Advanta Corp. v. Wan-Fu China, Ltd.
Claim Number: FA0803001156033
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 <wwwadvantahomes.com>, registered with Domaindoorman, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 4, 2008.
On March 4, 2008, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <wwwadvantahomes.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, 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 March 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 31, 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@wwwadvantahomes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <wwwadvantahomes.com> domain name is confusingly similar to Complainant’s ADVANTA mark.
2. Respondent does not have any rights or legitimate interests in the <wwwadvantahomes.com> domain name.
3. Respondent registered and used the <wwwadvantahomes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Advanta Corp., is an issuer of credit cards and financial services to small businesses and professionals, including homeowner’s insurance and mortgage lending services. Complainant registered the ADVANTA mark with the United States Patent and Trademark Office (“USPTO”) on April 12, 1988 (Reg. No. 1,484,579).
Respondent registered the <wwwadvantahomes.com> domain name on October 14, 2007. Respondent has been using the disputed domain name to host a website that lists links to competing and unrelated 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 registered the ADVANTA mark with the USPTO,
thereby establishing rights to the 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 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.”).
The <wwwadvantahomes.com>
domain name is confusingly similar to Complainant’s ADVANTA mark because it
incorporates the entire mark, and merely includes the prefix “www” and the
generic term “homes.” Previous panels
have found that addition of a generic term to a registered mark does not distinguish
the disputed domain name from the mark for the purposes of confusing similarity
under Policy ¶ 4(a)(i), particularly where the generic
term describes the complainant’s business.
The panel in Neiman Marcus Group, Inc. v. S1A,
FA 128683 (Nat. Arb. Forum Dec. 6, 2002) held that confusing similarity
had been established because the prefix "www" did not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from the
complainant's NEIMAN-MARCUS mark.
Finally, because all registered domain names are required to have a
top-level domain, Respondent’s inclusion of the generic top-level domain
(“gTLD”) “.com” does not sufficiently distinguish the disputed domain name from
Complainant’s mark. Therefore, the Panel
finds that the <wwwadvantahomes.com>
domain name is confusingly similar to Complainant’s ADVANTA mark pursuant to
Policy ¶ 4(a)(i).
See Arthur Guinness Son & Co. (
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 <wwwadvantahomes.com> domain name. Complainant has asserted that Respondent’s registration and use demonstrates that Respondent lacks all rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel held that 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.” The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Based on Respondent’s failure to respond to the Complaint, the Panel may presume that Respondent lacks all rights and legitimate interests in the <wwwadvantahomes.com> domain name. However, the Panel will examine all evidence in the record to determine if Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
The WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. Complainant does not indicate that Respondent has been authorized to use the ADVANTA mark. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that the respondent did not have rights in a domain name when the respondent was not known by the mark. Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The website that resolves from the disputed domain name lists links to various websites, some competing with Complainant’s business. The Panel concludes that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial use under 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The disputed domain name is a typosquatted version of Complainant’s mark, as the disputed domain name contains the prefix "www" without the period that commonly follows this prefix in Internet domain names, thus taking advantage of a common typing error by Internet users, and thereby demonstrating Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
By using the disputed domain name to host a website that
redirects Internet users to competing and unrelated websites, Respondent is
commercially benefiting by receiving referral fees. Respondent is benefiting from the goodwill
associated with Complainant’s ADVANTA mark, and Respondent’s use is capable of
creating confusion with Complainant as to the source, sponsorship, affiliation,
or endorsement of the website that resolves from the <wwwadvantahomes.com> domain name. The Panel finds that Respondent’s use of the
disputed domain name is evidence of registration and use in bad faith under
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)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website); see also State Fair of
Respondent’s use of the
disputed domain name is evidence of registration and use in bad faith under
Policy ¶ 4(b)(iii), capable of disrupting
Complainant’s business. See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also 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).
The Panel also finds that Respondent has engaged in typosquatting by registering a disputed domain name that adds the prefix "www" in an attempt to take advantage of a common typing error. Therefore, the Panel finds further evidence of registration and use in bad faith under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
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 <wwwadvantahomes.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 16, 2008
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