DECISION

MasterCard International Incorporated v. A.s.D's ParsDomain.com d/b/a Tartan Process Co., Ltd.

Claim Number: FA0307000174668

PARTIES

Complainant is MasterCard International Incorporated, Purchase, NY, USA (“Complainant”) represented by Abigail Rubinstein, of Baker Botts, L.L.P..  Respondent is A.s.D's ParsDomain.com d/b/a Tartan Process Co. Ltd., Tehran, ISLAMIC REPUBLIC OF IRAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <emastercard.net>, registered with Bulkregister.com.

PANEL

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 28, 2003; the Forum received a hard copy of the Complaint on July 30, 2003.

On July 29, 2003, Bulkregister.com confirmed by e-mail to the Forum that the domain name is registered with Bulkregister.com and that the Respondent is the current registrant of the name. Bulkregister.com has verified that Respondent is bound by the Bulkregister.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 August 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 2, 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@emastercard.net by e-mail.

A timely Response was received on September 3, 2003. However, the exhibits for this Response were not received until after the deadline for the Response had expired. Although the Response is not in compliance with UDRP Rule #5(a), the Panel has chosen to consider the Response. See Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a Panel may consider a Response which was one day late, and received before a Panelist was appointed and any consideration made).

Complainant’s Additional Submission was received and determined to be in compliance with Forum Supplemental Rule #7 on September 8, 2003.

Respondent’s Additional Submission was received and determined to be in compliance with Forum Supplemental Rule #7 on September 15, 2003.

The parties submitted submissions by e-mail which the Panel has considered.

On September 17, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.  Respondent asks that the domain name not be transferred and that the Panel make a finding of reverse domain name hijacking.

PARTIES’ CONTENTIONS

            A.  Complainant

Complainant makes the following assertions:

1. Respondent’s <emastercard.net> domain name is confusingly similar to Complainant’s MASTERCARD trademark.

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

3. Respondent registered and used the <emastercard.net> domain name in bad faith.

B. Respondent

Respondent contends that its Registration of <emastercard.net> occurred in connection with the business of MasterCard prepaid Internet cards.

Respondent claims that it purchases MasterCard prepaid cards from a licensee of Complainant, and that Respondent’s sale of these cards is a bona fide business offering of goods and services.  MasterCard prepaid cards are sponsored by MasterCard, therefore displaying the MasterCard design and trademark is not prohibited but is required for Respondent.

Respondent contends that MasterCard’s instructions to its authorized licensees to use the MASTERCARD brand name “prominently and consistently in all communications” is authorization to use the MASTERCARD mark as part of a domain name.

Respondent contends that the terms “e,” “master” and “card” are each generic.  Respondent further contends that the terms “master” and “card” are used in a variety of contexts.  Respondent says that these terms, taken together, cannot be considered to be confusingly similar to Complainant’s MASTERCARD mark.  Respondent maintains that the generic nature of the disputed domain name and the failure of Complainant to “use” its MASTERCARD mark in Iran vests Respondent with rights and legitimate interests in the domain name.

Respondent contends that it has spent three years investing and promoting Complainant's trademark "for free" in a part of the world in which Complainant’s name and trademark has no value or identity.  Respondent says that Complainant is unknown in Iran.

Respondent argues that Complainant does not have rights in and to the term MASTERCARD because it is widely used by third parties. 

Respondent claims that the disputed domain name reflects its business name, evidence that Respondent has rights or legitimate interests in the domain name.  Respondent says that it has been commonly known by the domain name since 2001. 

Respondent contends that the resolution of a license dispute is inappropriate under the Policy.

Respondent asserts that Complainant, by waiting over two years to bring this action, has acquiesced in Respondent’s registration and use of the domain name.

Respondent contends that as Complainant received its MASTERCARD trademark in Iran over a year after Respondent registered the disputed domain name, and as Complainant has not established secondary meaning associated with the MASTERCARD mark in Iran, Respondent could not have registered the disputed domain name in bad faith. 

Respondent argues that as an agent of an authorized licensee of Complainant, it could not have been using the disputed domain name in bad faith.

Respondent claims that no business disruption has been occurred, since the cards are sponsored by Complainant’s authorized licensees.  Respondent contends that it is not in competition with Complainant, but that Respondent’s sale of Complainant’s cards benefits Complainant.

 

C. Additional Submissions

Complainant’s Additional Submission

Complainant asserts that the MASTERCARD mark is not generic.

Complainant maintains that Respondent’s activities are unlicensed and unauthorized.

Complainant alleges that Respondent registered the domain name with actual or constructive notice of its rights in the MASTERCARD mark.

Respondent’s Additional Submission

Respondent contends that the domain name <emastercard.net> is not identical or confusingly similar to Complainant’s trademark, MASTERCARD.  Complainant argues that Complainant’s trademark is generic.

Respondent says that Complainant’s trademark MASTERCARD is unknown in Iran.  Respondent contends that its fame in Iran is stronger than that of Complainant.

Respondent contends that it is not competing with Complainant or its licensees, because there's no licensed member bank or authorized retail stores selling these cards in Iran.  Furthermore, the cards sold by Respondent are also issued through authorized licensees with benefit to both Complainant and the licensees.

FINDINGS

Complainant is MasterCard International Incorporated (hereinafter “MasterCard” or “Complainant”).  MasterCard’s Complaint is based on its trademark rights in the name MASTERCARD.  MasterCard has received trademark registrations for MASTERCARD in the United States and worldwide, including Iran, the country in which Respondent is located.  MasterCard’s United States Federal Registrations containing the mark MASTERCARD include U.S. Reg. No. 1,186,117 for financial services, namely providing bank card services; Reg. No. 1,292,519 for financial service, namely assisting its members in the sale of travelers’ cheques, integrated funds management programs and money order services; and Reg. No. 1,604,606 for printed matter and publications, namely bank cards, pamphlets, brochures, newsletters and magazines of a financial nature.

MasterCard and/or its predecessor has been in the payment card business since 1966.  Since at least 1980, Complainant has operated under the name and mark MASTERCARD.  Complainant has become well known to members of the public, as well as to members of the banking and financial services community as a leader in the payment card field.  Complainant uses the name and mark MASTERCARD to identify and distinguish its financial services and products, and complementary services and products, from those of others. 

MasterCard has spent substantial time, effort and money over the years insuring that consumers around the world associate MASTERCARD exclusively with Complainant.  Indeed, in the years 2000 and 2001 alone, Complainant has spent over US $1.2 billion to support and build value in the MASTERCARD brand worldwide.  In the first nine months of 2002 alone, Complainant spent US $398 million worldwide on advertising and market development versus US $330 million during the same period in 2001.

In addition, MasterCard has registered and/or advertises and conducts business on the Internet through numerous domain names containing the name and mark MASTERCARD or variants thereof, including, inter alia, <mastercard.com>, <mastercard.net>, <mastercard.org>, <mastercardonline.com>,  <mastercardonline.net> and <mastercardonline.org>.  The earliest of these registered domain names, <mastercard.com>, was registered on July 27, 1994. 

MasterCard is one of the world’s most used payment cards.  MasterCard has over 590 million MASTERCARD payment card users globally.  MASTERCARD payment cards are issued by 25,000 licensed member banks and financial institutions having more than 200,000 branches.  Moreover, over 30 million merchants accept Complainant’s MASTERCARD payment cards worldwide.  MASTERCARD is currently one of the most famous and widely recognized trademarks in the world.

Respondent has not been licensed, authorized, or sponsored by MasterCard to provide credit and debit services or to use its world famous marks.

Respondent is reselling Complainant's payment cards.  Since 2001, Respondent has purchased cards from a licensee of Complainant and has sold the cards to consumers.  Respondent has invested time and money to advertise the business and the domain name <emastercard.net> in Iran.  Complainant does not have any active business in Iran. Respondent claims that a search result in <google.com> on the term "internet Iran MasterCard" returned 23,600 results with Respondent in 1st position.

Complainant received certification for the registration of its MASTERCARD trademark in Iran on July 17, 2002 about one year after registration of domain name <emastercard.net> by Respondent on June 26, 2001.

Respondent uses the domain name <emastercard.net> to solicit consumers to register for a “MasterCard e-commerce card” for a substantial fee.  Respondent displays, numerous times, on its home page, the MASTERCARD mark and MasterCard’s arbitrary and highly distinctive Interlocking Circles Design presented in the colors red and orange-yellow.   

MasterCard has a program where it grants a license to third parties to distribute MasterCard payment cards issued through its member banks under the quality control of MasterCard. 

Respondent claims that General Technological Services created an anonymous Prepaid Internet Disposable Shopping Card called “PIC” issued by Fransabank, s.a.l. through MasterCard International and that Fransabank s.a.l. is an authorized issuer of Complainant's card.

General Technological Services s.a.l. has certified that Tartan – Process Co. LTD, presented by Mr. Ali Dehnair Chairman and Managing Director is their non-exclusive retailer in Iran for the PIC card product.

An email of August 3, 2003 from Ali Dehnair to Davis Floor of Complainant states “if the domain emastercard.net’s the matter, we do not have any use for it, except distribution of your cards.  If you don’t want us to be in the business anyway, we do not need this name so.”

Respondent has not been licensed or authorized by MasterCard to use its world famous MASTERCARD mark in a domain name.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 rights in the MASTERCARD mark through registration and use of the mark worldwide. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).  See also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law).

The  domain name <emastercard.net> is confusingly similar to the MASTERCARD mark. See Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks); see also Crédit Lyonnais v. Ass’n Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter “e” and a hyphen does not affect the power of the mark in determining confusing similarity).

Respondent argues that its use of <emastercard.net> is not confusingly similar to MasterCard’s MASTERCARD mark, because there are numerous third party uses of MASTER and CARD and therefore “the term has no exclusive meaning to the Complainant’s business.”  Respondent’s argument ignores the fact that Complainant is the owner of registrations all over the world for MASTERCARD.  Moreover, ICANN Panels have recognized MasterCard’s rights and ordered the transfer of domain names incorporating the term MASTERCARD. See MasterCard Int’l Inc. v. Oh Yeonghwan, FA 145228 (Nat. Arb. Forum Mar.18, 2003) (ordering the transfer of <mastercard.info>); Mastercard Int’l Inc. v. Tieu, DBIZ 2002-00124 (WIPO June 29, 2002) (“the mark MASTERCARD is famous worldwide”); and MasterCard Int’l Inc. v. John Henry Enter., D2001-0632 (WIPO June 28, 2001) (ordering the transfer of <mastercardinternational.com>). 

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

Rights or Legitimate Interests

Although Respondent claims that a licensee of MasterCard has granted Respondent a non-exclusive license to market prepaid Internet cards in Iran, Respondent has failed to show that MasterCard authorized such sub-licenses.  More significantly, even if Respondent were authorized to market prepaid Internet cards by MasterCard, Respondent has failed to show that any license agreement authorizes Respondent to use MasterCard’s trademark as a domain name.  As Respondent was not authorized to use the MASTERCARD mark in a domain name, the Panel finds that Respondent is not making a bona fide offering of goods or services at the disputed domain name and is not making a noncommercial or fair use of the domain name, rendering Policy ¶¶ 4(c)(i) and (iii) inapplicable to Respondent. See Allen-Edmonds Shoe Corp. v. Takin’ Care of Bus., D2002-0799, (WIPO Oct. 10, 2002) (even where a reseller is an authorized reseller, “without a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name”).  Respondent has failed to submit evidence of a license agreement or any authorization of Mastercard to use its MASTERCARD mark in a domain name. See MatchMaker Int’l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003).

Furthermore, the fame surrounding Complainant’s trademark permits the Panel to reasonably infer that Respondent is not commonly known by the disputed domain name. See MasterCard Int’l Inc. v. Oh Yeonghwan, FA 145228 (Nat. Arb. Forum Mar. 18, 2003) (“based on the fame of Complainant’s MASTERCARD mark, Respondent would be hard-pressed to establish that it is commonly known as MASTERCARD”); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).  As a result of the worldwide fame and recognition of the MASTERCARD mark and MasterCard’s worldwide trademark registrations, Respondent, prior to registration of the disputed domain name, was aware of Complainant and its rights.  Therefore, any use of the domain name <emastercard.net> without authorization from MasterCard cannot create any legitimate right or interest in the domain name. 

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

Registration and Use in Bad Faith

Respondent’s use of Complainant’s mark in the disputed domain name creates a likelihood of confusion with Complainant’s mark for commercial gain and is evidence that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. OfficeOnWeb Ltd., FA 151537 (Nat. Arb. Forum May 21, 2003) (holding that Respondent’s unauthorized use of the LASERJET mark to operate as a reseller of Complainant’s products constituted bad faith use and registration pursuant to Policy ¶ 4(b)(iv)); see also Procter & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002) (finding that the disputed domain name was registered and used in bad faith where Respondent, a distributor of Complainant’s products who was not a licensee of Complainant, used Complainant’s mark in its domain name, suggesting a broader relationship with Complainant and fostering the inference that Respondent was the creator of Complainant’s products rather than a mere distributor); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

Respondent contends that as Complainant received its MASTERCARD trademark in Iran over a year after Respondent registered the disputed domain name, and as Complainant has not established secondary meaning associated with the MASTERCARD mark in Iran, Respondent could not have registered the disputed domain name in bad faith. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“We are of the unanimous view that the trademark must predate the domain name”); see also Reid v. Chao, FA 154587 (Nat. Arb. Forum May 29, 2003) (finding that Respondent could not have registered the disputed domain name in bad faith where its registration came months before Complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the Panel).

However, when it registered the <emastercard.net> domain name, Respondent had actual knowledge of Complainant’s MASTERCARD trademark, even though the mark was not registered in Iran.  Not only is the mark of worldwide prominence, but the Respondent used the mark in its website to sell Complainant’s prepaid Internet cards.  The Panel concludes that Respondent registered the domain name with actual or constructive notice of MasterCard’s rights in the MASTERCARD mark.  See Entrepreneur Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); 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); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

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

Reverse Domain Name Hijacking

Complainant has not engaged in reverse domain name hijacking.

DECISION

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

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 30, 2003

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