FIA Card Services, National
Association v. Impulse Marketing Group, Net OPS
Claim Number: FA0703000944261
PARTIES
Complainant is FIA Card Services, National Association (“Complainant”), represented by Randel
S. Springer, of Womble Carlyle Sandridge & Rice, PLLC,
One West Fourth Street, Winston-Salem, NC 27101. Respondent is Impulse Marketing Group, Net OPS (“Respondent”), represented by Douglas
M. Isenberg, of The GigaLaw Firm,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usaplatinumplus.com>, registered
with Register.com.
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 20, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 23, 2007.
On March 21, 2007, Register.com confirmed by e-mail to the
National Arbitration Forum that the <usaplatinumplus.com> domain name is
registered with Register.com and that
Respondent is the current registrant of the name. Register.com
has verified that Respondent is bound by the Register.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 March 23, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 12, 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@usaplatinumplus.com by e-mail.
The parties filed a Joint Request to Stay the Administrative Proceeding
on April 9, 2007. The National
Arbitration Forum granted the parties’ request, giving them a period of
forty-five days until May 24, 2007, to either settle the dispute or request a
lift of the stay, or else the Forum would dismiss the Complaint without
prejudice.
On May 23, 2007, Complainant requested a removal of the stay on the
proceeding. The National Arbitration
Forum granted Complainant’s request on the same date and set a new deadline of
May 29, 2007 for Respondent to file a Response.
A timely Response was received and determined to be complete on May 29, 2007.
Complainant filed an Additional Submission on June 4, 2007.
Respondent filed an Additional Submission on June 11, 2007.
On June 4, 2007, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed John J. Upchurch as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
Complainant
alleges that there is a “confusing similarity” between its valid trademark
registrations and the subject domain name <usaplatinumplus.com>.
2.
Complainant
alleges that Respondent has “no rights or legitimate interests” in the disputed
domain name.
3.
Complaint
alleges that the disputed domain name was “registered and used in bad faith.”
B. Respondent
1.
Respondent
alleges that the domain name <usplatinumplus.com>
is not identical or confusingly similar to Complainant’s trademarks.
2.
Respondent
alleges that Respondent should be considered as having rights or legitimate
interests in respect of the disputed domain name.
3.
Respondent
alleges that the domain name <usaplatinumplus.com>
should not be considered as having been registered and used in bad faith.
C. Additional Submissions
Complainant: Complainant reiterated its arguments
regarding confusing
similarity between its marks and the disputed domain name and
registration and use in bad faith; Complainant proffered a Google search exhibit
and analysis to support its public identification with the “platinum plus”
mark.
Respondent: Respondent asserts that the brief interval
between Complainant’s trademark registration and Respondent’s domain name registration
diminish the presumption of constructive knowledge of the mark on the part of
Respondent; it asserts that Complainant’s failure to rebut the Response with
respect to “rights or legitimate interests” should be construed as a concession;
and that Complainant’s Google search analysis was flawed. Further, Respondent asserted that the panel
should not rely solely upon “constructive knowledge” in the absence of
supporting proof in considering an inference of bad faith.
FINDINGS
The panel finds that Complainant failed to
establish a lack of rights or legitimate interests in the disputed domain name
on the part of Respondent; and, accordingly, the requested relief should be denied.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(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 valid trademark registrations for the PLATINUM PLUS (Reg. No. 2,531,097
issued January 22, 2002) and WORLD CLASS PLATINUM PLUS (Reg. No. 2,518,949
issued December 18, 2001) marks, both of which it holds with the United States
Patent and Trademark Office (“USPTO”).
The Panel holds that these trademark registrations demonstrate
Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i).
Complainant alleges
that the <usaplatinumplus.com>
domain name is an exact replica of its PLATINUM PLUS mark, but for the addition
of the geographic identifier “
Accordingly, the Panel
does find that the disputed <usaplatinumplus.com>
domain name is identical or confusingly similar to Complainant’s marks.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to
show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie
showing that Respondent does not have rights or legitimate interest in the
subject domain names, which burden is light.
If Complainant satisfies its burden, then the burden shifts to
Respondent to show that it does have rights or legitimate interest in the
subject domain names.”).
Complainant argues
that Respondent is a competitor of Complainant in the financial services
industry and that Respondent is not commonly known by the disputed domain
name. Respondent concedes the point, but
asserts its offering of bona fide services
for several years prior to notice of this dispute has established rights or
legitimate interests in the domain name.
Respondent asserts that it is a financial and marketing services company that offers “subprime credit cards, catalog cards, automobile loans and financing, payday loans and credit repair” to customers. Respondent further asserts that it has continuously used the <usaplatinumplus.com> domain name in connection with its business since 2002. This is unrebutted. The Panel finds that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Martello v. Cockerell and Assoc., FA 346319 (Nat. Arb. Forum Dec. 13, 2004) (finding that the respondent’s use of the <skindeep.com> domain name to provide information on its demapathology services was a bona fide offering of goods or services under Policy ¶ 4(c)(i) despite the complainant’s registration of the SKIN DEEP mark with the USPTO and use of the mark in connection with similar services); see also Secondary School Admission Test Board, Inc. v. Severino, FA 408094 (Nat. Arb. Forum Mar. 24, 2005) (holding that the respondent’s use of the <prepssat.com> domain name was a legitimate use because respondent provided services designed to help students prepare for the SSAT, also the complainant’s mark); see also Am. Online, Inc. v. West, FA 638005 (Nat. Arb. Forum Mar. 20, 2006) (finding that the respondent was making a bona fide offering of goods or services at the <aol-city.com> domain name where it had used the domain name for over five years in connection with a real estate business in the UK and there was little chance of consumer confusion).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii)); see also The Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Accordingly, the Panel finds that Respondent has established rights or legitimate interests in the disputed domain name.
The Panel finds it unnecessary to address
this element given its finding in favor of the Respondent with respect to item
(b) above.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
John J. Upchurch, Panelist
Dated:
June 18, 2007
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