DECISION

MasterCard International Incorporated v. Oh Yeonghwan

Claim Number:  FA0302000145228

PARTIES

Complainant is MasterCard International Inc., Purchase, NY, USA (“Complainant”) represented by Jeanne Hamburg, of Baker Botts LLP. Respondent is Oh Yeonghwan, Yangsan-city, SOUTH KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mastercard.info>, registered with Dotster a/k/a Nameresolve.com.

PANEL

 On, March 13, 2003 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 10, 2003; the Forum received a hard copy of the Complaint on February 12, 2003.

On February 11, 2003, Dotster a/k/a Nameresolve.com confirmed by e-mail to the Forum that the domain name <mastercard.info> is registered with Dotster a/k/a Nameresolve.com and that Respondent is the current registrant of the name. Dotster a/k/a Nameresolve.com has verified that Respondent is bound by the Dotster a/k/a Nameresolve.com 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 February 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 2003 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.info by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

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 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <mastercard.info> domain name is identical to Complainant’s MASTERCARD mark.

2. Respondent does not have any rights or legitimate interests in the <mastercard.info> domain name.

3. Respondent registered and used the <mastercard.info> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds numerous registrations for its MASTERCARD mark with the United States Patent and Trademark Office including Registration Numbers 1,186,117 and 1,292,519.  Complainant also holds registrations for its mark in practically every jurisdiction throughout the world including South Korea, Respondent’s domicile.  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.

Respondent registered the <mastercard.info> domain name on July 13, 2002.  Respondent has not established a website at the domain name, or made any other use of <mastercard.info>.  Respondent does not have permission from Complainant or a license to use the MASTERCARD mark.

DISCUSSION

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.

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 it has rights in the MASTERCARD mark through registration with the United States Patent and Trademark Office and continuous use since 1966.

Respondent’s <mastercard.info> domain name is identical to Complainant’s famous MASTERCARD mark because it incorporates Complainant’s entire mark and merely adds the top-level domain name “.info.”  The addition of a top-level domain does not add any distinguishing features to the disputed domain name because top-level domains are required in every domain name.  See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent has made no use of the <mastercard.info> domain name since its registration in July of 2002.  Failure to use a domain name for such a length of time is considered to be passive holding and does not give rise to rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely 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 Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).

Moreover, based on the fame of Complainant’s MASTERCARD mark, Respondent would be hard-pressed to establish that it is commonly known as MASTERCARD or <mastercard.info>.  Respondent has not come forward with any evidence and thus the Panel infers that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Paragraph 4(b) outlines four circumstances that evidence bad faith registration and use on the part of Respondent.  These situations are not meant to be the exclusive means of determining bad faith.  The Policy recognizes that the Panel has the discretion to determine bad faith from the totality of the circumstances.  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

Based on the fame of Complainant’s MASTERCARD mark and its registration throughout the world the Panel infers that Respondent was on notice of Complainant’s rights when it registered the <mastercard.info> domain name.  Registration of an infringing domain name, despite actual notice of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

Respondent has held the <mastercard.info> domain name for almost a year and has failed to develop a website or use it for any purpose.  This behavior is considered to be passive holding and evidence of bad faith registration and use 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).

Moreover, the registration of a domain name identical to a mark as famous as Complainant’s MASTERCARD mark is evidence of opportunistic bad faith.  There is no plausible use of the <mastercard.info> domain name that would not mislead consumers thus, the Panel infers that the domain name was registered and used in bad faith.  See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (“Just as the employment of a well-known business name for no particularly good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner. . . . Respondent, if he ever was serious in the registration of this domain name, must have relied on the good chance he would attract [Complainant’s] customers”); see also Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith.  Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <mastercard.info> domain name be TRANSFERRED from Respondent to Complainant.

 James P. Buchele, Panelist

Dated: March 18, 2003

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