Mastercard International Incorporated v. John Henry Enterprises

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MasterCard International Incorporated v. John Henry Enterprises

Case No. D2001-0632

1. The Parties

Complainant is MasterCard International Incorporated, 2000 Purchase Street,

Purchase, New York 10577-2509 ("MasterCard" or "Complainant").

Respondent is John Henry Enterprises, 2424 Vista Way, Suite 202, Oceanside,

California 92054 ("John Henry" or "Respondent").

2. Domain Name and Registrar

The domain name in issue is: <mastercardinternational.com> (the "Domain

Name").

The registrar is Internet Names World Wide, Level 2, 120 King Street, Melbourne,

3000, VIC, Australia ("INWW").

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received MasterCard’s

complaint via email on May 4, 2001, and in hard copy on May 7, 2001. The Center

forwarded a copy of the complaint to Respondent, notifying it that there was

a complaint filed against it but that it had no duty to act at that time. The

transmittal further stated that after the Center verified that the complaint

satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules),

the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the

Supplemental Rules), and the Uniform Domain Name Dispute Resolution Policy (the

Policy), it would send Respondent an official copy of the complaint after which

Respondent would have 20 days to respond. The letter further directed Respondent

to the websites where the Rules, Supplemental Rules, and Policy could be found.

The Center emailed INWW on May 8, 2001, requesting verification of the Domain

Name registration. On May 9, 2001, the Center received confirmation from INWW

via email that:

1) Complainant had sent it a copy of the complaint, 2) the Domain Name was

registered with INWW, 3) Respondent was the current registrant, 4) the Policy

applies to the Domain Name, and 5) the current status of the Domain Name was

active. INWW additionally confirmed the contact names, addresses, email addresses,

and phone and facsimile numbers for the organization, administrative, and technical

contacts for the Domain Name.

After verifying that the complaint complied with the formal requirements of

the Rules, Supplemental Rules, and Policy, the Center notified the registrant

and technical contact by mail, facsimile, and e-mail on May 11, 2001, of the

commencement of the administrative proceeding. It notified Respondent that Complainant

had submitted a complaint as described above. The notification also stated that

the complaint satisfied the formal requirements of the Policy, Rules, and Supplemental

Rules and the appropriate payment had been made. Accordingly, the administrative

proceeding commenced on May 11, 2001. The notification invited Respondent to

reply by May 30, 2001, in accordance with Paragraph 5 of the Rules

and the Supplemental Rules. Furthermore, the notification identified the consequences

of default, namely that a Panel would still decide the case and that, in accordance

with Rules, Paragraph 14, the Panel could draw any appropriate inferences from

the default. The notification additionally notified Respondent that Complainant

elected a single panelist who would be appointed within five days after the

Response was due. In the event that Respondent preferred a three member panel,

Respondent could so designate, with the required Payment, and would have the

option to nominate three panelists for possible inclusion on the panel. Finally,

Respondent was notified of the identity and contact information of the Case

Manager. A copy of the notification was e-mailed to Complainant.

Having received no response to the notification by the May 30, 2001, deadline,

the Center notified Complainant on June 6, 2001, of Respondent’s default. The

notice stated that the Center would appoint a single panelist to comprise the

Panel, the Panel would be informed of Respondent’s default and it would be up

to the Panel’s discretion whether to consider any late-filed Response. Finally,

the notice stated that the Center would continue to send case-related materials

to Respondent as it deemed appropriate.

On June 19, 2001, Complainant was advised by e-mail of the identity of the

undersigned sole panelist. Additionally, the Center notified Complainant that

the panelist had complied with Paragraph 7 of the Rules by submitting a Statement

of Acceptance and Declaration of Impartiality and Independence to the WIPO Arbitration

and Mediation Center.

4. Factual Background; Parties’ Contentions

a. The Trademark

MasterCard’s complaint alleges that its MASTERCARD mark is a distinctive, federally-registered,

and world-famous trademark. Its predecessor Interbank Card Association (ICA)

formally changed its name to MasterCard International Incorporated in 1979.

Since then, MasterCard has continued to use the trademark MASTERCARD and variants

thereof to identify itself, its products, and its services.

MasterCard has furthermore invested substantial resources in promoting its

mark worldwide. MasterCard has registered more than 37 marks involving MASTERCARD

in the United States alone, as evidenced by copies of the U.S. trademark and

service mark registrations contained in Annex B of the complaint. Furthermore,

Annex B of the complaint contains copies of Columbian and Spanish certificates

of registration for the mark MASTERCARD INTERNATIONAL.

Additionally, MasterCard conducts business on the Internet at various domains

which contain MASTERCARD as part of the domain name (e.g., <mastercard.com>,

<mastercard.org>, <mastercard.net>, <mastercardonline.org>).

MasterCard registered the first of these, <mastercard.com>, on July 27,

1994, and has maintained the site since 1995.

b. Jurisdictional Basis

As stated above, INWW verified that the Policy applies to the Domain Name.

Therefore, as this proceeding is likewise governed by the Policy and in accordance

with it, the Rules, and the Supplemental Rules, the Panel has jurisdiction to

decide this dispute.

c. The Complaint

MasterCard asserts as follows:

▪ The registered MASTERCARD mark has worldwide recognition.

▪ The disputed domain name <mastercardinternational.com> is confusingly

similar to the corporate name MasterCard International Incorporated.

▪ The domain name <mastercardinternational.com> is identical to

certain foreign registrations for MASTERCARD INTERNATIONAL owned by Complainant.

▪ Addition of the word "INTERNATIONAL" to a domain name does

not alter the MASTERCARD mark in a way that would reduce the likelihood of confusion.

▪ Complainant has made substantial commercial use of the MASTERCARD mark

prior to Respondent’s registration of the Domain Name.

▪ Respondent is not a licensee and therefore has no legitimate interest

in the domain name <mastercardinternational.com> or in the MASTERCARD

mark.

▪ Respondent has not engaged in activity using the MASTERCARD mark, nor

has it offered any legitimate reason to use the Domain Name.

▪ Respondent has failed to use the <mastercardinternational.com>

site to engage in any legitimate non-commercial or fair use.

▪ Respondent has registered and used the <mastercardinternational.com>

domain name in bad faith. In particular, in response to a request from Complainant

to transfer the Domain Name, Respondent offered to sell the Domain Name for

"fair compensation" and threatened to tie up the Domain Name for "two

to three years in costly litigation and appeals." MasterCard subsequently

offered to purchase the Domain Name for the costs incurred by Respondent in

registering it, but the letter was never answered. Complainant additionally

alleges that only a direct threat of civil litigation against Respondent encouraged

Respondent to indicate a willingness to cooperate with Complainant. Despite

this reluctant concession, Respondent has failed to transfer the Domain Name.

d. Response

As noted above, Respondent has provided no Response, although the deadline

for so doing expired on May 30, 2001. Accordingly, Respondent is in default.

Given Respondent’s default, the Panel can infer that Complainant’s allegations

are true where appropriate to do so. Talk City, Inc. v. Robertson, D2000-0009.

Nonetheless, Complainant retains the burden of proving the three requisite elements

of Paragraph 4(a).

5. Discussion and Findings

Accordingly, the Panel now proceeds to consider this matter on the merits in

light of the complaint, uncontested as no response was filed, the Policy, the

Rules, and other applicable authority.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect

to the Domain Name, each of the following:

(i) The domain name in issue is identical or confusingly similar to MasterCard’s

trademark in issue here; and

(ii) Respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) The domain name was registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative,

circumstances of acts that for purposes of Paragraph 4(a)(iii) above would be

evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any

one of which, if proved by Respondent, would demonstrate Respondent’s rights

or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii)

above.

a. Effect of the Default

In this case, the Panel finds that as a result of the default, Respondent has

failed to rebut any of the factual assertions that are made and supported by

evidence submitted by Complainant. The Panel does not, however, draw any inferences

from the default other than those that have been established or can fairly be

inferred from the facts presented to the Panel by Complainant and that, as a

result of the default, have not been rebutted by any contrary assertions or

evidence.

In particular, by defaulting and failing to respond, Respondent has failed

to offer the Panel any of the types of evidence set forth in Paragraph 4(c)

of the Policy from which the Panel might conclude that Respondent has any rights

or legitimate interest in the Domain Name, such as use or preparation to use

the Domain Name prior to notice of the dispute, being commonly known by the

Domain Name, or making legitimate noncommercial or fair use of the Domain Name.

b. Complainant’s Proof

(i) Domain Name Identical or Confusingly Similar to Trademark

The domain name <mastercardinternational.com> is alleged to be identical

to certain registered trademarks of Complainant MasterCard, and confusingly

similar to others as well as to Complainant’s well-known corporate name "MasterCard

International Incorporated." Specifically, the Domain Name is identical

to foreign registered trademarks in Columbia and Spain for MASTERCARD INTERNATIONAL.

Because web users typically add a generic top-level domain name (gTLD) such

as ".com" or ".net" to a mark when attempting to locate

the mark’s owner on the Internet, and because the gTLD is a functional necessity

rather than an arbitrary trademark choice, the gTLD is properly ignored when

considering similarity. See College Summit, Inc. v. Yarmouth Educational

Consultants, Inc., D2000-1575 (WIPO,

January 17, 2001). Similarly, it is well established in U.S. trademark law that

the addition or deletion of the corporate designation "incorporated"

does not alter or eliminate the likelihood of confusion between two confusingly

similar trade names or marks. Accordingly, Respondent’s deletion of the word

"Incorporated" from the Domain Name does not distinguish the Domain

Name from Complainant’s corporate name. Cf. General Electric Co. v.

Forddirect.com, Inc., D2000-0394 (WIPO

June 22, 2000) (addition of generic term "direct" does not alter the

confusing similarity of domain name to mark). Because the Domain Name is identical

or virtually identical to the foreign marks and corporate name, the Panel concludes

that the requirement of paragraph 4(a)(i) of the Policy has been met.

Moreover, even considering only Complainant’s United States trademark or service

mark registrations (which do not include MASTERCARD INTERNATIONAL), the Domain

Name is confusingly similar to each of numerous marks that MasterCard has registered

in the U.S. the dominant portion of each of which is MASTERCARD. The addition

of a generic term does not ordinarily serve to distinguish a domain name over

registered marks. For example, in AT&T Corp. v. Fred Rice, D2000-1276

(WIPO, November 25, 2000), the panel determined that including the word "global"

in a domain name was insufficient to distinguish it from the trademark AT&T,

especially considering the global nature of AT&T’s business. Here, likewise,

MasterCard has provided evidence and statements establishing that its business

is international. For example, Annex B of the Complaint contains copies of foreign

registrations for MASTERCARD INTERNATIONAL. Additionally, MasterCard states

that its products and services are used extensively outside the United States

(about 50% of MasterCard cards are allegedly in circulation outside the U.S.).

These representations are credible and stand unrebutted by any contrary assertions

of Respondent. Accordingly, the word "international" does not serve

to distinguish the domain name <mastercardinternational.com> from the

registered U.S. trademark MASTERCARD.

Furthermore, marks that have a "high degree of inherent or acquired distinctiveness"

are entitled to a greater scope of protection. Digital City, Inc. v. Smalldomain,

D2000-1283 (WIPO, November 6, 2000). MasterCard

has demonstrated that its longstanding use of the MASTERCARD mark and variants

thereof, its very high volume of business transacted under or in connection

with the mark, as well as the worldwide use and recognition of the mark, places

its mark in the category of trademarks with a "high degree of … acquired

distinctiveness" and that accordingly enjoy a wide scope of protection.

For all the above reasons, the Panel concludes that the Domain Name is confusingly

similar to MasterCard’s U.S. marks.

(ii) Whether Respondent Has Rights Or Legitimate Interest In the Domain Name.

There is no evidence in the record that Respondent has any legitimate interest

in the Domain Name. Complainant stated in the complaint that Respondent failed

to provide reasons for registering the Domain Name despite several contacts

with Complainant’s attorney. The contention is credible, and is unrebutted.

The fame, distinctiveness, strength, and priority of use of Complainant’s marks,

coupled with the Domain Name’s overwhelming similarity to Complainant’s marks

and corporate name, and Respondent’s failure to advance any of the defenses

provided in paragraph 4(c) of the Policy lead this Panel to conclude that Respondent

had no rights or legitimate interest in the Domain Name.

(iii) Registration and Use in Bad Faith

As guidance in determining whether the bad faith requirement is met, paragraph

4(b) of the Policy sets forth four non-exclusive illustrations of fact patterns

that can evidence registration and use of a domain name in bad faith.

The first illustrative scenario is if Respondent has "registered or …

acquired the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of documented out-of-pocket costs directly

related to the domain name." In Annex E of the complaint, MasterCard has

submitted a letter of October 25, 2000, from Respondent indicating that any

sale of the Domain Name would require "fair compensation" (of unstated

amount), and making a veiled threat to tie up the Domain Name "in costly

litigation and appeals" for several years. The Complainant’s response letter

of November 3, 2000, also contained in Annex E of the Complaint, offers to purchase

the Domain Name for the registration costs. Respondent apparently did not answer

that letter. The record, however, discloses no proof that Respondent actually

received the November 3 letter.

Additionally, Complainant alleges, and Respondent has not denied, that Respondent

ultimately agreed to "cooperate" with a domain name transfer (after

being threatened with civil litigation). Despite this alleged agreement, Respondent

failed to transfer the Domain Name for more than three months.

On the above facts, the Panel concludes that Respondent’s threat to tie up

the Domain Name in litigation, made simultaneously with its suggestion that

it might sell the Domain Name for an unstated amount, is indicative of a bad-faith

intent to leverage the Domain Name in order to extract value in excess of registration

costs. Its failure to take up Complainant on its proposal to compensate Respondent

in the amount of the registration costs in exchange for a domain name transfer

helps confirm this conclusion.

Notably, the Policy requires that intent to sell a domain name for profit be

the primary purpose for obtaining the domain name, if it is to meet this

first illustrative example of bad faith. Here, Respondent does not appear to

have used the Domain Name for any other purpose. It has no website accessible

at the Domain Name, and no evidence of record suggests that it is making any

other use of the Domain Name. Accordingly, leveraging its value to MasterCard

appears to have been Respondent’s sole, and accordingly primary, purpose. Its

failure to respond to the Complaint and provide any contrary contentions further

supports this conclusion. The Panel therefore finds that Respondent engaged

in bad-faith registration and use of the Domain Name as illustrated by Paragraph

4(b)(i) of the Policy.

The second illustrative scenario of bad faith involves registering a domain

name in order to prevent the trademark owner from registering the domain name,

provided that a pattern of such conduct is shown. In this case, the threat to

tie up the Domain Name in lengthy litigation suggests the sort of bad-faith

intent to deprive a trademark owner of goodwill from its mark that the second

illustration contemplates. Nonetheless, Complainant has not shown that John

Henry has registered other domain names in order to prevent the rightful trademark

owners from registering the names. Accordingly, there is no "pattern,"

and the second illustration has not been shown to apply.

The third illustration requires that the registrant have registered a domain

name primarily to disrupt the business of a competitor. Nothing in the record

suggests that John Henry competes with MasterCard, so this illustration is inapplicable.

Finally, the fourth illustration applies when a domain name is obtained in

order to attract Internet users to a website for commercial gain by "creating

a likelihood of confusion with the complainant’s mark as to the source, sponsorship,

affiliation, or endorsement" of the website. Because the <mastercardinternational.com>

domain name does not resolve to any website, such a purpose does not appear

in this record.

In light of illustration 1 discussed above, which alone suffices under the

Policy to demonstrate registration and use in bad faith, the Panel finds that

there is sufficient evidence to support Complainant’s allegation that Respondent

has registered and used the Domain Name in bad faith.

6. Decision

In light of the above findings and analysis, the Panel decides that MasterCard

has met its burden of proving: (1) the Domain Name is identical or substantially

similar to marks belonging to Complainant; (2) Respondent has no rights or legitimate

interest in the Domain Name; and (3) the Domain Name has been registered and

is being used by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel

requires that registration of the <mastercardinternational.com> domain

name be transferred to MasterCard.

Michael A. Albert

Sole Panelist

Dated: June 28, 2001

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