MasterCard International, Inc. v. Ole Bangstein / Wavepass AS
Claim Number: FA1208001460915
Complainant is MasterCard International, Inc. (“Complainant”), represented by Colin T. J. O’Brien of Partridge IP Law, P.C., Illinois, USA. Respondent is Ole Bangstein / Wavepass AS (“Respondent”), Norway.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mastercardgiftcard.us>, registered with Domeneshop AS d/b/a domainnameshop.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2012; the National Arbitration Forum received a hard copy of the Complaint on August 31, 2012.
On September 6, 2012, Domeneshop AS d/b/a domainnameshop.com confirmed by e-mail to the National Arbitration Forum that the <mastercardgiftcard.us> domain name is registered with Domeneshop AS d/b/a domainnameshop.com and that Respondent is the current registrant of the name. Domeneshop AS d/b/a domainnameshop.com has verified that Respondent is bound by the Domeneshop AS d/b/a domainnameshop.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 10, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 1, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mastercardgiftcard.us> domain name is confusingly similar to Complainant’s MASTER CARD mark.
2. Respondent does not have any rights or legitimate interests in the <mastercardgiftcard.us> domain name.
3. Respondent registered and used the <mastercardgiftcard.us> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant owns United States Patent and Trademark Office (“USPTO”) registrations for the MASTERCARD mark (e.g., Reg. No. 1,186,117 registered January 12, 1982). The mark is used in connection with credit cards, magnetic encoded cards, and various other financial goods and services.
Respondent registered the <mastercardgiftcard.us> domain name on November 23, 2008, and uses it to resolve to a website that offers credit cards in Norway.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Given the similarit between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
The Panel finds that Complainant has rights in the MASTERCARD mark pursuant to Policy ¶ 4(a)(i), through its trademark registration with the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the UDRP does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <mastercardgiftcard.us> domain name simply adds a descriptive term and the ccTLD, doing nothing to distinguish it from Complainant’s mark. In Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), the panel held that the addition of a descriptive term such as “giftcard” in the present dispute fails to differentiate the disputed domain name from the mark within it. Additionally, in Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003), the panel found that the addition of the ccTLD “.us” did not negate a finding of confusing similarity. Thus, the Panel finds that Respondent’s <mastercardgiftcard.us> domain name is confusingly similar to Complainant’s MASTERCARD mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has not acquired any trademark or service mark rights that reflect the <mastercardgiftcard.us> domain name. The Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to UDRP ¶ 4(c)(i)).
Complainant argues that Respondent is not generally known by the <mastercardgiftcard.us> domain name. Respondent is not affiliated with or related to Complainant, and Respondent is not licensed or otherwise authorized to use the MASTERCARD mark. The WHOIS record for the disputed domain name lists “Ole Bangstein / Wavepass AS” as the domain name registrant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006, the panel found that such information as the WHOIS record and whether the respondent was authorized to use a mark was evidence of whether the Respondent was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <mastercardgiftcard.us> domain name under Policy ¶ 4(c)(iii).
Complainant asserts that the <mastercardgiftcard.us> domain name resolves to a website where Respondent offers credit cards in Norway, in competition with Complainant. The panel in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), held that the offering of competing goods or services via a disputed domain name is not a use protected under UDRP ¶¶ 4(c)(ii) and 4(c)(iv). The Panel finds that Respondent’s use of the <mastercardgiftcard.us> domain name is not a Policy ¶ 4(c)(ii) bona fide offering of goods or services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has developed a pattern of bad faith registration of domain names. The Panel notes a prior UDRP dispute between Complainant and Respondent, Mastercard Int’l Incorp. v. Ole-Christian Bangstein / WAVEPASS AS, FA 1440785 (Nat. Arb. Forum June 8, 2012) as evidence of Respondent’s continued bad faith relating to Complainant. In Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006), the panel held that past instances of bad faith registration and use of domain names gives rise to a finding of bad faith in present cases. The Panel thus finds that Respondent has developed a pattern of bad faith registration and use of domain names and infers bad faith in the present dispute pursuant to Policy ¶ 4(b)(ii).
Respondent registered and uses the <mastercardgiftcard.us> domain name to take commercial advantage of Internet users by creating a likelihood of confusion with Complainant’s MASTERCARD mark and diverting customers from Complainant’s website to Respondent’s website, where it offers competing credit cards in Norway. The Panel therefore finds bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under UDRP ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant asserts that Respondent had constructive and actual knowledge of Complainant’s rights in the MASTERCARD mark when it registered the <mastercardgiftcard.us> domain name. The Panel agrees and finds bad faith according to Policy ¶ 4(a)(iii), based on Respondent’s use of the domain name and the fame of Complainant’s mark. See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under UDRP ¶ 4(a)(iii).").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mastercardgiftcard.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 16, 2012
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