Advanta Corp. v. Khawja Kamal
Claim Number: FA0707001040022
Complainant is Advanta Corp. (“Complainant”), represented by Bruce
A. MacDonald, of Schnader Harrison Segal & Lewis LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advantatrading.com>, registered with GoDaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 18, 2007.
On July 18, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <advantatrading.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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").
23, 2007, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 13, 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 email@example.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 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant offers a wide variety of financial services, including credit card and investment portfolio management services to both small businesses and professionals.
Complainant has conducted business under the ADVANTA mark since 1987, and currently operates a website at the <advanta.com> domain name.
Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the ADVANTA mark (Reg. No. 1,484,579, issued April 12, 1988).
Respondent is not authorized or licensed by Complainant to use the ADVANTA mark for any purpose.
Respondent registered the <advantatrading.com> domain name on February 28, 2005.
Respondent’s disputed domain name resolves to a website indicating that it is a “parked” page sponsored by its registrar.
The same website also features links to third-party websites offering financial services in direct competition with the business of Complainant.
Respondent’s <advantatrading.com> domain name is confusingly similar to Complainant’s ADVANTA mark.
Respondent does not have any rights or legitimate interests in the domain name <advantatrading.com>.
Respondent registered and uses the <advantatrading.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of the ADVANTA mark with the USPTO establishes its rights in the mark pursuant to 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 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, ….”
Complainant alleges that Respondent’s <advantatrading.com> domain name is confusingly similar to Complainant’s ADVANTA mark. We agree, inasmuch as the disputed domain name fully incorporates Complainant’s mark and merely adds the term “trading,” a generic term that describes a portion of Complainant’s business. Moreover, the inclusion of the generic top-level domain “.com” in the domain name is irrelevant to a Policy ¶ 4(a)(i) analysis, because a top-level domain is a required element of all domain names. Thus, we conclude that the <advantatrading.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 a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the <christiesauction.com> domain name is confusingly similar to a complainant's mark since it merely adds the word “auction” used in its generic sense); further see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark); and Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the domain name <advantatrading.com>. Under Policy ¶ 4(a)(ii), Complainant carries the initial burden of demonstrating that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has made out a prima facie case, however, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the domain. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest does exist).
In the present case, Complainant has established a prima facie case under the Policy.
Respondent’s failure to answer the Complaint permits us to presume that Respondent lacks rights and legitimate interests in the <advantatrading.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
See also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint). Nevertheless, we will examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
We begin by noting that Complainant asserts that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Indeed there is no evidence in the record to suggest, and Respondent’s WHOIS information does not indicate, that Respondent is commonly known by the <advantatrading.com> domain name. Moreover, Complainant alleges, and Respondent does not deny, that Respondent is not authorized or licensed by Complainant to use the ADVANTA mark for any purpose. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by the mark there in question and never applied for a license or permission from a complainant to use the trademarked name).
In addition, there is no dispute as to Complainant’s allegation that Respondent’s <advantatrading.com> domain name resolves to a website featuring links to various third-party websites in direct competition with the business of Complainant. We presume that Respondent receives click-through fees when Internet users click on these links. This does not constitute 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, for example, WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that a respondent’s use of a disputed domain name to redirect Internet users to websites unrelated to a complainant’s mark, websites where that respondent presumably receives a referral fee for each misdirected Internet user, is not a bona fide offering of goods or services as contemplated by the Policy); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in a disputed domain name where a respondent used a complainant’s mark to redirect Internet users to a website offering credit card services unrelated to services legitimately offered under that complainant’s mark).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
As previously indicated, we presume that Respondent benefits commercially when Internet users click on the links contained on the website resolving from the domain name <advantatrading.com>. Respondent is thus capitalizing on the likelihood that Internet users seeking Complainant’s services will confuse the disputed domain name as being affiliated with Complainant. This is evidence that Respondent registered and is using the disputed domain name in bad faith under 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 Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where a domain name is obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion for commercial gain).
In addition, it appears that Respondent registered the <advantatrading.com> domain name with at least constructive knowledge of Complainant’s rights in the ADVANTA service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <advantatrading.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 24, 2007
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