MasterCard International Incorporated v. Silvio
Sierchio
Claim Number: FA0802001142711
PARTIES
Complainant is MasterCard International Incorporated (“Complainant”), represented by Robert
M. Wasnofski, of Dorsey & Whitney LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pricelesstv.com>, registered with Godaddy.com,
Inc.
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
electronically on February 5, 2008; the
National Arbitration Forum received a hard copy of the Complaint on February 6, 2008.
On February 6, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <pricelesstv.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 13, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 4, 2008 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@pricelesstv.com by
e-mail.
A timely Response was received and determined to be complete on March 4, 2008.
On March 8, 2008, Complainant timely submitted an Additional
Submission. On March 17, 2008,
Respondent timely filed an Additional Submission
On March 7, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration 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.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, MasterCard
International Incorporated, contends that it has established rights in the
PRICELESS mark by virtue of having registered the mark in several forms with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,370,508
issued July 25, 2000). Complainant also
filed a pending application for the PRICELESS TV mark on June 6, 2007 (Serial
No. 77/199454).
Complainant contends that Respondent’s <pricelesstv.com> domain name is confusingly similar to Complainant’s PRICELESS mark. Complainant contends that Respondent’s <pricelesstv.com> domain name includes Complainant’s PRICELESS mark in its entirety, adding the generic word “tv,” which directly relates to Complainant’s use of the PRICELESS mark for television advertisements, and the generic top-level domain (“gTLD”) “.com.”
Complainant contends that the disputed domain name does not currently
resolve to an active webpage. Moreover,
Complainant contends that Respondent has previously used the disputed domain
name to resolve to a pay-per-click website which featured links to the websites
of Complainant’s competitors.
Complainant contends it has never authorized Respondent to use the
PRICELESS mark and that Respondent was not commonly known by the <pricelesstv.com> domain name
prior to receiving notice of the dispute.
Complainant contends that the <pricelesstv.com> domain name does not currently resolve to a webpage. Respondent’s failure to make an active use of the disputed domain name is evidence of registration and use in bad faith
Complainant
also contends Respondent had actual or constructive knowledge of its PRICELESS
mark at the time Respondent registered the disputed domain name.
B. Respondent
Respondent Silvio Sierchio contends that Complainant’s PRICELESS TV mark was filed after Respondent registered the disputed domain name.
Respondent contends that Complainant has submitted only a list and no copies of actual registration certificates for any of the marks Complainant has claimed to have registered.
Respondent contends that Complainant lacks exclusivity in use of the PRICELESS mark.
Respondent purchased <pricelesstv.com>
on October 15, 2006, but the Complainant did not register its trademark until
June 6, 2007, which was almost 8 months after he had his site operating. Respondent contends that he has established rights and legitimate
interests in the disputed domain name though his earlier use, which began in
December of 2006. Respondent contends
that he has used the <pricelesstv.com> domain name to resolve to a
webpage where users could share their videos online with friends and family. Due
to his brother’s death, Respondent was forced to shutdown the website
temporarily because he couldn’t keep up with updates and the financial
demand. Respondent planned to redo the
website during the down time and expected to launch the new site some time in
the near future but he was unable to complete this work.
Respondent contends that the parking of the disputed domain name by a third party named SEDO was unintentional, de minimus, and accompanied by a disclaimer. The Respondent alleges that he had no knowledge or control as to the advertisements that were displayed and that the parked page was pulled within one or two days after Respondent discovered its presence. Additionally, Respondent contends that while the disputed domain name was parked, the advertisements generated by SEDO were accompanied by a disclaimer which further demonstrates Respondent’s non-involvement with the parking of the page.
PRICELESS is only registered as goods and services, not promotion of a service. It is only a service mark and not a trademark
and all iterations of the same word can not be claimed as completely
protected. The only time the words
“video clips” was filed by MasterCard was after the actual use by Respondent
and it was filed under a service mark PRICELESS TV. Since <pricelesstv.com>
was in the top 10% of websites in early 2007, for MasterCard to file and claim
that his site was not known to them is dishonest.
There are 76 other “PRICELESS” trademarks and service marks owned by
others listed in the USPTO. “Priceless”
is also such a common word that there are over 25 URL listings with “priceless”
in the name.
The dictionary reveals the use of the word “priceless” long predates
that of MasterCard in 1998 as the term dates from before 1910. While Master Card has sole use of the term
for the sales of credit cards, many others, including Respondent, maintain the
use of the word for many other purposes.
As Respondent has common law trademark use of the term PRICELESS TV as
shown by the initial registration of the name on 10/15/2006, MasterCard in bad
faith registered the name on June 6, 2007.
In the application Master Card specifically for the first time used the
term “video clips,” the items that Respondent’s site featured.
Even if PRICELESS was registered by MasterCard and used prior to
PRICELESS TV, it has no relevancy here since the use is completely
different. PRICELESS as registered by
MasterCard was solely for
Financial
Services, namely, providing credit card, debit card, charge card and stored
value smart card services, prepaid telephone calling card services, cash
disbursement and transaction authorization and settlement services.
Nowhere are the terms “promotion”, “advertising” or “video clips” used.
Respondent has made good faith use of the domain name. <pricelesstv.com>
went live in December 2006 with 7 pages and, with the adding of videos by
friends and members, grew to 21 pages in 2007.
For MasterCard to claim they had no knowledge of this site in 2007 when
they filed the PRICELESS TV service mark is beyond belief.
Infringement by advertising card services has not occurred as the goods
and service were never offered by <pricelesstv.com>,
only a de minimus promotion not under the control of
Respondent, but by the actions of SEDO, the web page parking company, and their
contractor. The parked page was pulled
within one or two days of seeing what was occurring. A disclaimer was made disclaiming any
connection with the advertisements on the parked page, and that was
discontinued almost immediately.
Respondent counterclaims to stop MasterCard’s use of the term PRICELESS
TV in relation to video clips. Despite
the knowledge that Respondent’s site existed and that Respondent had a common
law trademark on the term PRICELESS TV, MasterCard has continued to use the
term in their web site.
C. Complainant’s Additional Submission
Complainant contends that Respondent sought to sell the domain name to
Complainant for an amount in excess of his documented out-of-pocket costs directly
related to the domain name. Respondent
registered and used the domain name with knowledge of Complainant’s rights in
the famous PRICELESS mark and PRICELESS TV commercials. Respondent registered and used the domain
name in connection with a pay-per-click website featuring links to third
parties offering credit card services. Respondent
seeks to absolve himself of responsibility by arguing that the pay-per-click
site was active for only a brief period of time and that it existed due to the
actions of SEDO, a web page parking company.
Respondent’s current passive holding of the domain name also constitutes
bad faith use. The domain name is
currently inactive. Complainant’s use
and registration of the PRICELESS mark and the success of its PRICELESS TV
commercials long predate Respondent’s registration and use of the domain name. Respondent did not register the domain name
until October 15, 2006, and did not use it until December 2006. Complainant’s use of the common law mark
PRICELESS TV also predates Respondent’s registration and use of the domain
name. Complainant used the PRICELESS Mark
in connection with video uploading and sharing before Respondent.
Respondent’s alleged evidence is irrelevant and unsubstantiated. Respondent’s counterclaim is baseless. Respondent requests an injunction prohibiting
Complainant from using “Priceless TV” on Complainant’s website. Injunctive relief is beyond the scope of
remedies available under the UDRP.
D. Respondent’s Additional
Submission
The web site shut down about 1 month after Respondent’s brother’s
death, with plans to reopen in the near future.
Parking the domain name is not a crime, nor does it show bad faith.
Respondent did not register the domain in bad faith. Respondent’s site was operational for a
minimum of eight to nine months.
Respondent had an idea to mainly bring his small town community
together, using <pricelesstv.com>.
“Priceless” is a commonly used word.
MasterCard only has rights in the word PRICELESS for financial services
and nothing else. Respondent denies that
MasterCard had any exclusive right or rights to the PRICELESS mark in
combination with other words specifically PRICELESS TV.
Respondent never offered to sell the domain to the Complainant.
The fact that the web page parking company placed advertisements on
Respondent’s page was beyond Respondent’s control and does not show bad faith.
The Alexa pages provided show that when Respondent’s site had active
pages, the site was in the top 100,000 sites on the web. Despite Respondent’s common law trademark use
of the term PRICELESS TV as shown by the initial registration of the name on
10/15/2006, MasterCard in bad faith registered the name on June 6, 1007.
The listing by the Complainant claiming registrations around the world
are not official documents and should be discounted. The only registration of PRICELESS TV was
after the use by Respondent on the web with an active website serving
videos. The claim that the video
services should be covered as a “Natural expansion of services” not covered by
a service mark, is also ridiculous.
MasterCard has a history of making bad faith representations against
web sites and starting actions without a legal basis.
FINDINGS
Complainant MasterCard is an incorporated association of over 22,000
banks and other foreign and domestic member financial institutions. It has been in the payment card business
since 1966 and has become well and favorably known to members of the public, as
well as members of the banking and financial services community, as a leader in
the payment card field. Complainant has
owned and administrated the MASTER CHARGE bank card program since 1966 and the
MASTERCARD payment card program since 1980.
Its members, pursuant to trademark license agreements, issue payment
cards and facilitate financial transactions that are effectuated through the
use of such cards. Complainant’s purpose
is to facilitate the interchange of funds through payment cards, credit cards,
debit cards, change cards and stored-value cards on a worldwide basis.
During 1997, Complainant commissioned the creation of a series of
advertisements that feature the names and/or images of a number of goods or
services purchased by one or more individuals and which, with voiceovers and/or
visual displays, convey to viewers the price for each (“Priceless
Advertisements”). At the end of each
Priceless Advertisement, a phrase identifying some intangible that cannot be
purchased (such as “a day where all you have to do is breathe”) is followed by
the word and/or voice over: “PRICELESS”.
Complainant has spent hundreds of millions of dollars in connection
with the priceless Advertisements and the PRICELESS mark since the first
broadcast of the ads in the fall of 1997.
During the last five (5) years alone, Complainant has spent well in
excess of $500,000,000 on marketing and advertising its products and services
worldwide and, for the five (5) year period prior thereto, spent comparably
substantial sums.
The Priceless Advertisements are seen in nearly 100 countries and in 50
languages. Complainant has created a
PRICELESS TV feature on its website at http://www.priceless.com/us/personal/en/
pricelesstv/> where the public can view favorite Priceless Advertisements
(“PRICELESS TV Showcase”).
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.
Complainant, MasterCard
International Incorporated, has established rights in the PRICELESS mark by
virtue of having registered the mark in several forms with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 2,370,508 issued July 25,
2000). Complainant also filed a pending
application for the PRICELESS TV mark on June 6, 2007 (Serial No.
77/199454). The Panel finds that
Complainant’s registrations with the USPTO sufficiently establish rights in the
PRICELESS mark pursuant to Policy ¶ 4(a)(i).
See Miller Brewing
The Panel finds that Respondent’s <pricelesstv.com> domain name is confusingly similar to Complainant’s PRICELESS mark. Respondent’s <pricelesstv.com> domain name includes Complainant’s PRICELESS mark in its entirety, adding the generic word “tv,” which directly relates to Complainant’s use of the PRICELESS mark for television advertisements, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the additions of the word “tv” and a gTLD are insufficient to distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The disputed domain name does not currently
resolve to an active webpage. The Panel
finds Respondent’s failure to make an active use of the disputed domain name is
evidence that Respondent lacks rights and legitimate interests in the <pricelesstv.com> domain name
pursuant to Policy ¶¶ 4(c)(i) and (iii).
See Hewlett-Packard Co. v. Shemesh, FA 434145
(Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a
domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276
(Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or
legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶
4(c)(iii) where it failed to make any active use of the domain name).
Respondent contends that he has established rights and legitimate interests in the disputed domain name though its earlier use. Respondent has used the <pricelesstv.com> domain name to resolve to a webpage where users could share their videos online with friends and family. Respondent shut down the website for a short period of time due to unforeseen circumstances that demanded his time. Moreover, Respondent contends that he intends to restart the webpage. The Panel finds that intentionally diverting Internet users to a competing website by using a disputed domain name which is confusingly similar to a complainant’s mark is neither a bona fide offering of goods and services pursuant to Policy ¶¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO February 22, 2001) (“Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights”).
Complainant never authorized Respondent to use the PRICELESS mark. Respondent was not commonly known by the <pricelesstv.com> domain name prior to receiving notice of the dispute. The Panel finds that Respondent lacks rights and legitimate interests in the <pricelesstv.com> domain name pursuant to Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The Panel concludes that
Complainant has satisfied Policy ¶ 4(a)(ii).
The <pricelesstv.com> domain name does not currently resolve to a
webpage. The Panel finds Respondent’s
failure to make an active use of the disputed domain name as evidence of
registration and use in bad faith 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 failure to make an active use of the domain name
satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug.
30, 2000) (finding that the respondent made no use of the domain name or
website that connects with the domain name, and that failure to make an active
use of a domain name permits an inference of registration and use in bad
faith).
Respondent has previously used the <pricelesstv.com> domain name to operate a website featuring links to the websites of Complainant’s competitors for Respondent’s commercial gain. The Panel infers that Respondent has profited from such use through the collection of referral fees for each redirected Internet user. The Panel finds that Respondent’s use was likely to have lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting websites. Such use may be found to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Some of the links previously
featured on Respondent’s resultant website operated in competition with
Complainant’s business. The Panel finds that such use constitutes a
disruption of Complainant’s business and is therefore evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn
v. Lim, FA 874447 (Nat. Arb. Forum
Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶
4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors).
Respondent had actual or constructive knowledge of Complainant’s PRICELESS mark at the time Respondent register the disputed domain name. The Panel finds that Respondent’s registration despite such knowledge of Complainant’s mark is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Respondent’s Counterclaim
Respondent’s counterclaim for
injunctive relief is not within the scope of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that Complainant’s relief shall be GRANTED. Respondent’s Counterclaim is DISMISSED without prejudice.
Accordingly, it is Ordered that the <pricelesstv.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Panelist
Dated: March 26, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum