Advanta Corp. v. Michail Zournas
Claim Number: FA0801001126736
Complainant is Advanta Corp. (“Complainant”), represented by Bruce
A. McDonald, of Schnader Harrison Segal & Lewis LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advanta.info>, registered with Network Solutions.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 9, 2008.
On January 9, 2008, Network Solutions confirmed by e-mail to the National Arbitration Forum that the <advanta.info> domain name is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 4, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on January 31, 2008.
On February 13, 2008 the Panel issued an Order requesting the Complainant to provide a further statement and documents in the light of the matters set out in the Order. Pursuant to that Order, on February 19, 2008 the Complainant submitted a further statement and additional documentation.
On February 20, 2008 the Panel issued a further Order inviting the Respondent to reply to the Complainant’s further statement and documents and to annex any documents relevant to the those matters. Pursuant to that Order, on February 26, 2008 the Respondent submitted an Additional Response (Order) and additional documentation.
On February 7, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant alleges that the domain name <advanta.info> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical or confusingly similar to the Complainant’s registered service mark ADVANTA and related service marks incorporating the word ADVANTA, that the Respondent has no rights or legitimate interests in the domain name and that it has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered ADVANTA and related service marks to which reference has already been made (“the ADVANTA mark”) and says that the domain name is identical to and confusingly similar to the mark because it incorporates the entirety of the mark in the domain name with the addition only of the generic top level domain suffix “.info.”
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because it is clear that he has incorporated the Complainant’s service mark in his domain name and then monetized it by selling its use to third-party advertisers. This practice, the Complainant contends, is illegitimate, even if the term “advanta” in the domain name is a generic or descriptive term, which the Complainant contends it is not.
The Complainant also argues that the Complainant’s federal registration of the service marks give it an exclusive right to use the name Advanta for credit card services and that the Respondent’s use of the domain name to advertise credit card services is thus illegitimate.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the whole modus operandi of the Respondent, acquiring a domain name to exploit the value that the name would have as a trade or service mark, concealing his identity and engaging in trademark counterfeiting, constitute bad faith both with respect to registering and using the domain name.
The Respondent contends, first, that the word “advanta” is a common abbreviation of the generic dictionary word “advantage,” is subject to substantial third party use unaffiliated with the Complainant and is used in numerous domain names relating to a variety of websites. Accordingly, the Respondent submits that the domain name cannot be identical to or confusingly similar to the Complainant’s service mark.
Moreover, the Respondent contends, there are so many other trade and service mark registrations of ADVANTA that the Complainant cannot have unfettered rights to use the name and accordingly the Complainant does not have enforceable trademark rights required by the Policy.
In particular, the
Complainant does not have any trademark or service mark rights for “advanta” in
C. Additional Submissions
In response to the Orders referred to above, both the Complainant and the Respondent submitted further argument and documentation on the issue last mentioned, namely whether the Respondent had used the domain name to resolve to a website which promoted credit card services, as the Complainant contended, or data recovery services, as the Respondent contended.
As this issue is pivotal to the outcome of this proceeding and as it requires a lengthy discussion of competing evidence, the Panel will defer this issue until later in the decision.
(a) The Complainant, through its
subsidiary Advanta Bank Corp., is a
(b) The Complainant is the registered owner of several service marks for ADVANTA and other marks incorporating the word ADVANTA, registered with the United States Patent and Trademark Office (“the USPTO”) for credit card services, banking and related credit services, including the service mark registration number 2,137,420 for ADVANTA, registered on February 17, 1998 for banking services, and the service mark registration number 2,732,354, registered on July1, 2003 for credit card services.
(c) The Complainant operates its website at <advanta.com> where it promotes its credit card and related services.
(d) The Respondent registered the <advanta.info> domain name on July 23, 2002 and it resolves to a website at <advanta.info>.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The Panel finds that the domain name <advanta.info> is identical to the Complainant’s service mark ADVANTA, which as a whole has been incorporated into the domain name and which further consists of the second level domain suffix “.info.” In that regard, it has been held many times that suffixes and minor spelling differences may not be used to negate a finding of identicalness or confusing similarity that is otherwise present on the evidence.
The marks relied on by the Complainant are several service marks for ADVANTA that are registered in the United States of America and the Complainant has submitted evidence, which the Panel accepts, that it, or in two cases case a related company, is the registered proprietor of each of those marks.
Accordingly, the domain name is identical to a service mark in which the Complainant has rights and it has therefore established the first of the three elements that it must make out.
The Respondent, however, has argued that, as there are at least 68 USPTO registrations of the trademark ADVANTA, the Complainant’s registrations do not give it an “absolute monopoly” on that word. The Complainant, however, does not claim to have an absolute monopoly on the word and claims only that it is a breach of the trademark law if another party uses the mark in connection with the services for which the Complainant’s ADVANTA service marks were registered, which it then endeavors to establish.
The Respondent then argues that the
Complainant does not have any trademark or service mark rights for “advanta” in
The Respondent also contends that the word “advanta” has “a generic status” because it is a common abbreviation of the dictionary word “advantage.” It may well be true that “advanta” is a common abbreviation of the word “advantage” and the Respondent has certainly shown a wide use of the word in domain names and websites.
None of this, however, confers “a generic status” on the word and the Panel’s view is that the word has not acquired “a generic status,” as it is clearly an invented or coined word. The word is not defined by <dictionary.com> or any of the four dictionaries that the Panel has consulted and the only meaning attributed to the word in the encyclopedia section of <dictionary.com> is the name of the Complainant, which seems to prove the opposite of the Respondent’s contention.
The Respondent’s argument on this issue therefore cannot be accepted.
For all of these reasons the Panel determines that the domain name is identical to the Complainant’s service mark and that the Complaiant has established the first of the three elements that it must make out.
Under Policy ¶ 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
But by virtue of Policy ¶ 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interest in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) Before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if Respondent proves any of these elements or indeed anything else that shows that it has a right or interest in the disputed domain name, Complainant will have failed to discharge its onus and the Complaint will fail.
It is now well established that 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 that it does have such 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 Policy ¶ 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 first 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 interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. That prima facie case arises from the following circumstances: the domain name consists of the entirety of the Complainant’s service mark with the addition only of the suffix “.info,” there is no evidence that Respondent is commonly known by the domain name <advanta.info> and at least prima facie, the Complainant has shown that the Respondent has been using the domain name to earn pay-per-click revenue from its website.
That being so, the burden of proof then shifts to the Respondent to show on the balance of probabilities that he has a right or legitimate interest in the domain name.
The Respondent sought to do this by rebutting the primary contention of the Complainant, namely that the Respondent was using the domain name to resolve to a website which both in its heading and text carried advertisements for credit card services. The Respondent was thus, the Complainant argued, using the Complainant’s service mark to advertise the same services as those with respect to which the service mark was registered, namely credit card and related services.
Respondent argued in reply that the domain name did not resolve to a website containing any references or links to credit card services as Complainant contends. Indeed, the Respondent went further and made a serious allegation by arguing that to obtain a reference to credit card services from the website, Complainant must have entered “credit card” or “advanta bank” or a related term into the search engine function on the website and, in effect, that the references to credit card services and in particular the references to the Complainant appeared as they would have from the use of any search engine. This, he said, was “a known trick of entrapment used by some legal counsels that try to exploit the UDRP proceedings.”
There was therefore a very clear conflict on the evidence and as the Panel was of the view that it did not have enough information to reach an informed conclusion on this issue, it first issued a Procedural Order on February13, directed to the Complainant. The terms of that order were as follows:
The Panel requests that the Complainant provide a further statement and documents.
The further statement and documents relate to the statement in paragraph 7 b of the Complaint that “The disputed domain name is used for a parked website appearing as follows: . . . ,” which is followed by what purports to be a depiction of a page of the parked website.
The Respondent in his Response says that the content of the website www.advanta.info “...consists of links to ‘Data Recovery’, ‘Data Security,’and the Internet in general in connection with ISPSs...” and that it does not display advertisements for credit card services.
By necessary inference, the Respondent claims that the page of the “parked website” set out in paragraph 7 b of the Complaint could only have been produced by typing into the search engine function of www.advanta.info “credit card services” or words to that effect which have brought up the linked page so displayed and that the website itself actually deals with Data Recovery and related subjects and not credit card services.
The Panel requests the Complainant to make a further statement supported by relevant documents in reply to the Respondent's argument. The Panel invites the Complainant to cover in that statement:
(a) the date when the extract set out in paragraph 7b of the Complainat was obtained, by what means and by whom;
(b) whether it was obtained on a first visit to the website www.advanta.info or by typing into the search function any additional and, if so, what words;
(c) whether the Complainant's visit to the website www.advanta.info produced any and, if so, what results other than the extract reproduced in paragraph 7b of the Complaint.
The Complainant is invited to annex any documents relevant to the above matters.
The requested information is due no later than Close of Business on Tuesday February 19, 2008.
The Panel will not set out the entirety of the Complainant’s response but only those most immediately relevant to the issue. The Complainant’s response, dated February 19, 2008 said in part as follows:
…Complainant refutes Respondent’s erroneous assertion that the page of the “parked website” set out in paragraph 7(b) of the Complaint could only have been produced by typing into the search engine function of www.advanta.info, “credit card services” or words to that effect which have brought up the linked page so displayed…
II. Complainant’s Policing Process and Background of this Complaint
The Complainant has invested considerable resources to prevent use of its ADVANTA® trademark by others where such use creates a likelihood of confusion. Consequently, Complainant systematically pursues and has successfully excluded others from using similar names, as domain names, in a manner that is likely to cause mistake or deception about the origin of goods and services provided under that name. To effectively police its trademark rights, the Complainant engages the NameProtect watch service to conduct monthly searches for new domains that include the ADVANTA® mark. The URL complained of herein was reported to Complainant on or about October 2007. In accordance with standard procedure, the URL was visited by simply inserting “www.advanta.info” in a browser (without other search criteria). A printout of the homepage was made by counsel on December 12, 2007 (emphasis added). See Exhibit A. Exhibit A shows there were ten (10) “Sponsored listings” for various credit card services, including five (5) specifically highlighting Complainant.
III. Respondent has Deliberately Modified the Homepage Following the Filing of this UDRP Exhibit B shows the website www.advanta.info as it currently appears. It is obvious from a comparison of Exhibits A and B that Respondent has deliberately altered the website since the UDRP was initiated to eliminate credit card listings and show only links to Data Recovery services. Respondent’s modification of the website during the course of this UDRP is further evidence of his bad faith… From October 24, 2007, until the filing date of the UDRP, (January 8, 2008-date added) the site has included a homepage with links highlighting Complainant and other credit card sites. (emphasis added) Complainant asks that the Panel note that the Respondent has not asserted that the homepage has always had links to Data Recovery services. In fact, he admits that he may have been ignorant of them. He states: “it cannot be assumed that the Respondent requested such links or was even aware of them before receiving notice of this dispute.” §3(b) (Emphasis added). This admission further supports Complainant’s position that Respondent does not have any legitimate interest in the disputed URL….”
The meaning of this response was very clear and accordingly, the Panel gave Respondent an opportunity to reply by issuing a second Procedural Order directed to Respondent on February 20, 2008. The Order provided as follows:
By Order dated February 13, 2008, the Panel requested the Complainant to provide a further statement and documents in light of the matters set out in the Order.
The Complainant has now provided the further statement together with certain accompanying documents.
The Panel now invites the Respondent to reply to the Complainant’s further statement and documents.
The reply should be limited to those matters in the Complainant’s further statement and documents.
The Complainant is invited to annex any documents relevant to the above matters.
The requested information is due no later than Close of Business on Tuesday February 26, 2008.
Respondent replied on February 26, 2008 by filing an Additional Response (Order), the essential parts of which are as follows:
1. The Complainant does not provide any new credible evidence in their Additional Submission. Exhibit A of the Additional Submission is inadmissible. The “so called printout” is so tangled that can’t be much of any help to these proceedings. It is not a proper printout. Exhibit A was manipulated or edited by the Complainant. Parts of the webpage appear in different parts than where they should be and other parts are missing (Please refer to Annex 1 as to how advanta.info website currently appears):
• The address bar is not shown so one can’t tell what is the URL entered. If a search for credit cards was made then the URL would be different. Please refer to Annex 2 for a printout after a search was made at advanta.info for “law.” The URL has changed after the search and it is not “http://www.advanta.info/.”
• At the top of the page one can see the “Related Searches” which are presented vertical where in fact these are horizontal. Also these “Related Searches” are presented with bullets where in fact there are no bullets.
• Fonts used are not the correct ones. The “advanta.info” heading appears different than what it should be.
• Exhibit A appears in black and white while Exhibit B appears in color.
• The “Related Searches” appear twice next to the “Sponsored Listings.”
• Links under “Sponsored Listings” have smaller length.
Exhibit A was made by other means than Exhibit B. Complainant doesn’t reply to the Panel’s question as to what means was used to obtain this. This raises further suspicions that Exhibit A was in fact manipulated by the Complainant. Complainant is trying to mislead the Panel. If Complainant had Exhibit A when he submitted the Complaint why didn’t he submitted [sic] it then? If Complainant had proof of the webpage showing credit card ads (without user intervention) why didn’t he present it? Instead he chose to present a blurred extract of what seemed to be a printout. Nearly all UDRP complaints contain a printout of the disputed domain. Why didn’t the Complainant produce one? Complainant knew that Respondent would object to this manipulation of the search function and was afraid the produce Exhibit A. Probably Complainant was counting that the Panel wouldn’t notice.
Just for the sake of the argument let’s assume that Exhibit A is accepted. As mentioned above the address bar is not shown. So how can anyone know if Complainant searched for “credit cards” or not? Also one can clearly see that the categories under the “Related Searches” are the same in Exhibits A and B. They contain links to “Data Security,” ”Data Recovery,” and “Web Hosting.” This further proves that the Respondent wasn’t using the domain name advanta.info in bad faith. Why would the Respondent use links to “Data Security,” ”Data Recovery,” and “Web Hosting” while he was offering links to credit cards, as Complainant claims? This wouldn’t make any sense. Respondent wasn’t and isn’t offering links connected to “credit cards” (emphasis added).
II. Complainant asks the Panel to compare Exhibits A and B. How can this be done? Exhibit A is in black and white and distorted while Exhibit B is in color and almost looks like as to how the website currently appears. And I say almost, because two (2) parts of the website are missing in Exhibit B. These parts are the “Related Searches” and the “BUY THIS DOMAIN” on the right of the website. Please refer to Annex 1. This proves that either the Complainant deliberately manipulates the printouts or Complainant is not capable of producing a proper printout. Whichever is true, the Exhibits should either not be accepted at all or be accepted with extreme precautions as of their validity. Complainant doesn’t explain how Respondent altered the website, as the website contained and still contains the same categories below “Related Searches.”
The Panel is now required to reach conclusions on the basis of the totality of the evidence, bearing in mind that the onus is on Respondent to rebut the prima facie finding that he does not have a right or legitimate interest in the domain name. Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent argues in effect that his right or legitimate interest in the domain name comes from using it to promote goods and services coming under the umbrella of the generic word “advanta,” without any attempt to trade on Complainant, its service mark, or the goods and services sold under that mark.
The Panel does not accept that argument and it does not accept that the evidence shows on the balance of probabilities that Respondent was making the use of the domain name that he claims.
To support the conclusion that the Panel has reached, it is not necessary to go into the detail of the competing claims in the responses to the Panel’s request for further evidence. When the Respondent came to prepare its response the issue was very clear. It was that Complainant and its counsel had adduced that they had not engaged in the “trick of entrapment” of which they were accused, but rather that they had produced the best evidence that there was of the issue in contention, namely a screenshot taken and dated December 12, 2007. The evidence of Complainant is quite specific and is that:
…the URL was visited by simply inserting “www.advanta.info” in a browser (without other search criteria). A printout of the homepage was made by counsel on December 12, 2007.
This screenshot showed that the website itself carried extensive advertisements for credit card services, including those provided by the Complainant, which gave the impression that the website was an official Advanta site and it also carried advertisements for competing goods and services.
The Complainant’s further evidence is that:
From October 24, 2007, until the filing date of the UDRP, (January 8, 2008-date added) the site has included a homepage with links highlighting Complainant and other credit card sites.
That being so, Complainant concluded that the only explanation for the inconsistency between the parties was that the Respondent had modified the homepage of the website so as to eliminate the credit card listings. It in effect challenged the Respondent to deny this.
Respondent’s reply to this demarche was to point at length to various imperfections in the reproduction of Complainant’s exhibits and to make new accusations of misleading conduct on the part of the Complainant. What is more significant, however, is what is not contained in the Respondent’s reply. The Panel looked specifically to see if the Respondent would deny that from October 2007 until January 2008 and specifically on December 12, 2007, his website carried advertisements for credit card services and references to the Complainant and to see the evidence that the Respondent would give in support of that denial.
Those matters must have been within the knowledge of the Respondent and yet the Additional Response is virtually silent on that knowledge and there is no denial of this significant issue. In this regard the Panel regards the only statement on this subject by the Respondent, the statement that “Respondent wasn’t and isn’t offering links connected to credit cards” as vague and falling far short of what the Respondent should have known and could have contributed.
The Panel also looked to see if Respondent denied that he had modified the website to eliminate credit card references and references to the Complainant. Again, that was a clear issue and the necessary facts must have been within the knowledge of the Respondent, but such a denial was not forthcoming.
It is this factor that tilts the scales in favor of the Complainant and favors a conclusion that, on the balance of probabilities, the Complainant genuinely found references to credit card services and the Complainant’s services themselves when it first came to the website and that the information revealed by the Complainant’s agents and captured by its counsel on December 12, 2007 was in fact correct.
The Panel accepts the evidence of the Complainant on this contentious issue and finds against the allegation that the Complainant and its counsel engaged in “a trick of entrapment” or that it in any way manipulated the evidence.
That being so, the Panel must find that the use that the Respondent made of the domain name, embodying as it does, the service mark of the Complainant, for the purpose of advertising goods and services of the same type as those of the Complainant and trading on the name of the Complainant itself is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), or bona fide or legitimate in any other way. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Accordingly, the Respondent has no right or legitimate interest in the domain name and the Complainant has made out the second of the three elements that it must establish.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith. Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000‑0003 (WIPO Feb. 18, 2000).
Further guidance on how to implement this requirement is to be found in Policy ¶ 4(b), which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out‑of‑pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that a case has been made out within the meaning of Policy ¶ 4(b)(iii) and (iv) and that accordingly the domain name has been registered and used in bad faith.
It would be apparent from the previous section of the Panel’s decision that it has concluded that Respondent has been using the <advanta.info> domain name to display links to third-party websites offering credit card services in direct competition with Complainant.
Accordingly, the Panel concludes that, pursuant to Policy ¶ 4(b)(iii), this constitutes a disruption of Complainant’s business and is evidence of Respondent’s bad faith registration and use of the <advanta.info> domain name. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Finally, Complainant asserts that Respondent is using the <advanta.info> domain name in an attempting to attract Internet users, presumably seeking Complainant’s business, to its own website. Complainant contends that Respondent is doing this by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name, and that Respondent benefits commercially from these links. The Panel accepts those arguments and accordingly finds that the Respondent’s conduct constitutes evidence of Respondent’s bad faith registration and use 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 Assoc. 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 Complainant has therefore established the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advanta.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Dated: March 11, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum