mastercardblack.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MasterCard International Incorporated v. Bob Norton

Case No. D2008-0703

1. The Parties

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

The Respondent is Bob Norton, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mastercardblack.com> is registered with eNom.

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 eNom a request for registrar verification in connection with the domain name at issue. On May 6, 2009, eNom 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 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2008.

The Center appointed Dennis A. Foster as the sole panelist in this matter on June 17, 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 United States of America company that has engaged in the credit card business for several decades throughout the world. It has a valid United States Patent and Trademark Office (the “USPTO”) registration for the mark MASTERCARD (Registration No. 1,186,117; January 12, 1982). The mark is among the most famous service marks in the world.

The disputed domain name, <mastercardblack.com>, was registered by the Respondent on September 26, 2005. The website found at the domain name provides links to the services of the Complainant as well as those of the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

The Complainant’s predecessors in interest began operating in the credit card business as early as 1966. The Complainant provides a broad variety of innovative services in support of its global members’ credit card, deposit access, electronic cash, business-to-business and related payment programs in some 210 countries and territories around the world and has done so under the service mark MASTERCARD since at least 1980.

The Complainant holds many valid USPTO registrations for marks incorporating the Complainant’s basic mark MASTERCARD. Moreover the MASTERCARD mark is registered by the Complainant in virtually every jurisdiction throughout the world.

The Complainant also owns several domain names corresponding to its registered marks, including <mastercard.com>, <marstercard.net>, <mastercard.org> and <mastercardonline.com>.

Due to the vast degree of commerce under and promotion of its MASTERCARD mark, the Complainant has created an enormous amount of global goodwill associated with this mark. Simply put, the MASTERCARD mark is one of the most famous in the world.

The Respondent registered the disputed domain name, <mastercardblack.com>, on September 26, 2006. This registration occurred substantially after the Complainant had obtained the service mark registration noted above.

The disputed domain name is confusingly similar to the Complainant’s MASTERCARD mark, the only difference being the addition of generic word “black”.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is neither a licensee of the Complainant nor is otherwise authorized by the Complainant to use its marks. The Respondent is not known commonly by the domain name. The Respondent uses the disputed domain name solely to link Internet users to either the Complainant’s services or to the services of the Complainant’s competitors – a use that fails to qualify as a bona fide offering of goods or services or noncommercial use.

The Respondent registered and is using the disputed domain name in question in bad faith. The Respondent registered and is using the domain name to cause confusion with the Complainant’s marks for Respondent’s monetary gain through collection of click-through fees. The fame of the Complainant’s marks leads to the conclusion that the Respondent knowingly used the disputed domain name to infringe upon the Complainant’s rights.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraphs 4(a)(i), (ii) and (iii) of the Policy, the Complainant may prevail in this administrative proceeding and gain transfer of the disputed domain name, <mastercardblack.com>, by demonstrating the following:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name was registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainant has furnished the Panel with dispositive evidence of its valid USPTO registrations for the service mark MASTERCARD, thus establishing that the Complainant has sufficient rights in that mark for the purposes of paragraph 4(a)(i) of the Policy. See Ticketweb Inc. v. Domains Ventures, NAF Case No. FA654538 (“Complainant’s registration of its TICKETWEB trademark with the USPTO establishes its rights in the mark pursuant to Policy [paragraph] 4(a)(i).”); and Hola S.A. and Hello Limited v. Idealab, WIPO Case No. D2002-0089.

The disputed domain name, <mastercardblack.com>, contains all of the Complainant’s service mark and adds to it the word “black” and the gTLD, “.com.” The additional word is a common descriptive word which the Panel believes is subordinate to the first and dominant part of the domain name, i.e., the Complainant’s mark. Thus, although the Panel finds no identity between the mark and the name, the Panel is persuaded that Internet users would be confused by the similarity between the two and assume an erroneous connection between the Complainant (and its services) and the disputed domain name. Numerous prior UDRP panels have found confusing similarity when confronted by disputed domain names that include a complainant’s full mark together with a simple generic term like “black”, and the Panel does so in this case. See Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Case No. FA642141; and eBay, Inc. v. Progressive Life Awareness Network., WIPO Case No. D2001-0068 (finding that the domain name <gayebay.com> incorporated the complainant’s mark in its entirety and holding it to be confusingly similar to complainant’s EBAY mark).

For the reasons stated above, the Panel finds that the Complainant has sustained its burden to prove that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant clearly owns rights in its service marks and asserts that it never authorized the Respondent to make any use of those marks. Given that the Respondent failed to file a response in this proceeding, the Panel will accept that reasonable assertion as true. See Garage Records, Inc. v. Garage Records, NAF Case No. FA95071 (“As a result of the Respondent’s failure to respond, all reasonable inferences of fact in the Complaint will be deemed true.”); and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The foregoing provides a prima facie case in the Complainant’s favor regarding the Respondent’s lack of rights or legitimate interests in the disputed domain name, calling for a rebuttal on the part of the Respondent. See Mattel, Inc. v. Yesbarbie, NAF Case No. FA114754 (“…Complainant’s establishment of a prima facie case shifts the burden to Respondent to show rights or legitimate interests.”); and Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624

Though the Respondent submitted no evidence in this case that might serve to rebut the Complainant’s prima facie case, the Panel will consider whether paragraph 4(c) of the Policy is applicable based on the record. That paragraph allows the Panel to find that the Respondent has rights or legitimate interests in the disputed domain name if: (i) before any notice to [Respondent] of the dispute, [Respondent’s] 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) [Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or (iii) [Respondent is] 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.

There is no evidence in the record indicating that the Respondent, or any company that it owns, is commonly known by any name that resembles the disputed domain name, so paragraph 4(a)(ii) is inapplicable. Furthermore, the Complainant contends, and the Panel accepts in the absence of a submission by the Respondent, that the Respondent is currently using the disputed domain name to link Internet users to either the Complainant’s services or the competing services of third parties to obtain so-called “click through” fees. Many prior Policy panels have determined that such use constitutes neither “a bona fide offering of goods or services” per paragraph 4(c)(i) nor noncommercial or fair use per paragraph 4(c)(iii). See for example, Mattel, Inc. v. Domain Park Limited, NAF Case No. FA1164348; and MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050. Therefore, based on the record, the Panel determines paragraph 4(c) of the Policy does not apply in the Respondent’s favor to rebut the Complainant’s prima facie case.

Consequently, the Panel concludes that the Complainant has demonstrated that the Respondent possesses no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) specifies a circumstance which, if found to be true by the Panel, would compel a finding that the disputed domain name was registered and is being used in bad faith, namely that: by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.

In the present case, due to the worldwide fame of the Complainant’s mark, the Panel believes that the Respondent must have known that the mere addition of the word “black” to that mark in the disputed domain name would likely cause confusion among Internet users as to whether the Complainant was affiliated with or the source, sponsor or endorser of that name. In light of that certain knowledge on the part of the Respondent, the Panel determines that the Respondent intentionally sought to use this confusion to attract for commercial gain – through the collection of click-through fees as alleged by the Complainant without contradiction – such users to the Respondent’s website. Therefore, the circumstance outlined in paragraph 4(b)(iv) is applicable. See Bank of American Fork v. Jinyang Shen, NAF Case No. FA699645 (“Respondent’s previous use of the Domain Name to attract consumers looking for Complainant’s banking services to a commercial web directory featuring links to content unrelated to the Complainant is evidence of bad faith because the Respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to third party websites.”); and TM Acquisition Corp. v. Sign Guards a/k/a William Moore, NAF Case No. FA132439.

Accordingly, the Panel rules that the Complainant has succeeded in showing that the Respondent registered and is using the disputed 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, <mastercardblack.com>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist

Dated: June 30, 2008