National Arbitration Forum DECISION
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 email@example.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 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.
Identical and/or Confusingly Similar
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.
Rights or Legitimate Interests
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.
Registration and Use in Bad Faith
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