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December 23, 2010 / Nate Harris

Visa loses bid to recover Premiercards.net

Summary of Visa Europe Limited v. Name Administration Inc. (BVI)

(WIPO Case No. D2010-1531)

Filed: September 10, 2010; Decided: December 14, 2010 (Panelists: Sebastian Hughes, Christophe Caron, and Alan L. Limbury)

Disputed domain name: <premiercard.net>

premiercard.net

The Parties

Complainant Visa Europe Limited (“Visa”) provides credit cards to individual and corporate customers of over 200 banks in Europe. It owns European trademark registrations for PREMIER with priority dates going back to as early as 1996. Visa maintains a website at <premier.tel>.

Respondent is a privacy service located in the Cayman Islands. The disputed domain was first registered on December 19, 2005, and again in 2008 when the initial registration expired. The disputed domain points to a pay-per-click website that hosts links to Visa’s competitors, among others.

After Visa became aware of the disputed domain, it apparently corresponded with Respondent. Visa’s European trademark registrations were also the subject of two cancellation proceedings.

Identical or Confusingly Similar

The Panel finds the word “premier” is the predominant part of the disputed domain, paired with the generic word “card.” Disregarding the graphic elements of Visa’s marks, the disputed domain name is confusingly similar to Respondent’s mark.

Visa failed to notify the Panel of the two cancellation proceedings pending against its registrations. Respondent argued that this was an attempt by Visa to shore up its trademark rights by getting a favorable, possibly default decision under the UDRP. According to Respondent’s theory, Visa could then point to the UDRP decision as evidence of its trademark rights.

The Panel refuses to accept Respondent’s characterization, pointing out that Visa was not obligated to point out the co-pending cancellations. Respondent’s assertion “is unsupported by any cogent facts and is any event not a relevant factor to be taken into account by the Panel[.]”

Rights or Legitimate Interests

There is no evidence that Respondent registered or used the disputed domain with Visa’s permission, and Visa’s rights in the PREMIER mark predate the disputed domain name by several years. Therefore, the Panel finds that Visa has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain.

However, there is no evidence that Respondent was aware of Visa’s mark when it registered the disputed domain, which consists of the common words “premier” and “cards.” In the Panel’s view, Respondent does have a right or legitimate interest in using these descriptive terms as part of its domain name. With its prima facie case thus overcome, Visa has failed to prove the second prong.

Bad Faith

“In the Panel’s view, the wording component of the Trade Marks is descriptive. It has been held that a respondent should be free to register domain names comprising common or generic terms on a ‘first come, first served’ basis as long as they are used descriptively.” The use of the words making up the disputed domain were used commonly in connection with credit card and banking services. What’s more, there is no evidence to suggest that Respondent was aware of Visa’s mark when it registered the disputed domain. Therefore, Visa has failed to establish that disputed domain was registered or used in bad faith.

Decision

The Complaint is denied.

Commentary

Though I haven’t seen the complaint, the Panel’s emphasis on the “wording component” of Visa’s marks suggests to me that Visa was trying to prove rights in the word portion of the marks through evidence of its design marks. In other words, while Visa may (or may not) have proven that Respondent was likely familiar with its marks as a whole, it did not show that Respondent would have recognized that the words appearing in those marks functioned as a mark in isolation.

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