Advanta Corp. v. Kentech, Inc.
Claim Number: FA0601000632675
Complainant is Advanta Corp. (“Complainant”), represented by Jennifer C. O'Neill, of Wolf, Block, Schorr and Solis-Cohen LLP, 1650 Arch Street, 22nd Floor, Philadelphia, PA 19103-2097. Respondent is Kentech, Inc. (“Respondent”), 1st Floor Muya House Kenyatta, P.O. Box 4276-30100, Eldoret, RiftValley 30100, KE.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <advantacad.com>, registered with Domain Contender, 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 January 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 23, 2006.
On January 19, 2006, Domain Contender, Llc confirmed by e-mail to the National Arbitration Forum that the <advantacad.com> domain name is registered with Domain Contender, Llc and that Respondent is the current registrant of the name. Domain Contender, Llc has verified that Respondent is bound by the Domain Contender, 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 January 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 13, 2006 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@advantacad.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 17, 2006, 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 <advantacad.com> domain name is confusingly similar to Complainant’s ADVANTA mark.
2. Respondent does not have any rights or legitimate interests in the <advantacad.com> domain name.
3. Respondent registered and used the <advantacad.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Advanta Corp., is a nationwide provider of insurance and financial services, including credit card services. Complainant has used its ADVANTA mark in offering its services since 1988. Complainant has separately registered its ADVANTA mark with the United States Patent and Trademark Office (“USPTO”) for several of its services, including credit card services (Reg. No. 2,732,354 issued July 1, 2003).
Respondent registered the <advantacad.com> domain name on May 30, 2005. Internet users who access this domain name are redirected to a generic search-engine website which features links to service providers in direct competition with Complainant. This website also presents Internet users with pop-up advertisements for products and services unrelated to Complainant.
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 established rights in the ADVANTA mark pursuant to Policy ¶ 4(a)(i) by registering the mark with the USPTO. 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 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 <advantacad.com> domain name is confusingly similar to Complainant’s ADVANTA mark, with the only difference being the addition of the term “cad”. The Panel notes that “cad” is a likely misspelling of the word “card,” which is a generic term that bears an obvious and direct relationship to Complainant, a provider of credit card services. Respondent has merely added a single term to Complainant’s mark, which is likely an intentional misspelling of a generic term that is obviously related to Complainant’s business. Therefore, Respondent’s <advantacad.com> domain name is confusingly similar to Complainant’s 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 Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it does have rights or legitimate interests in it. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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”). Because Complainant has presented a prima facie case, the Panel will consider whether the evaluation of the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent’s <advantacad.com> domain name is confusingly similar to Complainant’s ADVANTA mark, and Internet users who access this domain name are redirected to a generic search-engine website, which features links to services in competition with Complainant’s services. Additionally, Internet users who access the domain name are presented with pop-up advertisements for products and services unrelated to Complainant’s business. The Panel presumes Respondent receives click-through fees in exchange for diverting Internet users to these other websites, and for exposing them to pop-up advertisements. Respondent’s use of the disputed domain name is not 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 Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The WHOIS database contains no information implying that Respondent is commonly known by the <advantacad.com> domain name. Additionally, there is no evidence on record that Respondent has ever been commonly known by the disputed domain name. The Panel infers that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(ii). See 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 Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses <advantacad.com>, a domain name confusingly similar to Complainant’s ADVANTA mark, to redirect Internet users to services offered by Complainant’s competitors and to expose them to pop-up advertisements. Because <advantacad.com> includes Complainant’s mark, Internet users may mistakenly believe that Respondent’s domain name is affiliated with Complainant. Such use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds that 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 <advantacad.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: March 3, 2006
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