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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mastercard Prepaid Management Services Limited v. Cash SDSD

Case No. D2020-1938

1. The Parties

The Complainant is Mastercard Prepaid Management Services Limited, United Kingdom, represented by Dechert, United Kingdom.

The Respondent is Cash SDSD, New Zealand.

2. The Domain Name and Registrar

The disputed domain name <cash-passport.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 July 24, 2020. On July 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2020, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2020.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on September 21, 2020. 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 part of the MasterCard group of companies focusing its business on prepaid travel cards around the world. The Complainant is the owner of the trademark CASH PASSPORT, registered in various jurisdictions. For example, the Complainant’s trademark is registered as a European Union trademark No. 0949165 since October 15, 2007.

The disputed domain name was registered on December 16, 2019 and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant offers a variety of prepaid travel cards including the CASH PASSPORT range of prepaid cards. The Complainant has built up a substantial reputation and goodwill in the trademark.

The disputed domain name is confusingly similar to the Complainant’s registered trademark as it consists of the Complainant’s entire trademark with the addition of a hyphen, which is classic typosquatting.

The Complainant has not permitted the Respondent to use the Complainant’s trademark or to apply for a domain name incorporating the trademark. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent chose the disputed domain name specifically because it is confusingly similar to the Complainant’s trademark and would create an association with the Complainant’s trademark. There is no obvious reason why the disputed domain name was selected by the Respondent, leading to the suggestion that it was selected to trade off the reputation of the Complainant’s trademark.

The Respondent has registered the disputed domain name primarily for the purpose of disrupting the Complainant’s business. The Respondent must have been aware of the Complainant’s trademark and hence its use is intended to lead consumers to believe that they have reached the Complainant’s website.

The Respondent is holding the disputed domain name passively. Previous UDRP panels have consistently held that passive holding of domain names can be considered bad faith registration and use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark. The Complainant has shown that it is the owner of the registered trademark CASH PASSPORT.

In the disputed domain name, the Complainant’s trademark is included in its entirety, the only exception being that in the disputed domain name the words “cash” and “passport” have been connected with a hyphen. This is not sufficient to render the names different, especially as the added hyphen merely separates the two words of the Complainant’s trademark. The Panel considers that this is a typical case of typosquatting; see section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests in the disputed domain names.

It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and section 2.1 of WIPO Overview 3.0.

The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to register and use the disputed domain name. The Complainant has also sufficiently demonstrated that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that [the Respondent has] registered or has 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 the Complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent has] 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 [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”

Considering that the Complainant has been using its trademark 18 years before the registration of the disputed domain name and is a major company in the financial industry, it is clear that the Respondent must have been aware of the Complainant when registering the disputed domain name. Therefore, the Panel finds the disputed domain name was registered in bad faith.

The disputed domain name currently resolves to an inactive website. Accordingly, the disputed domain name is not in active use; see, e.g., Accenture Global Services Limited v. Domain eRegistration, WIPO Case No. D2018-1994.

This, however, does not prevent the finding of bad faith under the doctrine of passive holding. See section 3.3 of WIPO Overview 3.0. Considering that the Panel has found that the Complainant’s trademark and the disputed domain name are almost identical, that the Respondent has not responded to the Complaint or to the Complainant’s pre-complaint letters, that the Respondent has at least initially concealed its identity, and that there are no obvious good faith or legitimate interests for the Respondent to register the disputed domain name, the Panel considers, on balance, that the disputed domain name has been registered and is being used in bad faith.

Therefore, the Panel finds that the third element of the Policy is fulfilled.

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 <cash-passport.com> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: October 5, 2020

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