Mastercard’s “Priceless” mark isn’t priceless, panel rules
Friday, April 27th, 2012
WIPO arbitration panel finds against Mastercard on “Priceless” claims.
A World Intellectual Property Organization panelist has ruled against Mastercard in a dispute over domain names related to its “Priceless” trademark.
In both cases the owner of the domains didn’t bother to respond to the allegations. But panelist Nasser A. Khasawneh determined there wasn’t enough proof that the domains were registered and used in bad faith.
Mastercard cited links on the parked domain names referring to “hotel reservations, restaurant coupons, and tours” as competitive and proof that the sites were designed to take advantage of Mastercard’s trademark. But Khasawneh was not moved:
there is no direct claim by Complainant that the PRICELESS family of marks is associated with hotel reservations, restaurant coupons, and tours. Instead, the Complaint states that the PRICELESS marks are â€œexclusively associated with the high quality financial services and related goods and services offered by MasterCard.â€
Khasawneh also says that Mastercard’s claims in the cases around its “priceless” mark are really broad, and effectively would apply to anything on the web:
…the Panel finds Complainantâ€™s claims to goods and services associated with its marks to be very broad. For example, claims under United States Registration No. 3,693,182 for PRICELESS.COM (registered in October 2009) include â€œPromoting the goods and services of others by means of coupons, discounts, advertisements, incentives generated in connection with the use of credit and debit cards, electronic links to merchant and retailer web sites, and through promotional contests.â€
The Panel observes that most links to commercial web sites that appear throughout the Internet fall within the quoted trademark claim, because they â€œ[p]romote the goods and services of others . . . through electronic links to merchant and retailer web sitesâ€¦.â€ The Panel feels that to infer bad faith use on the basis of competition with Complainant from the display of links on a website â€œpromoting the goods and services of others,â€ without more, is not merited. Such an inference would mean that bad faith use would be established for virtually any website displaying commercial links if the websiteâ€™s domain name was confusingly similar to Complainantâ€™s PRICELESS family of marks. As noted above, the Panel has already found that â€œpricelessâ€ is also a descriptive term, one that also appears as in registered trademarks of a large number of third party rightholders in addition to Complainant.
Having chosen to adopt such a descriptive term in a field occupied by other trademark holders, the Panel finds Complainantâ€™s trademark rights are necessarily limited for purposes of assessing the elements of this particular Policy dispute. Given the breadth of Complainantâ€™s trademark claims and the number of other apparently legitimate users of marks including the term â€œpriceless,â€ or confusingly similar terms, the Panel is not prepared to embrace such a sweeping conclusion.
Mastercard has additional cases pending before World Intellectual Property Organization covering pricelessnewyork.com, pricelessmexico.com, pricelesslosangeles.com, pricelessparis.com and pricelesslondon.com. Mastercard currently has a “Priceless Cities” campaign. It will be interesting to see how those cases are decided.