Advanta Corp. v. Joe Sano and Media Garage LLC
Claim Number: FA0905001260985
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 <advantabankcustomerservice.com>, registered with Namesecure.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 5, 2009.
On May 5, 2009, Namesecure.com confirmed by e-mail to the National Arbitration Forum that the <advantabankcustomerservice.com> domain name is registered with Namesecure.com and that Respondent is the current registrant of the name. Namesecure.com has verified that Respondent is bound by the Namesecure.com 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 May 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is the owner of the ADVANTA service mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,484,579, issued April 12, 1988).
Complainant uses the ADVANTA mark in conjunction with marketing and advertising for its credit card and banking services.
Respondent registered the <advantabankcustomerservice.com> domain name on February 23, 2009.
Respondent is not using the disputed domain name to resolve to an active website.
Respondent’s <advantabankcustomerservice.com> domain name is confusingly similar to Complainant’s ADVANTA mark.
Respondent does not have any rights to or legitimate interests in the domain name <advantabankcustomerservice.com>.
Respondent registered and uses the <advantabankcustomerservice.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in its ADVANTA mark pursuant to Policy ¶ 4(a)(i) based on its registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007): “As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).” See also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006): “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”
Complainant alleges that Respondent’s <advantabankcustomerservice.com> domain name is confusingly similar to its ADVANTA mark. The disputed domain name incorporates Complainant’s entire ADVANTA mark, with the mere addition of the generic phrase “bank customer service” and the affixation of the generic top-level domain “.com.” The added generic phrase, which describes Complainant’s business, fails to alleviate the confusing similarity between Respondent’s domain name and Complainant’s ADVANTA mark. Additionally, top-level domains are irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007):
The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described a complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish a respondent’s disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i)).
Therefore, the Panel concludes that Respondent’s domain name is confusingly similar to Complainant’s ADVANTA mark under Policy ¶ 4(a)(i).
For purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must first make out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name. Once Complainant satisfies this burden, Respondent has the burden to show that it has relevant rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.
Complainant has met its initial burden in these proceedings, while Respondent has failed to respond to Complainant’s allegations. We may infer from this failure that Respondent lacks any rights to or legitimate interests in the <advantabankcustomerservice.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
Nonetheless we elect to review the record before us to determine whether there is any basis for concluding that Respondent has any rights to or legitimate interests in the disputed domain pursuant to the considerations set out in Policy ¶ 4(c).
We begin by noting that the pertinent WHOIS information lists Respondent only as “Joe Sano and Media Garage LLC.” This suggests that Respondent is not commonly known by the <advantabankcustomerservice.com> domain name, and taken together with the absence of information to the contrary, satisfies us that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the pertinent WHOIS information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the pertinent WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of disputed domain names, and there was no other evidence in the record to suggest that that respondent was commonly known by the domain names in dispute).
We turn then to Complainant’s allegation, which Respondent does not deny, that the disputed domain name is not being used to resolve to an active website. Respondent’s failure to put the domain to active use, or even to demonstrate preparations for such a use, suggests that Respondent lacks rights to and legitimate interests in the contested domain name. Thus, we conclude that Respondent has not used the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that a respondent’s non-use of the domain name <abc7chicago.mobi> from the time of its registration provided evidence that that respondent lacked rights to or legitimate interests in the domain name).
Complainant has thus satisfied Policy ¶ 4(a)(ii).
The itemization of considerations bearing upon a finding of bad faith registration and use of a contested domain name found in Policy ¶ 4(b) are illustrative rather than exhaustive. See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”) (emphasis in original); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy are not an exhaustive list of bad faith evidence). On the spare record before us, we are convinced that Respondent’s undenied failure to make an active use of the disputed domain name, in the circumstances presented, is evidence of bad faith under Policy ¶ 4(b). Thus, we conclude that Respondent has engaged in bad faith registration and use of its domain under Policy ¶ 4(b). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that holding an offending domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that a respondent made no use of a contested domain name, or of the website that connected with that domain name, and that failure to make an active use of the domain name permitted an inference of registration and use of the domain in bad faith).
For this reason, we find that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <advantabankcustomerservice.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 16, 2009
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