Advanta Corp. v. St. Kitts Registry
Claim Number: FA0708001068741
Complainant is Advanta Corp. (“Complainant”), represented by Bruce
A. McDonald, of Schnader Harrison Segal & Lewis LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <advantacard.com>, registered with Moniker Online Services, Inc.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On September 7, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 27, 2007 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@advantacard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <advantacard.com> domain name is confusingly similar to Complainant’s ADVANTA mark.
2. Respondent does not have any rights or legitimate interests in the <advantacard.com> domain name.
3. Respondent registered and used the <advantacard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Advanta Corp., is one of the nation’s largest
issuers of credit cards to small businesses and professionals. Complainant has continuously used the ADVANTA
mark since 1987 in connection with credit card services and currently holds
numerous registrations of the mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,732,354 issued
Respondent’s <advantacard.com>
domain name was registered on
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 has sufficiently established its rights in the
ADVANTA mark through registration of the mark with the USPTO pursuant to Policy
¶ 4(a)(i). See
Respondent’s <advantacard.com>
domain name contains Complainant’s mark in its entirety and includes the
generic top level domain (“gTLD”) “.com” and the generic term “card,” which
describes services offered under Complainant’s mark. It is well established that the inclusion of
a gTLD or a generic descriptive term do not negate a finding of confusing similarity. The Panel finds that Respondent’s <advantacard.com> domain name is
confusingly similar to Complainant’s ADVANTA mark pursuant to Policy ¶
4(a)(i). See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level
of the domain name such as “.net” or “.com” does not affect the domain name for
the purpose of determining whether it is identical or confusingly similar); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where the respondent’s domain name combines
the complainant’s mark with a generic term that has an obvious relationship to
the complainant’s business).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent does
not have any rights and legitimate interests in the disputed domain name. See TotalFinaElf E&P USA, Inc. v. Farnes,
FA 117028 (Nat. Arb. Forum
Respondent has not submitted a response to the
Complaint. Therefore, the Panel presumes
that Respondent has no rights or legitimate interests in the <advantacard.com> domain name but
will still consider all the available evidence in the record under
consideration of the factors contained in Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means
that Respondent has not presented any circumstances that would promote its
rights or legitimate interests in the subject domain name under Policy ¶
4(a)(ii).”); see also Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate
for the panel to draw adverse inferences from the respondent’s failure to reply
to the complaint).
Nowhere in Respondent’s WHOIS information or anywhere else
in the record does it affirmatively indicate that Respondent is or ever has
been commonly known by the disputed domain name. Moreover, Respondent has not sought nor
received permission from Complainant to use the ADVANTA mark. As such, the Panel finds that Respondent is
not commonly known by the <advantacard.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the
respondent was not commonly known by the mark and never applied for a license
or permission from the complainant to use the trademarked name).
The
<advantacard.com> domain name contains Complainant’s mark
and resolves to a website featuring a commercial search engine, advertisements,
and sponsored links to third-party websites, most of which offer financial
services in direct competition with those offered under Complainant’s
mark. It is also presumed that
Complainant is financially benefiting from these advertisements and links. Consequently, the Panel finds that this 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
eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the
respondent’s use of the complainant’s entire mark in domain names makes it
difficult to infer a legitimate use); see
also Black & Decker Corp. v.
Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002)
(holding that the respondent’s use of the disputed domain name to redirect
Internet users to commercial websites, unrelated to the complainant and
presumably with the purpose of earning a commission or pay-per-click referral
fee did not evidence rights or legitimate interests in the domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (holding that the respondent’s use of the disputed domain name to host a
series of hyperlinks and a banner advertisement was neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
domain name).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The
<advantacard.com> domain name resolves to a website
featuring a commercial search engine, advertisements, and sponsored links to
third-party websites, most of which offer financial services in direct
competition with those offered under Complainant’s mark. The Panel finds Respondent registered and is
using the disputed domain name in bad faith because such use is directed at
disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Respondent’s <advantacard.com>
domain name contains sponsored links to third-parties that presumably
financially benefit Respondent through the use of click-through fees. Consequently, the Panel finds this to be
further evidence of Respondent bad faith registration and use of the disputed
domain name pursuant to Policy ¶ 4(b)(iv).
See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum
The Panel finds that the factors listed under Policy ¶ 4(b)
are not the exclusive examples of evidence of bad faith registration and use. See Cellular One Group v.
Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified
in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also CBS Broad., Inc. v.
LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly
recognizes that other circumstances can be evidence that a domain name was
registered and is being used in bad faith”).
Complainant’s ADVANTA mark was registered with the USPTO on
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advantacard.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 18, 2007
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