Advanta Corp. v. Jack Funderburk
Claim Number: FA0902001246696
Complainant is Advanta
Corp. (“Complainant”),
represented by Rachel E. Branson, of Schnader Harrison Segal & Lewis LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <advanta-businesscreditcard.com>, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 9, 2009.
On February 9, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <advanta-businesscreditcard.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 February 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 2009 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@advanta-businesscreditcard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <advanta-businesscreditcard.com> domain name is confusingly similar to Complainant’s ADVANTA mark.
2. Respondent does not have any rights or legitimate interests in the <advanta-businesscreditcard.com> domain name.
3. Respondent registered and used the <advanta-businesscreditcard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Advanta Corp., is a leading issuer of credits
cards to small businesses and professionals across the
Respondent’s registered the <advanta-businesscreditcard.com> domain name on July 19, 2008. Respondent’s disputed domain name resolved to a website displaying the ADVANTA mark and offering “testimonials” about Complainant’s goods and services in an attempt to pass itself off as Complainant.
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.
The Panel finds that Complainant has established rights in
the ADVANTA mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007)
(finding that a trademark registration adequately demonstrates a complainant’s
rights in a mark under Policy ¶ 4(a)(i)); see also
Complainant argues that Respondent’s <advanta-businesscreditcard.com> domain name is confusingly similar to Complainant’s ADVANTA mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains Complainant’s mark in its entirety, adds the terms “business” and “credit card,” which have an obvious relationship to Complainant’s business, adds a hyphen, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that generic terms, especially generic terms with an obvious relationship to a complainant’s business operation that are added to a complainant’s registered mark, create a confusing similarity between the disputed domain name and the mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). In addition, the Panel finds that the addition of a gTLD and hyphen are irrelevant in distinguishing a disputed domain name from a registered mark. 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 also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Therefore, Respondent’s disputed domain name is confusingly similar to Complainant’s ADVANTA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the <advanta-businesscreditcard.com> domain name. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has establised a prima facie case. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
Complainant contends that Respondent is neither commonly
known by, nor licensed to register, the disputed
domain name. Respondent’s WHOIS
information identifies Respondent as “Jack Funderburk.” The Panel finds that Respondent’s failure to
respond to the Complaint, as well as the WHOIS information demonstrates that
Respondent is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii),
Respondent lacks rights and legitimate interests in the disputed domain
name. 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply).
Respondent’s
disputed domain name resolves to a website that directly imitates Complainant’s
official website at the <advanta.com> domain name. This imitation is referred to as “passing
off.” The Panel finds that Respondent’s
attempt to pass itself off as Complainant is neither a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby,
FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts
to pass itself off as the complainant online, which is blatant unauthorized use
of the complainant’s mark and is evidence that the respondent has no rights or
legitimate interests in the disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither
a bona fide offerings [sic] of goods or services, nor an example of a
legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when
the holder of a domain name, confusingly similar to a registered mark, attempts
to profit by passing itself off as Complainant . . . .”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the disputed domain
name is likely to cause disruption to Complainant’s business. Therefore, the Panel finds that Respondent
has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See
Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining
“competitor” as “one who acts in opposition to another and the context does not
imply or demand any restricted meaning such as commercial or business
competitor”); see also DatingDirect.com Ltd. v. Aston,
FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is
appropriating Complainant’s mark to divert Complainant’s customers to
Respondent’s competing business. The
Panel finds this diversion is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent is using the <advanta-businesscreditcard.com> domain name to pass itself off as Complainant. The Panel finds that this constitutes bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s 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 <advanta-businesscreditcard.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 20, 2009
National
Arbitration Forum