American International Group, Inc. v. Advantage Capital
Claim Number: FA0209000125383
Complainant is American International Group, Inc., New York, NY (“Complainant”) represented by Claudia Werner. Respondent is Advantage Capital, Carson City, NV (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advantagecapital.org>, registered with VeriSign, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 20, 2002; the Forum received a hard copy of the Complaint on September 23, 2002.
On September 24, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the domain name <advantagecapital.org> is registered with VeriSign, Inc. and that Respondent is the current registrant of the name. VeriSign, Inc. has verified that Respondent is bound by the VeriSign, 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 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 21, 2002 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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.
The <advantagecapital.org> domain name is identical to Complainant’s ADVANTAGE CAPITAL mark.
Respondent has no rights or legitimate interests in the <advantagecapital.org> domain name.
Respondent registered and used the <advantagecapital.org> domain name in bad faith.
Respondent has failed to submit a Response.
Complainant holds a trademark registration with the United States Patent and Trademark Office for the ADVANTAGE CAPITAL mark (Reg. No. 1,555,033). Complainant uses the ADVANTAGE CAPITAL mark in conjunction with its “brokerage services related to investment company shares.” Complainant has used the mark in commerce since at least as early as September 1, 1987.
Complainant has invested a substantial amount of money and time in promoting and developing its ADVANTAGE CAPITAL mark. Consequently, the ADVANTAGE CAPITAL mark is well-recognized by the “relevant trade and consuming public as indicating high quality services” offered by Complainant. Thus, the mark carries with it a valuable amount of goodwill.
Respondent registered the <advantagecapital.org> domain name on September 19, 2001. The domain name resolves to a website that claims to offer financial services under the auspices of “Advantage Capital.” Complainant has discovered that Respondent is engaged in a credit card scheme whereby Respondent has been debiting bank accounts of consumers without authorization. Complainant became aware of this activity when it received numerous complaints about large withdrawals from checking accounts of consumers who believed they were dealing with Complainant. Apparently, Respondent was offering to send consumers “an ‘Advantage Capital’ stored value MasterCard” on the condition that a minimal shipping fee was to be paid. Subsequently, Respondent withdrew large amounts from the checking accounts and consumers, believing Respondent was Complainant, sent complaints to Complainant. Respondent is not authorized to use the ADVANTAGE CAPITAL mark.
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 the 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.
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 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.
Identical and/or Confusingly Similar
Complainant has established its rights in the ADVANTAGE CAPITAL mark through proof of registration with the United States Patent and Trademark Office.
Respondent’s <advantagecapital.org> domain name reflects Complainant’s entire ADVANTAGE CAPITAL mark with the inconsequential addition of the top-level domain “.org.” Top-level domains have no bearing on a Policy ¶ 4(a)(i) analysis because they are required. In addition, the fact that Respondent’s domain name does not contain the space that Complainant’s trademark has between the words of the mark is irrelevant because spaces are impermissible in domain names. Therefore, Respondent’s <advantagecapital.org> domain name is identical to Complainant’s ADVANTAGE CAPITAL mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has filed a prima facie Complaint and has asserted that Respondent lacks rights or legitimate interests in the domain name. Complainant’s compliance with the Policy shifts the burden on Respondent to articulate rights or legitimate interests in the domain name. However, Respondent has not submitted a Response in this proceeding and therefore the Panel presumes Respondent has no such rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
In addition, because Respondent did not come forward with a Response, the Panel accepts Complainant’s allegations as true and will draw all reasonable inferences in favor of Complainant. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent uses the <advantagecapital.org> domain name to resolve to a website that offers financial services under the name “Advantage Capital.” Complainant has discovered that this website is a front for Respondent’s telephone and mail solicitations that purport to offer the consuming public a credit card for the cost of shipping and handling. Subsequent to subscribing to Respondent’s offer an amount larger than shipping and handling is drawn from a consumer’s bank account and no credit card is delivered. In order to conduct this fraudulent activity Respondent passes itself off as Complainant by using the ADVANTAGE CAPITAL mark. Consequently, Complainant has received numerous complaints from disgruntled consumers. Therefore, Respondent uses the domain name to attach an appearance of legitimacy in regards to its fraudulent credit card scheme, which does not represent rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).
Respondent apparently attempts to pass itself off as “Advantage Capital” but there is no evidence on record that shows Respondent is commonly known by said name or the <advantagecapital.org> domain name. Respondent’s failure to come forward and claim that it is commonly known by the domain name and the aforementioned circumstances make it clear that Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <advantagecapital.org> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The circumstances of this case make it clear that Respondent was aware of Complainant’s interests in the ADVANTAGE CAPITAL mark. In its credit card scheme, Respondent attempts to pass itself off as Complainant to the consuming public by using Complainant’s ADVANTAGE CAPITAL mark. Respondent uses the <advantagecapital.org> domain name to provide a legitimate front for its credit card scheme. Hence, Respondent’s use of the subject domain name causes further confusion as to Complainant’s sponsorship. Respondent’s registration and use of the domain name, therefore, constitutes bad faith under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <advantagecapital.org> be transferred from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 13, 2002
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