MasterCard International Incorporated v.
Constantin Calin
Claim
Number: FA0507000520505
Complainant is MasterCard International Incorporated (“Complainant”),
represented by Russell H. Falconer, of Baker Botts L.L.P.,
30 Rockefeller Plaza, New York, NY 10112-0228.
Respondent is Constantin Calin
(“Respondent”), Sos. Iancului, nr. 11, Bl.108, et.1, ap.1, sector 2, Bucharest,
Romania.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <mastercard.ro>, registered with RNC,
Research Instuture for Informatics.
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
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 21, 2005.
On
August 2, 2005, RNC, Research Instuture for Informatics confirmed by e-mail to
the National Arbitration Forum that the <mastercard.ro> domain
name is registered with RNC, Research Instuture for Informatics and that
Respondent is the current registrant of the name. RNC, Research Instuture for Informatics has verified that
Respondent is bound by the RNC, Research Instuture for Informatics registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
August 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 22, 2005 by which Respondent could file a response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@mastercard.ro by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 29, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 <mastercard.ro>
domain name is identical to Complainant’s MASTERCARD mark.
2. Respondent does not have any rights or
legitimate interests in the <mastercard.ro> domain name.
3. Respondent registered and used the <mastercard.ro>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the MASTERCARD mark (i.e., Reg. No.
1,186,117 issued January 12, 1982).
Complainant has
used its MASTERCARD mark since 1966.
Complainant is a leader in the payment card field and is known
throughout the world. In 2000-2001,
Complainant spent $1.2 billion to support and build value in the MASTERCARD
mark worldwide. Complainant also uses
the Internet to advertise and provide services for its customers. Complainant holds numerous domain names that
incorporate the MASTERCARD mark including: <mastercard.com>,
<mastercard.net>, <mastercard.org>, <mastercardonline.com>
and <mastercardkorea.com>.
Complainant has held the registration for <mastercard.com> since
1994.
There is no
evidence indicating Respondent’s registration date of the <mastercard.ro>
domain name. However, the Panel infers
that Respondent could not have registered the domain name prior to
Complainant’s first use of the MASTERCARD mark in commerce in 1966. Respondent is using the disputed domain name
to redirect Internet users to its commercial website featuring a search engine
and links to a variety of third-party websites unrelated to Complainant’s
business.
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."
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.”).
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 and
is being used in bad faith.
Complainant
has established rights in the MASTERCARD mark through its registrations of the
mark with the USPTO and through continuous use of the mark in commerce. See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564
(WIPO June 18, 2001) (finding that successful trademark registration with the
USPTO creates a presumption of rights in a mark); see also Innomed
Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
Respondent’s
<mastercard.ro> domain name is identical to Complainant’s
MASTERCARD mark because the domain name features Complainant’s mark in its
entirety and the only difference is the addition of the country code top-level
domain “.ro.” The Panel finds that such
a minor alteration to Complainant’s registered mark is insufficient to negate
the identical aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar); see
also Blue Sky Software Corp. v.
Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to the complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding
that "the addition of the generic top-level domain (gTLD) name ‘.com’ is .
. . without legal significance since use of a gTLD is required of domain name
registrants").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <mastercard.ro>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel presumes that Respondent does not have rights
or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277
(Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has
asserted that respondent does not have rights or legitimate interests with
respect to the domain name, it is incumbent on respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent has
not offered any proof, and there is no indication in the record, suggesting
that Respondent is commonly known by the <mastercard.ro> domain
name. Furthermore, Respondent has
neither permission nor a license to use Complainant’s mark. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that the respondent does not have rights in a domain
name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the
respondent was not commonly known by the mark and never applied for a license
or permission from the complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because the respondent is not commonly known by the disputed domain
name or using the domain name in connection with a legitimate or fair use).
Additionally,
the <mastercard.ro> domain name is identical to Complainant’s MASTERCARD
mark and is used to redirect Internet users to a website featuring a search
engine and links for a wide variety of third-party products and services. The Panel finds that Respondent’s use of a
domain name that is identical to Complainant’s mark to divert Internet users to
its commercial website featuring links to third-party products and services for
which Complainant presumably receives click-through fees is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s
diversionary use of the complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) (holding that the respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to the complainant
and presumably with the purpose of earning a commission or pay-per-click referral
fee did not evidence rights or legitimate interests in the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that incorporates Complainant’s
MASTERCARD mark for Respondent’s commercial gain. Respondent registered and used the <mastercard.ro>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
intentionally attempted to attract potential customers from Complainant to Respondent’s
website by taking advantage of Internet users who are searching under
Complainant’s MASTERCARD mark and diverting them to Respondent’s commercial
website. See Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name in question is obviously connected with the
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that the respondent intentionally attempted to attract Internet users to his
website for commercial gain by creating a likelihood of confusion with the
complainant’s mark and offering the same services as the complainant via his
website); see also Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith
where the respondent attracted users to a website sponsored by the respondent
and created confusion with the complainant’s mark as to the source,
sponsorship, or affiliation of that website).
Moreover,
Respondent registered the <mastercard.ro> domain name with actual
or constructive knowledge of Complainant’s rights in the MASTERCARD mark due to
Complainant’s registration of the mark with the USPTO. Registration of a domain name that is
confusingly similar to a mark, despite actual or constructive knowledge of
another’s rights in the mark, is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Orange Glo Int’l
v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <mastercard.ro> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
September 7, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum