the present case, as proved by the Complainant, the Respondent has not used the domain name at issue to resolve it to an active website, but only in connection with an e-mail address used to lure individuals to participate in a scam lottery. It is clear that the Respondent attempted to lure, for unlawful commercial gain, Internet users to the Respondent’s fraudulent scheme by creating a likelihood of confusion with the worldwide renown Complainant’s mark as to the source and affiliation of the emails (see Dow Jones & Company Inc. v. Julia Soroki, WIPO Case No. D2008-0027 and the The Coca-Cola Company v. Tony Williams,
WIPO Case No. D2007-0479 mentioned by the Complainant).
Under these circumstances, the Panel believes that Respondent registered and used the domain name 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, <mastercardmegajackpot.com> be transferred to the Complainant.
Alessandra Ferreri Sole Panelist
Dated: June 24, 2008
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