Advanta Corp. v. David Gilmore
Claim Number: FA0801001129726
Complainant is Advanta Corp. (“Complainant”), represented by Bruce
A. McDonald, of Schnader Harrison Segal & Lewis LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <advantaplatinumbusinesscustomcard.com> and <advantaplatinumbusinesscustomcard.net>, registered with Godaddy.com, 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
On
On January 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 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 postmaster@advantaplatinumbusinesscustomcard.com and postmaster@advantaplatinumbusinesscustomcard.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <advantaplatinumbusinesscustomcard.com> and <advantaplatinumbusinesscustomcard.net> domain names are confusingly similar to Complainant’s ADVANT mark.
2. Respondent does not have any rights or legitimate interests in the <advantaplatinumbusinesscustomcard.com> and <advantaplatinumbusinesscustomcard.net> domain names.
3. Respondent registered and used the <advantaplatinumbusinesscustomcard.com> and <advantaplatinumbusinesscustomcard.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Advanta Corp., issues credit cards to small
businesses and professionals.
Complainant has used the ADVANTA mark since 1987, and registered the
ADVANTA mark with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <advantaplatinumbusinesscustomcard.com> and <advantaplatinumbusinesscustomcard.net>
domain names on
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 registered the ADVANTA mark with the USPTO, and
therefore established rights to ADVANTA mark under Policy ¶ 4(a)(i). See 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."); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum
The Panel finds that the disputed
domain names are confusingly similar to Complainant’s ADVANTA mark under Policy
¶ 4(a)(i). The <advantaplatinumbusinesscustomcard.com> and <advantaplatinumbusinesscustomcard.net>
domain names combine Complainant’s ADVANTA mark with
four generic terms: “platinum,”
“business,” “custom,” and “card.” Previous
panels have concluded that generic terms do not distinguish disputed domain
names from registered marks, especially where the generic terms describe the
complainant’s business. See Space Imaging LLC v.
Brownell, AF-0298 (eResolution
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has the initial burden of showing that
Respondent lacks all rights and legitimate interests in the disputed domain
names. The Panel concludes that
Complainant has made a prima facie
case pursuant to Policy ¶ 4(a)(ii), therefore, the burden shifts to Respondent
to demonstrate that it does have rights and legitimate interests in the <advantaplatinumbusinesscustomcard.com> and <advantaplatinumbusinesscustomcard.net>
domain names. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s failure to respond to the Complaint allows the
Panel to presume that Respondent lacks all rights and legitimate interests in
the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Complainant contends that the use of a disputed domain name to direct Internet users to a parked website, where Respondent collects revenue on a pay-per-click basis, does not demonstrate rights or legitimate interests in the disputed domain names. The website that resolves from the disputed domain name links Internet users to unrelated third-party websites. In Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003), the panel found 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. Here, the Panel also concludes that Respondent’s use of the disputed domain names is not 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 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).
In addition, the WHOIS information does not indicate that
Respondent is commonly known by the <advantaplatinumbusinesscustomcard.com>
or the <advantaplatinumbusinesscustomcard.net>
domain names. Moreover, the Panel can
infer from the record that Complainant has not authorized or licensed
Respondent to use the ADVANTA mark.
Therefore, the Panel concludes that Respondent is not commonly known by
the disputed domain names under Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb.
Forum Feb. 5, 2001) (finding no rights or legitimate interests because the
respondent is not commonly known by the disputed domain name or using the
domain name in connection with a legitimate or fair use); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant alleges that Respondent is using the mark for an
illegitimate use, and that Respondent is exploiting the value of the name. Complainant also contends that Respondent commercially
benefits through a pay-per-click scheme.
Respondent is using the <advantaplatinumbusinesscustomcard.com>
and <advantaplatinumbusinesscustomcard.net>
domain names to host parked pages, listing links to unrelated third-party
websites. The Panel concludes that
Respondent is benefiting from the likelihood of confusion with Complainant’s
ADVANTA mark as to the source, sponsorship, affiliation, or endorsement of the
websites that resolve from the disputed domain names. The Panel therefore concludes that
Respondent’s use of the disputed domain names is evidence of registration and
use 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 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) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial 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 <advantaplatinumbusinesscustomcard.com> and <advantaplatinumbusinesscustomcard.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: February 28, 2008
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