Advanta Bank Corp. & Advanta Corp. v. S.H. INC.
Claim Number: FA0812001237408
Complainants are Advanta Bank Corp. & Advanta Corp. (“Complainants”), represented by Rachel
E. Branson, of Schnader Harrison Segal & Lewis LLP,
REGISTRAR
The domain names at issue are <com-mycardmyway.com>, <mycard-myway.com>, <httpmycardmyway.com>, <thecardmyway.com>, <www-mycardmyway.com>, <mycradmyway.com>, <advanta-business.com>, <advantabusness.com> and <com-advanta.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainants submitted a Complaint to
the National Arbitration Forum electronically on
On
On
On December 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 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@com-mycardmyway.com, postmaster@mycard-myway.com, postmaster@httpmycardmyway.com, postmaster@thecardmyway.com, postmaster@www-mycardmyway.com, postmaster@mycradmyway.com, postmaster@advanta-business.com, postmaster@advantabusness.com and postmaster@com-advanta.com 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.
Complainants request that the domain names be transferred from Respondent to Complainants.
A. Complainants make the following assertions:
1. Respondent’s
<mycard-myway.com> domain name is identical to Complainants’
MY
2. Respondent does not have any rights or legitimate interests in the <com-mycardmyway.com>, <mycard-myway.com>, <httpmycardmyway.com>, <thecardmyway.com>, <www-mycardmyway.com>, <mycradmyway.com>, <advanta-business.com>, <advantabusness.com> and <com-advanta.com> domain names.
3. Respondent registered and used the <com-mycardmyway.com>, <mycard-myway.com>, <httpmycardmyway.com>, <thecardmyway.com>, <www-mycardmyway.com>, <mycradmyway.com>, <advanta-business.com>, <advantabusness.com> and <com-advanta.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Advanta Bank
Corp. & Advanta Corp., are engaged in the issuance and servicing of business
credit cards, and provide other financial services as well. Complainants have utilized the ADVANTA mark (i.e.
Reg. No. 1,484,579 issued
Respondent registered the
disputed <com-mycardmyway.com>, <mycard-myway.com>, <httpmycardmyway.com>, <thecardmyway.com>,
<www-mycardmyway.com>, <mycradmyway.com>, <advanta-business.com>,
<advantabusness.com> and <com-advanta.com>
domain names on either
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 Complainants' 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 Complainants 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 Complainants 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.
The Panel finds that Complainants have set forth sufficient
evidence of their
rights in the ADVANTA and MY
Respondent’s <mycard-myway.com>
domain name
contains Complainants’ entire MY
Respondent’s
<com-mycardmyway.com>, <httpmycardmyway.com>, <thecardmyway.com>,
<www-mycardmyway.com> and <mycradmyway.com> domain names contain Complainants’ MY
Respondent’s <advanta-business.com>, <advantabusness.com> and <com-advanta.com> domain names contain Complainants’ ADVANTA mark while utilizing the following changes: (1) adding a hyphen; (2) adding the generic top-level domain “.com;” and/or (3) adding the generic words “business” or “com.” The Panel has already found that the addition of a hyphen and top-level domain are irrelevant under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, supra. Moreover, the Panel has likewise held that the addition of generic words also fails to sufficiently distinguish a domain name from a trademark, especially where the mark is the dominant element in the disputed domain names. See Wyndham, supra. Respondent’s <advanta-business.com>, <advantabusness.com> and <com-advanta.com> domain names are therefore confusingly similar to Complainants’ ADVANTA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainants have alleged that Respondent lacks rights and
legitimate interests in the disputed
domain names. Based upon the allegations
made in the Complaint, the Panel finds that Complainants have established a prima facie case pursuant to Policy ¶
4(a)(ii), thus shifting the burden of proof to Respondent. Because Respondent has not responded to the
Complaint, the Panel may presume that Respondent lacks rights and
legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses
to examine the record to determine whether Respondent has any
rights or legitimate interests pursuant to the factors outlined in Policy
¶ 4(c). See
Respondent is listed in the WHOIS information for the
disputed domain names as “S.H. INC.” There is no evidence within the record that
would suggest that Respondent is commonly known by the disputed domain names,
and therefore the Panel finds that Respondent lacks rights and legitimate
interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Respondent’s
disputed domain names resolve to websites that display parked advertising for Complainants’
direct competitors. The Panel infers
that Respondent receives the referral fees common to the placement of
third-party links and advertisements. See
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The Panel finds that Respondent’s placement of third-party links and advertisements for Complainants’ direct competitors likely disrupts Complainants’ business by diverting Internet users away from Complainants. The Panel finds that this is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with complainant’s business).
The Panel has inferred that Respondent commercially benefits
when Internet users, upon reaching Respondent’s websites through their
diversion via the identical or confusingly similar disputed domain names,
follow the third-party links. The Panel
finds that Respondent has therefore intentionally created a likelihood of
confusion as to Complainants’ source and endorsement of the disputed domain
names for Respondent’s commercial gain.
This constitutes evidence of Respondent’s bad faith registration and use
under Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll.
Dist. v. College.com, LLC, FA 536190 (Nat. Arb.
Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through
fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical
to Complainant’s
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 <com-mycardmyway.com>, <mycard-myway.com>, <httpmycardmyway.com>, <thecardmyway.com>, <www-mycardmyway.com>, <mycradmyway.com>, <advanta-business.com>, <advantabusness.com> and <com-advanta.com> domain names be TRANSFERRED from Respondent to Complainants.
Dated: January 19, 2009
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