Advanta Corp. v. Wan-Fu China, Ltd.
Claim Number: FA0802001143779
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 <advantagbank.com>, registered with DomainDoorman, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 12, 2008.
On February 12, 2008, DomainDoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <advantagbank.com> domain name is registered with DomainDoorman, LLC and that Respondent is the current registrant of the name. DomainDoorman, LLC has verified that Respondent is bound by the DomainDoorman, LLC 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 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 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@advantagbank.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
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 <advantagbank.com> domain name is confusingly similar to Complainant’s ADVANTA mark.
2. Respondent does not have any rights or legitimate interests in the <advantagbank.com> domain name.
3. Respondent registered and used the <advantagbank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Advanta Corp., is a company that offers credit cards and financial services to small businesses and professionals. Complainant first registered its ADVANTA mark with the United States Patent and Trademark Office (“USPTO”) on April 12, 1988 (Reg. No. 1,487,579). In addition, Complainant has several other registrations with the USPTO for its ADVANTA marks.
Respondent registered the disputed domain name on November 4, 2008. Respondent’s disputed domain name resolves to a parked website which displays links to third-party websites that offer financial products and services which compete with Complainant. In addition, Respondent has been the subject of several UDRP disputes in which panels have ordered Respondent to transfer the disputed domain names to the respective complainants. See Morgan Stanley v. Wan-Fu China, Ltd., FA 1081669 (Nat. Arb. Forum Nov. 16, 2007); see also Larry Bond v. Wan-Fu China, Ltd., FA 1094208 (Nat. Arb. Forum Nov. 20, 2007); see also Enterprise Rent-A-Car Co. v. Wan-Fu China, Ltd., FA 1122715 (Nat. Arb. Forum Jan. 25, 2008).
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 holds several registrations for its ADVANTA mark with the USPTO. The Panel finds this is adequate evidence that Complainant has rights in its ADVANTA mark pursuant to Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <advantagbank.com> domain name fully incorporates Complainant’s ADVANTA mark with the descriptive term “bank” and the letter “g.” The term “bank” is descriptive of Complainant because Complainant’s business includes providing banking services to professionals and small businesses. Additionally, panels have generally held the addition of the generic top-level domains (“gTLD”) “.com” is irrelevant when determining whether a disputed domain name is identical or confusingly similar to a mark. Therefore, the Panel finds Respondent’s <advantagbank.com> domain name is confusingly similar to Complainant’s ADVANTA mark pursuant to Policy ¶ 4(a)(i). See 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); see also Am.Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that the respondent’s domain name, <americanonline.com>, is confusingly similar to the complainant’s famous AMERICA ONLINE mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant presents a prima facie case supporting these
allegations, the burden shifts to Respondent to establish it does have rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). The Panel finds Complainant
has presented a sufficient prima facie
case to support its allegations.
Respondent failed to submit a response to these proceedings. Therefore, the Panel may assume Respondent
does not have rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). However,
the Panel will inspect the record and determine whether Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c). See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant
asserts that the respondent has no rights or legitimate interests with respect
to the domain, the burden shifts to the respondent to provide “concrete
evidence that it has rights to or legitimate interests in the domain name at
issue”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Respondent’s <advantagbank.com> domain name resolves to a parked website which displays links to financial products and services that directly compete with Complainant’s business. Respondent presumably receives click-through fees for displaying these links. The Panel finds this diversionary use of the disputed domain name is not a use in connection with 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 Lockheed Martin Corp. v. Extraordinary Things LLC, FA 1117826 (Nat. Arb. Forum Jan. 23, 2008) (“Respondent’s…domain names all resolve to parked websites featuring links to third-party venture capital and financial websites that offer services in competition with Complainant, and Respondent accrues click-through fees from these links. The Panel finds that such use does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Hoffmann-La Roche Inc. v. Truskowski, FA 808287 (Nat. Arb. Forum Nov. 14, 2006) (“[T]he operation of a ‘parking page’ in connection with the disputed domain name does not constitute a bona fide offering of goods or services as contemplated by [UDRP] Policy ¶ 4(c)[i] or a legitimate noncommercial or fair use as contemplated by [UDRP] Policy ¶ 4(c)[iii].”).
In addition, the record reflects
that the WHOIS information indicates Respondent’s name is “Wan-Fu China,
Ltd.” The record indicates Complainant
has never authorized Respondent to use its ADVANTA mark. Therefore, the Panel finds Respondent is not
commonly known by the <advantagbank.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The
Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent has previously been ordered by other panels to transfer three disputed domain names pursuant to the UDRP. See Morgan Stanley v. Wan-Fu China, Ltd., FA 1081669 (Nat. Arb. Forum Nov. 16, 2007); see also Larry Bond v. Wan-Fu China, Ltd., FA 1094208 (Nat. Arb. Forum Nov. 20, 2007); see also Enterprise Rent-A-Car Co. v. Wan-Fu China, Ltd., FA 1122715 (Nat. Arb. Forum Jan. 25, 2008). The Panel finds Respondent’s pattern of domain name registration and use incorporating others’ famous marks is evidence of bad faith pursuant to Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).
Respondent’s disputed domain name resolves to a parked website which displays links to financial products and services, some of which directly compete with Complainant’s business. The Panel finds Respondent’s use of the disputed domain name constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent presumably receives click-through fees for
displaying links to Complainant’s competitors on the parked website resolving
from the confusingly similar <advantagbank.com> domain name. Thus, the Panel finds Respondent is
attempting to profit from the goodwill associated with Complainant’s mark,
which is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also 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.’”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advantagbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: March 20, 2008
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