Advanta Corp. v. Minwoo, Park
Claim
Number: FA0507000521131
Complainant is Advanta Corp. (“Complainant”), represented
by Vito Petretti of Wolf, Block, Schorr and Solis-Cohen LLP, 1650 Arch Street, 22nd Floor, Philadelphia, PA 19103-2097. Respondent is Minwoo, Park (“Respondent”), 8-3 Sosa-dong, Bucheon Si Wonmi-gu,
Gyeonggi-Do, 420050, KR.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <advantacards.com>, registered with Cydentity,
Inc. d/b/a Cypack.com.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 25, 2005. The Complaint was
submitted in both Korean and English.
On
July 25, 2005, Cydentity, Inc. d/b/a Cypack.com confirmed by e-mail to the
National Arbitration Forum that the <advantacards.com> domain name
is registered with Cydentity, Inc. d/b/a Cypack.com and that Respondent is the
current registrant of the name. Cydentity,
Inc. d/b/a Cypack.com has verified that Respondent is bound by the Cydentity,
Inc. d/b/a Cypack.com 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
August 1, 2005, a Korean language Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of August 22, 2005 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@advantacards.com by
e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 29, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin 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.
Pursuant
to Rule 11(a) the Panel determines that the language requirement has been
satisfied through the Korean language Complaint and Commencement Notification
and, absent a Response, determines that the remainder of the proceedings may be
conducted in English.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <advantacards.com>
domain name is confusingly similar to Complainant’s ADVANTA mark.
2. Respondent does not have any rights or
legitimate interests in the <advantacards.com> domain name.
3. Respondent registered and used the <advantacards.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Advanta Corp., is in the financial services
business, including providing credit card services. Complainant holds numerous registrations with the United States
Patent and Trademark Office (“USPTO”) for the ADVANTA mark (Eg., Reg.
No. 1,611,541 issued August 28, 1990; Reg. No. 1,735,801 issued November 24,
1992; and Reg. No. 2,137,420 issued February 17, 1998). Complainant has spent considerable time and
money to market its products and services, including approximately $538 million
from 1992 to 2001. Complainant has
marketed its products and services via direct mail, national and local
television, radio, print advertisements, telemarketing, Internet and
billboards. As a result of
Complainant’s efforts, Complainant’s ADVANTA mark has developed fame and
goodwill.
Respondent registered the <advantacards.com> domain name on December 2, 2004. Respondent has not made any use of the
disputed domain name.
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
provided evidence of its registration of the ADVANTA mark with the USPTO. Complainant’s registration of its mark with
a federal authority is sufficient to establish a prima facie case of
Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
The <advantacards.com>
domain name registered by Respondent includes Complainant’s registered ADVANTA
mark in its entirety with the addition of the common term “cards” and the
generic top-level domain (“gTLD”) “.com.”
Complainant argues that the term “cards” is very likely to confuse
consumers because Complainant is in the business of offering credit card
services. The Panel finds that simply
adding a common term that describes Complainant and a gTLD to Complainant’s
registered mark does not create a domain name distinguishable from
Complainant’s mark. Thus, the disputed
domain name is confusingly similar to Complainant’s mark under Policy ¶
4(a)(i). See Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that the <hoylecasino.net> domain name is confusingly similar to the
complainant’s HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which the complainant is engaged, does not
take the disputed domain name out of the realm of confusing similarity); see
also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
Forum Sept. 27, 2002) (finding it is a “well established principle that generic
top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Panels have
consistently held under the Policy that the complainant has the initial burden
of proving that the respondent lacks rights and legitimate interests in the
disputed domain name. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see
also 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”). Having
found that Complainant has met its initial burden by establishing a prima
facie case, the Panel will now analyze whether Respondent has met its
burden to establish rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c).
Complainant
contends that Respondent is not commonly known by the <advantacards.com>
domain name and that Respondent is not affiliated with Complainant in any
way. The WHOIS information for the
disputed domain name lists Respondent as “Minwoo, Park” and identifies no other
connection between Respondent and the disputed domain name. Because Respondent has failed to respond to
any of Complainant’s contentions, the Panel is left with no evidence to rebut
Complainant’s assertions that Respondent is not commonly known by the disputed
domain name. Thus, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); see
also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
Dec. 1, 2004) (finding that, because Respondent failed to submit a Response,
“Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”).
Furthermore,
Complainant asserts that Respondent is not using the <advantacards.com>
domain name for any purpose. Without a
response from Respondent to assert a use or intended use, the Panel accepts as
true Complainant’s assertion that Respondent is not using the disputed domain
name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb.
Forum Dec. 1, 2004) (finding that because Respondent failed to submit a
Response, “Complainant’s submission has gone unopposed and its arguments
undisputed. In the absence of a
Response, the Panel accepts as true all reasonable allegations . . . unless
clearly contradicted by the evidence.”).
The Panel holds that Respondent’s nonuse of the <advantacards.com>
domain name constitutes passive holding and is not a bona fide offering
of goods or services or a legitimate noncommercial or fair use under Policy ¶
4(c)(i) or (iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273
(WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the
respondent failed to submit a response to the complaint and had made no use of
the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that the respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods and services before
notice of the domain name dispute, the domain name did not resolve to a
website, and the respondent is not commonly known by the domain name); see
also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's passive holding of the domain name does not
establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Although Policy
¶ 4(b) includes a list of four specific situations that constitute evidence of
bad faith registration and use, the Panel is not limited to this list and may
take into account additional evidence in making a finding under Policy ¶
4(a)(iii). See Twentieth Century Fox Film Corp. v.
Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that, in
determining if a domain name has been registered in bad faith, the Panel must
look at the “totality of circumstances”); see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith]
in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent has
not provided any evidence that would suggest that Respondent is holding the
disputed domain name for any non-infringing purpose. Without any indication that Respondent registered the domain name
for a legitimate purpose, the Panel finds that Respondent’s passive holding of
the <advantacards.com> domain name constitutes bad faith
registration and use under Policy ¶ 4(a)(iii).
See DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see also Alitalia
–Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23,
2000) (finding bad faith where the respondent made no use of the domain name in
question and there are no other indications that the respondent could have
registered and used the domain name in question for any non-infringing
purpose); 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 passive holding of a domain name permits an inference of
registration and use in bad faith).
Complainant’s
registration of a domain name that includes Complainant’s registered ADVANTA
mark and a common term that describes Complainant’s credit card business is
evidence that Respondent knew of Complainant’s rights in the mark when it
registered the disputed domain name.
Furthermore, Complainant’s registration of its mark with the USPTO is
sufficient to confer upon Respondent constructive notice of Complainant’s rights
in the mark included in the domain name.
Respondent’s registration of the <advantacards.com> domain
name with actual or constructive knowledge of Complainant’s rights in the mark
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Digi Int’l v.
DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) ( “[T]here is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively.”); see also 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 Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”
The Panel finds
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 <advantacards.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
September 7, 2005
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