MasterCard International Incorporated v.
Danny Breeze
Claim
Number: FA0507000521039
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 Danny Breeze
(“Respondent”), BN2 0JL, Brighton, GB.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <virtualmastercard.com>, registered with Schlund+Partner
Ag.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Honorable
Karl V. Fink (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 25, 2005.
On
July 22, 2005, Schlund+Partner Ag confirmed by e-mail to the National
Arbitration Forum that the <virtualmastercard.com> domain name is
registered with Schlund+Partner Ag and that Respondent is the current
registrant of the name. Schlund+Partner Ag has verified that Respondent is
bound by the Schlund+Partner Ag 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 1, 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@virtualmastercard.com 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 Honorable
Karl V. Fink (Ret.) 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 <virtualmastercard.com>
domain name is confusingly similar to Complainant’s MASTERCARD mark.
2. Respondent does not have any rights or
legitimate interests in the <virtualmastercard.com> domain name.
3. Respondent registered and used the <virtualmastercard.com>
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).
Respondent
registered the <virtualmastercard.com> domain name on November 21,
2003. Respondent’s domain name does not
currently resolve to an active website.
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 <virtualmastercard.com> domain name is confusingly similar to
Complainant’s MASTERCARD mark because the domain name contains Complainant’s
mark in its entirety and adds the generic term “virtual” and the generic
top-level domain “.com” to the mark.
The Panel finds that such minor additions to Complainant’s registered
mark are insufficient to negate the confusingly similar aspects of Respondent’s
domain name pursuant to Policy ¶ 4(a)(i).
See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also 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).
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 <virtualmastercard.com>
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 <virtualmastercard.com>
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).
Furthermore, Respondent’s <virtualmastercard.com>
domain name does not resolve to an active website. Simply registering a domain name is not sufficient to establish rights
or legitimate interests. When Respondent makes no use of a disputed domain
name, it can neither be said as being used for a bona fide use under
Policy ¶ 4(c)(i), nor as a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Pharmacia & Upjohn AB v.
Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate
interests where the respondent failed to submit a response to the complaint and
had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v.
Kahveci, D2000-1244 (WIPO Nov. 11, 2000) ( “[M]erely registering the domain
name is not sufficient to establish rights or legitimate interests for purposes
of paragraph 4(a)(ii) of the Policy.”); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no
rights in the domain name where the respondent claimed to be using the domain
name for a non-commercial purpose but had made no actual use of the domain
name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
made no use of the <virtualmastercard.com> domain name since
registering it in 2003. The failure of
Respondent to make use of the disputed domain name constitutes passive holding,
and thus the Panel finds that Respondent’s registration and use of the <virtualmastercard.com>
domain name is in bad faith
pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that merely holding an infringing domain name without active use can
constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that the respondent made no use of the domain name or website that
connects with the domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith).
The Panel finds
that there is no conceivable way Respondent could use the <virtualmastercard.com>
domain name such that it would not infringe on Complainant’s MASTERCARD mark,
and therefore it is illogical to await Respondent’s use of the domain name to
find bad faith use. See
Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000)
(finding bad faith under Policy ¶ 4(a)(iii) even though the respondent has not
used the domain name because “[i]t makes no sense whatever to wait until it
actually ‘uses’ the name, when inevitably, when there is such use, it will
create the confusion described in the Policy”); see also Alitalia –Linee
Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000)
(finding bad faith where the respondent made no use of the domain name in
question and there are no other indications that the respondent could have
registered and used the domain name in question for any non-infringing
purpose); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000)
(finding that the respondent’s expected use of the domain name
<redbull.org> would lead people to believe that the domain name was
connected with the complainant, and thus is the equivalent to bad faith use); see
also Sony Kabushiki Kaisha v.
Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration
and use where it is “inconceivable that the respondent could make any active
use of the disputed domain names without creating a false impression of
association with the complainant”).
Furthermore,
Respondent’s registration of the <virtualmastercard.com> domain
name, containing Complainant’s well-known MASTERCARD mark in its entirety,
suggests that Respondent knew of Complainant’s rights in the MASTERCARD mark
when Respondent registered the disputed domain name. There is no evidence to suggest that Respondent has any
connection to any products or services bearing this variation on Complainant’s
MASTERCARD mark. Moreover, constructive
knowledge of the mark may be inferred because the mark was registered with the
USPTO prior to Respondent’s registration of the domain name. Thus, the Panel finds that Respondent
registered and used the disputed domain name based on the distinctive and
well-known qualities of Complainant’s mark.
See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000)
(finding that the fact “that the respondent chose to register a well known mark
to which he has no connections or rights indicates that he was in bad faith
when registering the domain name at issue”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“[C]omplainant’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 <virtualmastercard.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Karl V. Fink, Panelist
Dated:
September 1, 2005
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