Advanta Corp. v. Advanta Solutions, LLC
Claim Number: FA0803001157059
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 <advantasolutions.com>, registered with Domaindiscover.
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.
Debrett Gordon Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 5, 2008.
On March 6, 2008, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <advantasolutions.com> domain name is registered with Domaindiscover and that the Respondent is the current registrant of the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 3, 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 April 3, 2008.
Additional Submissions were received from both parties – from Complainant on April 8, 2008 and from Respondent on April 14, 2008. Both sets of Additional Submissions were timely and complied with Supplemental Rule 7.
On April 11, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett Gordon Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts trademark rights and alleges that the disputed domain name is confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
In particular, Complainant contends that, through its
subsidiary Advanta Bank Corp., it is one of the largest providers in the
Through co-branding relationships, Complainant alleges use of the trademark outside its core business in connection with services including the endorsement of car rental, shipping, business directory registration, printing, website development and identity theft protection.
Complainant additionally asserts registered trademark rights.
Complainant submits that the disputed domain name merely adds the generic word “solutions” to its trademark and that is insufficient to avoid confusion with its trademark.
Complainant submits that Respondent’s website is inactive and that Respondent is a defunct entity with no rights or legitimate interest in the disputed domain name. Its attempts by certified mail and by e-mail to contact Respondent were either repelled or were unsuccessful. Complainant submits that whilst Respondent may have once been known as “Advanta Solutions,” Respondent has not made any use of the name in many years and is not presently known by the name.
In any event, Complainant alleges that Respondent had constructive knowledge of Complainant’s trademark and that its failure to respond to pre-Complaint demand letters is indicative of bad faith.
Contrary to the expectation created by the Complaint, a timely and developed Response was filed.
The thrust of the Response is that before notice of the dispute, Respondent has been making use of the disputed domain name in connection with a bona fide offering of services distinct from those of Complainant. Respondent submitted that it is commonly known by the domain name and has a legitimate interest in the name. Finally, Respondent argued that it registered and has used the domain name in good faith.
Respondent alleges that its predecessor in business, Advanta Solutions,
Inc., was incorporated under the laws of the State of
It is alleged that Advanta Solutions, Inc. employed consultants who worked as systems analysts, programmers, database administrators and software support technicians. Advanta Solutions, Inc. was dissolved in 2006 and Respondent was formed in its stead, continuing to service the same customers of the predecessor company.
Respondent states that it is not providing banking, credit card or financial services of any description. Respondent submits that it has never attempted to confuse Internet users, nor divert custom from Complainant. Respondent states that its business is described on the home page of Respondent’s website which uses the domain name. Respondent further submits that Complainant’s website makes it equally clear that Complainant is not in the business of developing web-enabled software solutions, but is in the banking business and offers credit cards to small business.
In response to Complainant’s suggestion that:
…the likelihood of confusion is aggravated by Respondent’s website at www.advantasolutions.com, which creates the impression that Respondent focuses on the development of custom web applications. Complainant has cooperative and co-branding agreements involving the sponsorship and endorsement of website hosting and online services advertised by Complainant at www.advanta.com/adv/businessSavings/Home.page …
Respondent observes that the co-branding relationship is described on Complainant’s website, but nowhere is there any evidence that the relationship existed prior to registration of the disputed domain name.
Moreover, Respondent argues that the third party’s website, <web.com>, reveals the nature of the relationship between Complainant and <web.com>. A discount is offered to Complainant’s customers who use <web.com> for website hosting or development services. The reference to “Advanta” on <web.com> is to:
Advanta 15% Off
Offer entitles customers purchasing a new Web.com hosting plan and/or Web.com design services through the 800 number specified to receive 15% off of the monthly recurring or one-time charges for such products and services. Discount applies for 12 months or, if longer, length of initial term selected. Add-on features and additional products are not included in offer and may result in additional fees. Advanta makes available the discount mentioned above to its customers, but is not affiliated with Web.com and assumes no responsibility for the availability, use or performance of the products/services offered. The website you are using is not operated by Advanta, and Advanta has no responsibility for or control over this site or the content, products, services or privacy or security practices on this site.
Thus, argues Respondent, the inference that confusion between Complainant and Respondent is all the more likely because the parties both offer web-enabled software development and website hosting services is fanciful.
Respondent asserts that it has consistently used its domain name since
1999. The business name and domain name
are used on Respondent’s letterhead, electronic mail, business cards and
paper-based marketing materials. Respondent
is actively doing business with clients throughout
C. Additional Submissions
Complainant admits that Respondent demonstrated conduct of a legitimate commercial enterprise. Nonetheless, Complainant argues that the issue is not whether Respondent has a legitimate commercial enterprise, but whether Respondent has a legitimate interest in use of Complainant’s trademark. Complainant submits that can never be so since Respondent’s commercial offerings are a direct infringement of Complainant’s federal service mark registrations.
Respondent’s Additional Submissions are considered, where necessary, in the body of the Discussion below.
1. The evidence shows that Respondent is making a genuine offering of services under the disputed domain name.
2. Complainant admits Respondent is conducting a legitimate business.
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 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;
(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.
The Panel is required to determine if the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
Rights in a trademark can accrue through use or registration. The Panel has no trouble in finding that, through use, Complainant has acquired so-called “common law” rights in the trademark ADVANTA.
Ordinarily, it would not now be necessary to look to the registered rights, however in this case and for reasons connected with other aspects of the Policy, the Panel makes the following observations.
First, there are in evidence Federal trademark registrations purporting to support Complainant’s claim to “rights” which are not in Complainant’s name, nor in the name of a company which might reasonably be assumed to form part of Complainant’s company group. The Panel can accord them no weight.
Second, there are registrations – sometimes in Complainant’s name, sometimes not – for trademarks such as MOBILE ADVANTA (with and without additional device elements), or ADVANTA HEALTH PLAN PLUS.
Third, there are registrations and applications, the filing dates and first use dates of which, postdate the date of registration of the disputed domain name by many years.
Fourth, the properties said to support Complainant’s argument that Respondent is directly infringing its registrations have not been put into evidence, but from their description it is evident that they are still pending, or fall into one or more of the above classes in that they are for embellished trademarks and/or significantly postdate the domain name registration.
Finally, the older word mark registrations for ADVANTA in the name of Complainant or its stated subsidiary, Advanta Bank Corp., which clearly predate the domain name registration, are limited to credit card services.
Notwithstanding the limitations to the registered rights, the last paragraph is enough to establish that Complainant has rights in the trademark through registration as well as use. The only residual question under Paragraph 4(a)(i) of the Policy is whether the domain name is confusingly similar to the trademark.
The Panel notes that there are several instances where one or other party misconceives how the Policy has been applied. One example is Respondent’s repeated claim that it is using the domain name for a non-competing use far removed from that of Complainant’s business. That claim is not relevant to Paragraph 4(a)(i) of the Policy. A second example is the parties’ concern that the content of the respective websites is a factor in the assessment of confusing similarity under Paragraph 4(a)(i) of the Policy. It is not.
The domain name contains the whole of Complainant’s mark with the addition of the term “solutions,” and the generic top-level domain, “.com.” It has been held that the gTLD can be ignored as trivial for the purpose of this comparison. Complainant submitted that the word “solutions” is generic and so adds nothing distinguishing to the trademark. The Panel is persuaded by that argument and notes support for it in earlier decisions under the Policy. The domain name is confusingly similar to the trademark
Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant must make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent.
Complainant initially alleged that Respondent was a defunct company and that its website corresponding with the domain name was not in use. Had that been so, a case may have existed that Respondent had no rights or interests in the disputed domain name. Not only was that allegation traversed by Respondent, but Complainant has also conceded that Respondent is conducting a legitimate commercial enterprise under the name.
Accordingly, the onus returned to Complainant which, in its Additional Submissions, argues that Respondent can not have a legitimate interest in the domain name because its use is a direct infringement of Complainant’s trademark.
Paragraph 4(c)(i) is that:
before any notice to you 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.
Paragraph 4(c)(ii) is that:
you (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.
Again, the evidence demonstrates to the Panel that Respondent falls within that description.
To fully address Complainant’s submissions, it is left to the Panel to say something of the body of prior decisions under the Policy which have somehow read Paragraph 4(a)(ii) to be subject to an overriding requirement that a respondent has acted legitimately or in a bona fide fashion. A subset of those decisions can be read as authority for the proposition that a respondent can not show a legitimate interest in a domain name that infringes a complainant’s trademark rights.
Whatever else might be said about that last proposition in terms of how far principles of trademark law align themselves with the UDRP, it is clear that in this case there is nothing approaching even a prima facie case that use of the disputed domain name is a “direct infringement” of Complainant’s trademark rights. This Panel is of the opinion that any finding of infringement of Complainant’s common law rights would be purely speculative. So far as Complainant’s registered rights are concerned, it has already been shown that they are either not yet registered, registered long after Respondent’s registration and first use of the domain name, or registered to third parties, or for potentially dissimilar trademarks, or in classes having no conceivable nexus with Respondent’s activities.
In addition to satisfying two sets of criteria of legitimate interest under Paragraph 4(c) of the Policy, the Panel is also satisfied that Respondent has acted in a bona fide manner to the extent that might also be a requirement.
The Panel finds that Respondent has rights or legitimate interests in the disputed domain name. Accordingly, Complainant has failed to establish the second element of the Policy.
No finding required.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Debrett G. Lyons, Panelist
Dated: April 24, 2008
 Complainant and its predecessors have offered financial services to the business and professional community since 1951. Complainant’s 2006 net income was $84.47 million. It added about 371,000 new customers in 2006, a 56% increase from the prior year, and ended the year with 1.1 million customers and $5.2 billion in managed receivables.
 First use date in U.S. Reg. No. 1,487,579 was 1987.
 Between 1992 and 2001, Complainant spent $538 million on marketing and advertising, including direct mail, national and local television advertising, radio, print advertisements, telemarketing, the Internet and billboards.
 “Advanta Solutions now focuses on rapidly and efficiently solving complex department-level business problems within large commercial and governmental enterprises that seek to improve operations through technological innovation. Advanta Solutions develops custom Web-enabled solutions for Intranets and extranets built on sound business practices and a proprietary development methodology using standard software tools.”
 “ADVANTA” & Design, U.S. Reg. No. 3,200,382, registered Jan. 23, 2007 (covering “business marketing and consulting services and advertising services” in Class 36); “ADVANTA,” U.S. Service Mark Application Serial No. 78/656,640, published for opposition Nov. 14, 2006, for services including “business marketing” in Class 35.
 See 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.”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
 For example, US Registration No. 1484579 in the name of TSO Financial Corp.
 See note 5 above.
 Since it is clearly not identical to the trademark.
 It may be of relevance to Paragraphs 4(a)(ii) & (iii).
 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 the purpose of determining whether it is identical or confusingly similar).
 See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding <novellsolutions.com> confusingly similar to the trademark NOVELL).
 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 UDRP ¶ 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.”).
 See LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (A respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when the respondent might be capable of doing otherwise); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).
 Which included client testimonials.
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