WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Visa Europe Limited v. Bret Fausett

Case No. D2010-1534

1. The Parties

The Complainant is Visa Europe Limited of London, The United Kingdom of Great Britain and Northern Ireland, acting through its subsidiary in Paris, France, represented by Inlex Conseil, France.

The Respondent is Bret Fausett of Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <firstpremierbankgoldcard.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2010. On September 10, 2010, the Center transmitted by email to Moniker Online Services a request for registrar verification in connection with the disputed domain name. On September 15, 2010, Moniker Online Services, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2010. At the request of the parties, the proceedings were suspended until December 1, 2010.

The Center appointed Sir Ian Barker as the sole panelist in this matter on January 7, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a United Kingdom registered company acting through its French subsidiary. It operates the Visa bankcard system with some 34 million cards throughout Europe.

One of the bankcards it provides is known as “Premier” and there are some 3 million PREMIER cards in use.

The Complainant owns French and European Community registered trademarks – both verbal and device – for the word “Premier”. The first of these was registered in France in 1996. The first PREMIER CARDS were issued by the Complainant or its predecessor in interest in 1998. Over 200 banks include the Premier range of cards in the financial services offered to customers. The colour of the PREMIER card is gold.

The Respondent is a Court-appointed Domain Name Receiver. The disputed domain name was registered on May 17, 2008.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The words “bank”, “gold” and “card” are descriptive of the products to which the name “Premier” relates.

“Premier” is the dominant element. In a long domain name with several elements, the consumer’s mind will be focused on the most striking part. The word Premier is predominant in visual, phonetic and conceptual aspects of the trademarks.

The likelihood of confusion has been recognized by the Office for Harmonization in the Internal Market (Trade Marks and Designs) (“OHIM”) in a decision of October 29, 2008. In opposition proceedings concerning the trademarks “A19 Premier” and “Orange Premier” were held likely to be confused with the trademark “Premier”.

The Respondent has no rights or legitimate interests in the disputed domain name and has no reputation acquired through the disputed domain name.

The Complainant gave the Respondent no rights to register or use the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Respondent must have known of the Complainant’s trademark and the reputation of the Premier bank cards. The use of the words “gold” “bank” and “card” cannot have been coincidental. Registration of the disputed domain name must have been made to obstruct the Complainant’s card business.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following elements of a claim for transfer or cancellation of a respondent’s domain name:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to the Complainant’s registered trademark for the word “Premier” which the Complainant uses in marketing its bank card. The card is of a gold colour. The words “first”, “bank”, “gold” and “card” are descriptive of the Premier card.

As was said pithily by the panel in Hoffman-La Roche Inc. v. Wei-Chun-Hsia, WIPO Case No. D2008-0923 “wrapping a well-known mark with merely descriptive or generic words is a doomed recipe for escaping a conclusion that the domain name is confusingly similar to the well-known mark”.

That decision was one of many decided under the Policy, which establish the principle that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the trademark.

This situation was summarised by the Panelist in TPI Holdings Inc. v. Carmen Armengol, WIPO Case No. D2009-0361, in the following passage which the present Panel endorses:

Many UDRP panelists have held that the addition of descriptive or generic wording to a mark satisfies paragraph 4(a)(i) of the Policy, requiring that a disputed domain name be “identical or confusingly similar to a trademark or service mark in which the complainant has rights.” See Société AIR FRANCE v. Angelika Freitag, Angelika Freitag Company, WIPO Case No. D2008-1219; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555; Nikon Inc. and Nikon Corporation v. Photocom Korea, WIPO Case No. D2000-1338; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464; Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627.

Accordingly, the Panel finds that the Complainant has established the first limb of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant gave no rights to the Respondent to use its trademark in any way. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in this case. That is sufficient in this case for the burden to shift to the Respondent. Had the Respondent chosen to defend the proceedings, it would have been open to him to have alleged one of the defences accorded by Paragraph 4(c) of the Policy. He has not done so.

Therefore, the Complainant has established the second limb of Paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The very combination of the five elements, which make up the disputed domain name suggests a deliberate act to replicate in a domain name a well-known and distinctive bankcard product. The Panel agrees with the Complainant’s submission, that the very wording of the registration indicates bad faith as the Panel is persuaded that there is the inevitable consequence that Internet users accessing the disputed domain name could be lured into thinking that the disputed domain name had some connection with the Complainant.

The Panel concludes that the registrant of the disputed domain name registered and was using the disputed domain name, attempting, intentionally to attract for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s mark as the source, sponsorship, affiliation or endorsement of the registrant’s website (see Policy Paragraph 4(b)(iv). Bad faith registration is clearly to be inferred from the Respondent’s conduct here.

There is no evidence that the website accessed by the disputed domain name is active. However, bad faith use can be inferred on the Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, principles.

The Complainant’s trademark is well-known. There is no evidence from the Respondent of any contemplated or actual good-faith use of the disputed domain name. The Panel concludes that it is not possible to conceive of any plausible actual or contemplated actual use of the disputed domain name by the Respondent.

Accordingly, the Complainant has shown both bad faith registration and use. The third limb of Paragraph 4(a) of the Policy has been satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <firstpremierbankgoldcard.com> be transferred to the Complainant.

Sir Ian Barker
Sole Panelist
Dated: January 18, 2011