Advanta Corp. v. Copper
Point Inc
Claim Number: FA0810001227241
PARTIES
Complainant is Advanta Corp., represented by Bruce
A. McDonald, of Schnader Harrison Segal & Lewis LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <advantahomesolutions.com>, <advantahomesolutions.net>
and <advantahomesolutions.org>,
registered with Godaddy.com, Inc.
PANEL
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.
Nathalie Dreyfus as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 1, 2008; the
National Arbitration Forum received a hard copy of the Complaint on October 1, 2008.
On October 2, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <advantahomesolutions.com>, <advantahomesolutions.net>
and <advantahomesolutions.org>
domain names are registered with Godaddy.com,
Inc. and that the Respondent is the current registrant of the names. 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”).
On October 7, 2008, the National Arbitration Forum requested that
Complainant amend the complaint to properly identify the Respondent and to
submit an electronic copy of the complaint within 5 calendar days. On October
9, Complainant filed an amended complaint.
On October 16, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 5, 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@advantahomesolutions.com, postmaster@advantahomesolutions.net and postmaster@advantahomesolutions.org by e-mail.
A timely Response was received and determined to be complete on November 4, 2008.
Complainant submitted an Additional Submission on November 10, 2008.
On November 12, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Nathalie Dreyfus as Panelist.
On November 17, 2008, Respondent contests the Supplement filing of
Complainant asserting that it had not been timely filed with regards to Section
7 of the Dispute Resolution for Domain Names, Supplemental Rules, Submisssion
of other Written Statements and Documents
According to Supplemental Rule 7 (a) A party may Submit additional written statements and documents to the Forum and the opposing party(s) within five (5) Calendar Days after the date the Response was received by the Forum, or, if no Response has been filed, the last date the Response was due to be received by the Forum. As a result Complainant’s Additional Submission does not comply with Supplemental Rule 7.
The National Arbitration Forum was copied on another correspondence
from Mr. Klaus Rickenbaugh to Advanta Corp. in which it was indicated that “in
order to drop the matter entirely and obtain a full release we are granting the
requested remedy of the transfer of these domains.” However, in its response,
Respondent has indicated that Mr. Klaus Rickenbaugh’s notification was not an
officer of Copper Point Inc. The Panel cannot thus take into account the
correspondence received from Mr. Klaus Rickenbaugh.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
makes the following assertions:
1.
Respondent’s disputed domain names are confusingly similar to
Complainant’s ADVANTA mark.
2.
Respondent does not have any rights or legitimate
interests in the disputed
domain names.
3.
Respondent registered and used the disputed domain names
in bad faith
B. Respondent makes the following assertions:
1.
Respondent
in the proceedings is not Copper Point Inc. or Mr. Klaus Rickenbaugh but
Advanta Home Solutions LLC an Arizona LLC managed by Copper Point Inc.
2.
Complainant
is not engaged in any business beyond the scope of issuance of credit cards to
small business and professionals
3.
Complainant
is no longer involved in the mortgage business since 2001
4.
Advanta
Home Solutions does not infringe Complainant’s trademark
5.
There is
no evidence Advanta Home Solutions LLC is using the term ADVANTA in connection
with credit cards, banking services, insurance and mortgage services
6.
Advanta
Home Solutions LLC is simply a start up investment company
and is not, will not and never has been engaged in any of credit cards, banking
services, insurance and mortgage services. Advanta Home Solutions LLC is not
engaged in mortgage lending.
7.
Complainant
is deploying an excessive legal maneuver meant to intimidate and harass a small
business
8.
50
businesses are today using the Advanta term for their businesses on the web
9.
Complainant
is solely involved in the credit card business which is outside the scope of
the Complaint
10.
Respondent
is not using commercially the disputed domain names because Respondent’s
company Advanta was only incorporated in January 2008 and contacts with Complainant started in February
2008
11.
Due to
the claim of Complainant, Respondent could not execute its business plan
12.
Respondent
has complied to all Complainant’s demands except transferring the domain names
13.
Complainant
has used the services of multiple lawyers located in different cities which is
an intentional strategy to confuse, harass and intimidate Respondent
14.
Respondent
has a legitimate interest on the disputed domain names, being a start up
created in January 2008, the time to make the necessary changes to the website
is normal
15.
Respondent
had to suspend most of its commercial operation due to the actions of
Complainant – Complainant has damaged Respondent
16.
Respondent
contest that its use of the ADVANTA in Advanta Home Solutions is confusingly
similar because it does not use the term ADVANTA with the business segments
corresponding to the services for which Complainant’s trademark is registered
namely credit cards, banking services, homeowners’ insurance coverage, and
mortgage lending
17.
ADVANTA
is widely and generally used as part of business names in many industry
segments
18.
ADVANTA
is an unoriginal term deriving from advantage and not a wholly invented new
term created by Complainant
19.
The use
of the term HOME and SOLUTIONS has no connection with Complainant’s business
20.
Complainant
is using its financial resources to intimidate and harass Respondent.
FINDINGS
Complainant, Advanta Corporation, is a leading
financial services company. In
connection with the provision of these services, Complainant has registered a
number of trade and service marks with the United States Patent and Trademark
Office (“USPTO”) including the ADVANTA mark (Reg. No. 1,484,579 issued April
12, 1988).
Respondent is Copper Point Inc. according to
Registrar verification. Respondent claims that complaint should be directed
against Advanta Home Solutions, LLC, an Arizona LLC managed by Copper Point,
Inc. Advanta Home Solutions LLC is a start-up investment company.
DISCUSSION
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.
Complainant has
provided evidence that ADVANTA is a registered service mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 1,484,579 issued April
12, 1988). The Panel finds Complainant’s
registration of its ADVANTA mark with the USPTO establishes its rights in the
mark pursuant to Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under
Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s ADVANTA
mark. Respondent’s disputed domain names contain Complainant’s mark in its
entirety, add the generic terms “home” and “solutions,” and add generic
top-level domains (“gTLD”). The Panel
finds that the addition of a generic term with an obvious relationship with a
complainant to a registered mark creates a confusing similarity between the mark
and the disputed domain name. See Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also L.L. Bean,
Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding
that combining the generic word “shop” with the complainant’s registered mark
“llbean” does not circumvent the complainant’s rights in the mark nor avoid the
confusing similarity aspect of the ICANN Policy). In addition, the Panel finds that the
addition of a gTLD is irrelevant in distinguishing a disputed domain name from
an established mark. See Sporty's Farm L.L.C. vs. Sportsman's
Mkt., Inc.,
Respondent
makes no pertinent allegations with regards to Policy ¶ 4(a)(i).
Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s disputed domain names are confusingly similar to
Complainant’s ADVANTA mark.
Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names and then the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain names. 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.”).
Complainant asserts in its
Complaint and its Additional Submission that Respondent is not, and has never
been commonly known by the disputed domain names because the website that
resolves from each of the disputed domain names identifies Respondent as “Arizona
Home Solutions.” Furthermore, in its Response, Respondent has provided no
elements justifying the alleged preparation of use of the term ADVANTA. In
addition, Respondent’s WHOIS information lists Respondent as “Private,
Registration,” and Complainant contends that Respondent is a company operating
under the name of “Copper Point, Inc.” Also,
Complainant has not authorized Respondent to use its ADVANTA mark in any
manner.
Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent
argues that Complainant has ceased activity in the field of mortgage lending.
However, Complainant admitted in the Complaint that it no longer originates or
services mortgages but also specified that it retains contingent liabilities,
primarily relating to litigation, arising from its operation of the mortgage
business that were not assumed by the purchased of its mortgage business,
address issues relating to certain outstanding mortgages including filing lien
releases with local offices, handle consumer and other mortgage related
inquiry.
In any event, Respondent’s disputed domain name, <advantahomesolution.com>,
resolve to a website offering financial home solutions while Complainant is a
financial company that still have activities the field of mortgage. As a
result, Respondent cannot show a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Scholastic Inc. v.
Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding
no rights or legitimate interests where “Respondent initially used the domain
name at issue to resolve to a website where educational services were offered
to the same market as that served by Complainant and only altered that use
following a complaint by Complainant”); see also Clear Channel
Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003)
(finding that the respondent, as a competitor of the complainant, had no rights
or legitimate interests in a domain name that utilized the complainant’s mark
for its competing website).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Complainant infers that Respondent’s use of the disputed domain names offering home solutions which compete with Complainant’s business is evidence of bad faith.
Respondent intervenes in a business
field Complainant has been extensively active in the past and is still active,
which has permits in the renewal of its US Trademark Registration No. 1,484,579
for mortgage lending services in class
The Panel thus finds that
Respondent’s use of the disputed domain names is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See
Complainant
also infers Respondent’s use of the disputed domains are confusingly similar to
Complainant’s mark and used to profit from attracting unknowing Internet users
to Respondent’s website for commercial gain.
The Panel finds this use of the disputed domain names demonstrates Respondent was attempting to profit from Complainant’s goodwill associated with its ADVANTA mark and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advantahomesolutions.com>, <advantahomesolutions.net>
and <advantahomesolutions.org>
domain names be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: November 26, 2008
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