Advanta Corp. v. Dyan Boothe
Claim Number: FA0606000728557
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 Dyan Boothe (“Respondent”), 9181 Cove Point Circle, Boynton Beach, FL 33437.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <advantaonline.com>, registered with Go Daddy Software, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 9, 2006.
On June 8, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <advantaonline.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 June 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 3, 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@advantaonline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <advantaonline.com> domain name is confusingly similar to Complainant’s ADVANTA mark.
2. Respondent does not have any rights or legitimate interests in the <advantaonline.com> domain name.
3. Respondent registered and used the <advantaonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Advanta Corp., is a leading provider of insurance underwriting services as well as investment and portfolio management services. In the ten-year period from 1991 to 2001, Complainant invested $538 million in the marketing, advertising, and promotion of its ADVANTA trademark, which has been registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,611,541 issued August 28, 1990).
Respondent registered the <advantaonline.com> domain name on November 3, 2005. Respondent’s domain name resolves to a website featuring links to various unrelated commercial websites.
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 through its registration 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 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.”).
Complainant contends that Respondent’s <advantaonline.com> domain name is confusingly similar to Complainant’s ADVANTA mark. Respondent’s disputed domain name features Complainant’s entire mark and adds the generic term “online.” The Panel finds that the addition of generic terms to an otherwise identical mark is an insufficient means of attempting to distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent lacks all rights or legitimate interests in the <advantaonline.com> domain name. In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. See 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”).
Respondent is using the <advantaonline.com>
domain name to operate a website that connects Internet users to various
unrelated commercial websites through a series of hyperlinks from which
Respondent presumably receives referral fees.
The Panel finds that Respondent’s use of the <advantaonline.com>
domain name for such purposes is neither a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See 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).”); see
also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat.
Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy).
Moreover, Complainant
contends that Respondent is not commonly known by the disputed domain name nor
licensed to register a domain name bearing Complainant’s ADVANTA mark. Without evidence suggesting otherwise, the
Panel finds that Respondent is not commonly known by the <advantaonline.com>
domain name and, therefore, does not
have rights or legitimate interests pursuant to Policy ¶ 4(c)(iii). See 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); 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").
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Finally, Complainant contends that Respondent’s use of the <advantaonline.com>
domain name for the purpose of operating a website that features links to
various unrelated commercial websites, which presumably generate referral fees
for Respondent, is evidence of bad faith.
The Panel finds that such use of Complainant’s mark will likely cause
confusion as to Complainant’s sponsorship of, and affiliation with,
Respondent’s website. As a result,
Respondent’s intent to deceive Internet users for commercial gain is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) where the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website); 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 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 <advantaonline.com> domain name be TRANSFERED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 21, 2006
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