WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MasterCard International Incorporated (“MasterCard”) v. Dynamic Travel & Cruises

Case No. D2013-1089

1. The Parties

Complainant is MasterCard International Incorporated of Purchase, New York, United States of America (“USA”), represented by Partridge IP Law P.C., USA.

Respondent is Dynamic Travel & Cruises of Southlake, Texas, USA, self-represented.

2. The Domain Name and Registrar

The Disputed Domain Name <mastercardtravel.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2013. On June 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 17, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 2, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center received an informal communication from Respondent on July 2, 2013 requesting information about the proceedings. On July 4, 2013, the Center sent an email communication to Respondent providing him with the requested information.

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 Respondent of the Complaint, and the proceedings commenced on July 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2013. The Response was filed with the Center on July 26, 2013.

On July 30, 2013 the Center sent an email communication to the parties to confirm whether the proceedings shall be suspended or whether the Center shall proceed to appoint the Panel. On August 2, 2013, Complainant asked Respondent if he was consenting to transfer the Disputed Domain Name. On the same date, Respondent sent an email communication to the Center confirming that it was not consenting to transfer the Disputed Domain Name.

The Center appointed Richard W. Page as the sole panelist in this matter on August 9, 2013. 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.

On August 8, 2013, a reply from Complainant was received by the Center. On August 11, 2013, Respondent submitted a sur-reply from Respondent. The Panel has considered both the reply and the sur-reply as part of the record in this proceeding.

4. Factual Background

Complainant is a leading global payments solutions company providing a broad variety of innovative services in support of its members’ credit, deposit access, electronic cash, business-to-business and related payment programs. Complainant through its predecessors in interest, has been in the payment card business since 1966 and has operated under the MASTERCARD name and mark since at least as early as 1980. Complainant manages a family of famous and widely accepted payment card brands including MASTERCARD, MAESTRO and CIRRUS, and serves financial institutions, consumers and businesses in over 210 countries and territories, Complainant’s website at “www.mastercard.com” explains the history of the business. Complainant also offers a prepaid debit card called Mastercard Travel.

In April 1980, Complainant filed an application with the United States Patent and Trademark Office (the “USPTO”) to register the trademark MASTERCARD (the “MASTERCARD Mark”). Since that date, Complainant has gone to great lengths to protect the valuable goodwill in the MASTERCARD Mark and has registered its MASTERCARD Mark practically every nation around the world.

In addition to its international trademark registrations, Complainant has registered numerous domain names containing the MASTERCARD Mark or variants thereof. The earliest of these registered domain names <mastercard.com> was registered on July 27, 1994, long prior to Respondent’s registration of the Disputed Domain Name.

Complainant owns numerous US trademark registrations for its MASTERCARD Mark. Complainant also owns registrations which incorporate the terms “Mastercard” and “Travel”.

According to the Moniker WhoIs database record, the Disputed Domain Name <mastercardtravel.com> was registered on June 16, 1999, subsequent to Complainant’s adoption and registration of its MASTERCARD Mark. Currently the Disputed Domain Name is inactive.

5. Parties’ Contentions

A. Complainant

Complainant contends that as a result of the care and skill it has exercised in the sale and promotion of its many “Mastercard” services and products, and the extensive advertising, sale and public acceptance thereof, the MASTERCARD Mark has become famous, symbolizing an enormous amount of good will. The MASTERCARD Mark and variants thereof are exclusively associated with the highest quality financial services and related goods and services offered by Complainant. The MASTERCARD Mark is one of the most famous and widely recognized trademarks in the world.

Complainant further contends that the Disputed Domain Name <mastercardtravel.com> is confusingly similar to the MASTERCARD Mark because it incorporates the entirety of Complainant’s MASTERCARD Mark. The Disputed Domain Name adds only the non-distinctive term “travel” to the MASTERCARD Mark. The addition of a non-distinctive, descriptive or generic term such as “travel” does not change the overall impression of a mark or avoid confusion. See, MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050 (finding the addition of the generic term “offers” in the domain name <mastercard-offers.com> is insufficient to avoid confusion; MasterCard International Incorporated v. Organization Contact / www.wwwdomains4sale.com, WIPO Case No. D2007-0691 (finding the addition of the generic term “apply” to MASTERCARD does not change the overall impression of the mark and that the domain <mastercard-apply.com> is confusingly similar to Complainant’s MASTERCARD Mark.) Complainant concludes that the Disputed Domain Name is confusingly similar pursuant to the Policy, paragraph 4(a)(i).

Complainant contends that Respondent is not affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant otherwise authorized to use the MASTERCARD Mark. Respondent is not generally known by the Disputed Domain Name, and has not acquired any trademark or service mark rights in the MASTERCARD Mark. Respondent has not developed a website at the Disputed Domain Name and is thus not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Complainant concludes that Respondent has no rights or legitimate interest in the Disputed Domain Name under the Policy, paragraph 4(a)(ii).

Complainant argues that Respondent acquired and passively held the Disputed Domain Name long after Complainant’s adoption, use and registration of its MASTERCARD Mark. At the time the Disputed Domain Name was registered, Complainant had substantial registration use of its MASTERCARD Mark in the USA. Therefore, Respondent has constructive and actual notice of Complainant’s rights in its MASTERCARD Mark. There is no plausible reason for Respondent’s selection of the Disputed Domain Name other than as a deliberate attempt to profit unfairly from confusion with Complainant’s Mark.

Complainant further argues that under the circumstances, Respondent’s registration and holding of <mastercardtravel.com> constitutes bad faith use of the Disputed Domain Name in violation of the Policy, since there is no plausible legitimate reason for Respondent’s action. Complainant concludes that Respondent has registered and used the Disputed Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii).

B. Respondent

Confusing Similarity

Respondent contends that the Disputed Domain Name has been used on numerous occasions since registered, always clearly stating that it was a service of Respondent which does accept MasterCard as payment for travel, cruises and tours and has done so since it started business in 1982. At no time did Respondent present itself as MasterCard, but rather a business which accepts MasterCard and offers special discounts or valued add-ons to clients when making specific purchase using their MasterCard. The website is currently not able to be seen due to the fact that the company hosting the website changed name servers and the domain is locked away from any changes being made to the name servers, which is currently being disputed by Respondent.

Respondent further contends that since registering the Disputed Domain Name several years ago, it has made multiple offers to clients from different vendors that were only valid when the client was using their MasterCard at the time of purchase. Once Respondent registered the Disputed Domain Name, it approached vendors about working with it on special offers when using MasterCard. Respondent first approached vendors who were not preferred with American Express Travel. American Express Travel offers special prices and add-ons to their members when booking through their travel agency. Vendors who are not part of that program were interested in working with Respondent us to market to those same clients, but making the offer only valid through Respondent’s travel agency and only when using their clients’ MasterCard. It was very effective and in fact so effective that the American Express Travel office down the street from Respondent closed about 4 years ago.

As an example, several years ago Respondent had an offer with Norwegian Cruise Lines whereby it put down money as deposits on several hundred cabins to Alaska. This deal Respondent had with Norwegian Cruise Lines allowed clients to be able to purchase an ocean view cabin with a balcony at the price of a minimum inside cabin which was as savings of several hundred dollars per person. Since the cruise line required that Respondent disguise the price, Respondent bundled the cruise with travel insurance and made the client pay for the entire package with their MasterCard. This is very similar to offers made by American Express Travel to their customers but this offer was actually better than anything American Express Travel could offer.

As another example, Respondent recently had an offer of over 50 sailings with Royal Caribbean at special rates which it had to disguise. So this offer again was made to customers with the requirement that they could only purchase at these special rates by using their MasterCard. Most all of Respondent’s proposals are promoted on the website “www.mastercardtravel.com” with instructions for the clients to call Respondent’s office to book. At all times on the website and in emails Respondent said that client needed to contact Dynamic Travel & Cruises and the offer was being made by Dynamic Travel & Cruises.

Rights or Legitimate Interest

Respondent argues that Complainant states that Respondent is not affiliated or related to MasterCard in any way or authorized to use the MasterCard Mark. Either Complainant or its lawyers are woefully ignorant of how travel agencies work or decided to ignore the relationship travel agencies have with MasterCard and all of the credit card companies though Respondent’s bank and vendors. Respondent has been accepting all major credit cards including MasterCard, since it opened in 1982 for payment for cruises, airline tickets, tours and other travel items. Respondent asserts that it clearly has a relationship with MasterCard.

Bad Faith

Complainant states there is no plausible legitimate reason for Respondent to have the Disputed Domain Name <mastercardtravel.com> and that Respondent is holding the Disputed Domain Name in bad faith. Respondent argues that it does have reasons to have the website. Respondent is using the website and is not holding it in bad faith.

C. Complainant’s Reply

Complainant replied to Respondent’s allegations that no evidence has been provided that the Disputed Domain Name has been used on numerous occasions since it was registered. A search using the “Wayback Machine” revealed that there has never been an archived website associated with the Disputed Domain Name.

Respondent’s assertions of the ways it believes that it is entitled to use the MASTERCARD Mark are prohibited activities. See, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 which says that the Registrant’s use of the MASTERCARD Mark in the Disputed Domain Name can be regarded as a “bona fide offering of goods and services” within the meaning of the Policy, paragraph 4(iii) if the following conditions are satisfied:

1. Respondent must actually be offering the goods or services at issue;

2. Respondent must use the site to sell only the trademarked goods;

3. The site itself must accurately disclose the Respondent’s relationship with the trademark owner; and

4. The Respondent must not try to “corner the market” in all relevant domain names.

Respondent fails to satisfy the Oki Data test. First, Respondent is not actually offering the goods or services as <mastercardtravel.com>. The only evidence of use provided by Respondent is an attachment which features an advertisement for Royal Caribbean Cruise Line tickets that was not approved by Complainant. The page does reference Respondent’s relationship to Complainant. Lastly, Complainant also offers travel services, therefore, it is improper for Respondent to own <mastercardtravel.com> thereby preventing Complainant from using the Disputed Domain Name.

The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where a registrant is seeking to profit from and exploit the trademark of another. Evidence that Respondent may be trading off Complainant’s reputation can include mention of Complainant or its business. Here Respondent is seeking to profit by claiming a non-existent relationship with Complainant to sell blocks of tickets on cruise lines for its own profit. Complainant has neither approved nor authorized Respondent to us its MASTERCARD Mark in such a manner.

D. Respondent’s Sur-Reply

Respondent re-iterated that it has used the website to which the Disputed Domain Name resolves and has never used the MASTERCARD Mark other than to accept payments and for travel promotions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,

iii) that the Disputed Domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous worldwide registrations of the MASTERCARD Mark. Respondent has not contested these contentions.

Therefore, the Panel finds that the MASTERCARD Mark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the MASTERCARD Mark. Complainant’s registrations are incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the MASTERCARD Mark in connection with the stated goods.

Complainant contends that the Disputed Domain Name is identical with and confusingly similar to the MASTERCARD Mark pursuant to the Policy paragraph 4(a)(i). The Panel finds that the Disputed Domain Name <mastercardtravel.com> is confusingly similar to the MASTERCARD Mark because it incorporates the entirety of Complainant’s MASTERCARD Mark. The Disputed Domain Name adds only the non-distinctive term “travel” to the MASTERCARD Mark. The addition of a non-distinctive, descriptive or generic term such as “travel” does not change the overall impression of a mark or avoid confusion.

Respondent has not contested the assertions by Complaint that the Disputed Domain Name is confusingly similar to the trademark. Therefore, the Panel concludes that the Disputed Domain Name is confusingly similar pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The issue in this proceeding is whether the Policy, paragraph 4(c)(i) applies. Complainant raised the issue whether Respondent has ever constructed a website to which the Disputed Domain Name has resolved and claims that the Wayback Machine has revealed there has never been an archived website associated with the Disputed Domain Name. Respondent is insistent that it has used its website at “www.mastercardtravel.com” for promotions. For purposes of this decision, the Panel will assume that Respondent has historically used the questioned website, but that it is currently inactive.

Complainant further contends that Respondent is not affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant otherwise authorized to use the MASTERCARD Mark. Complainant asserts that Respondent has not acquired any trademark or service mark rights in the MASTERCARD Mark. Respondent has not used the Disputed Domain Name in connection with an authorized or bona fide offering of goods or services.

Respondent argues that it is authorized to use the MASTERCARD Mark. Respondent has been accepting all major credit cards including MasterCard, since it opened in 1982 for payment for cruises, airline tickets, tours and other travel items. Respondent has also run promotions which require the use of MasterCard. Respondent asserts that it clearly has a relationship with MasterCard.

Complainant replied to Respondent’s allegations that Respondent’s assertions of the ways it believes that it is entitled to use the MASTERCARD Mark are prohibited activities. Complainant asserts that Respondent fails to satisfy the Oki Data test. The promotional material of the MASTERCARD Mark was not approved by Complainant and does not describe Respondent’s relationship to Complainant. Lastly, Respondent also offers travel services which compete with Complainant.

In this regard, the Panel finds for Complainant. The mere acceptance of MasterCard for payment does not create rights or legitimate interests for Respondent in the MASTERCARD Mark. Furthermore, the use of the MASTERCARD Mark for promotions by Respondent was unauthorized. Such uses do not create rights and legitimate interest and therefore such sales of goods and services cannot be bona fide.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product

The Panel has already found that the Disputed Domain Name is confusingly similar to the MASTERCARD Mark. The Panel further finds that the promotional activities of Respondent using the MASTERCARD Mark are an intentional attempt to attract Internet users for commercial gain.

Therefore, the Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv) and that Respondent has registered and used the Disputed Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <mastercardtravel.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: August 19, 2013