Advanta Corp. v. S1A
Claim Number: FA0210000128710
Complainant is Advanta Corp., Spring House, PA, USA (“Complainant”) represented by Eric A. Dichter, of Wolf, Block, Schorr and Solis-Cohen LLP. Respondent is S1A, Novosibirsk, RUSSIAN FEDERATION (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwadvanta.com>, registered with OnlineNIC, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 25, 2002; the Forum received a hard copy of the Complaint on October 28, 2002.
On October 28, 2002, OnlineNIC, Inc. confirmed by e-mail to the Forum that the domain name <wwwadvanta.com> is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 18, 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 December 9, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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.
A. Complainant makes the following assertions in the Complaint:
1. Respondent’s <wwwadvanta.com> domain name is identical or confusingly similar to Complainant’s ADVANTA registered mark.
2. Respondent does not have any rights or legitimate interests in the <wwwadvanta.com> domain name.
3. Respondent registered and used the <wwwadvanta.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds Service Mark Reg. No. 1,484,579 representing the ADVANTA mark, which was registered on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) on April 12, 1988. Complainant’s registration for the ADVANTA mark denotes mortgage lending services, while indicating that the mark was first used in January of 1987. In addition to Reg. No. 1,484,579, Complainant holds Reg. Nos. 2,137,420; 2,316,911; 1,611,541; 1,735,801; and, 1,484,579 all reflecting the ADVANTA mark.
Complainant has registered numerous domain names that incorporate its ADVANTA mark, including, inter alia: <advanta.com>, <advantabank.com>, <advantacard.com> and <advantagrowthcapital.com>.
Complainant and its affiliated companies have spent considerable resources establishing the goodwill associated with the ADVANTA mark. For the ten-year period from 1992 to 2001, Complainant incurred about $538 million in marketing and advertising expenses. During the aforementioned time, Complainant marketed its products and services on a national basis using a wide variety of media, including, but not limited to: direct mail, national and local television advertising, radio, print advertisements and the Internet. As a result of Complainant’s expenditure of significant resources and offering of quality services, the ADVANTA mark has become famous and is a significant source identifier for Complainant and its services.
Respondent registered <wwwadvanta.com> on June 15, 2002. Complainant’s investigation into Respondent’s use of the subject domain name indicates that <wwwadvanta.com> redirects Internet users to Complainant’s <advanta.com> domain name and corresponding website.
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.
Complainant has established rights in the ADVANTA mark by registering the mark with the USPTO and subsequent continuous use of the mark to denote its financial services.
Respondent’s <wwwadvanta.com> domain name is confusingly similar to Complainant’s ADVANTA mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and deviates only with the addition of “www,” which identifies the Internet medium. Respondent’s domain name seeks to take advantage of a common typographical error made by Internet users when attempting to key Complainant’s address into the Internet browser, namely, forgetting to enter the period between the “www” designation and the second-level domain. Thus, Respondent’s domain name fails to create a distinct and separate mark capable of overcoming Policy ¶ 4(a)(i)’s threshold. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that the domain name is identical to Complainant’s PRUDENTIAL ONLINE trademark…also the root of the domain name, namely the word "Prudential," is identical to Complainant’s mark…thus, the domain name in its entirety is confusingly similar to Complainant’s family of marks).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has submitted materials to the Panel that constitute a prima facie case. The burden shifts to Respondent, thus, providing an opportunity for Respondent to refute Complainant’s accusations. Because Respondent failed to submit a Response, Complainant’s assertions are unopposed and all reasonable inferences will be resolved 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 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).
Complainant indicates that Respondent uses the <wwwadvanta.com> domain name in order to divert users to Complainant’s website located at <advanta.com>. Respondent’s lack of development of a website affiliated with the disputed domain name suggests Respondent does not have any rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii). See 3Z Prod. v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000) (finding a legitimate interest in a domain name is shown by website development). Respondent’s activities exhibit characteristics labeled as “typosquatting,” whereby a domain name registrant registers a confusing variation of a famous mark in order to eventually profit from the use of the famous mark in the domain name. Such use fails to establish rights or legitimate interests in the domain name because Respondent has failed to provide evidence of demonstrable preparations or plans to use the <wwwadvanta.com> domain name in connection with a legitimate purpose. Because of the infringing nature inherent in the disputed domain name, the Panel determines that it is unlikely Respondent could fashion a purpose for the domain name that would establish rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See 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); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (“It makes no sense whatever to wait until [Respondent] actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).
Respondent has not proffered any evidence that would suggest a legitimate connection exists between it and the disputed domain name. Further, Complainant has established that its ADVANTA mark is established, well-known and a significant source-identifier for Complainant’s services. Respondent is not licensed or otherwise authorized to use the ADVANTA mark for any purpose or use. Because of the aforementioned circumstances, it is evident that Respondent is not commonly known by the <wwwadvanta.com> domain name under Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Policy paragraph 4(b) lists criteria that constitute bad faith registration and use. However, the list is merely illustrative and not exhaustive, thereby allowing other unlisted circumstances to satisfy Policy ¶ 4(a)(iii). Previous panels have determined that it is appropriate to examine the “totality of circumstances” when reviewing a respondent’s conduct. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶ 4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
As stated, the circumstances surrounding Respondent’s registration of the domain name suggest Respondent is engaged in typosquatting. Precedent has determined that typosquatting constitutes bad faith and fulfills the requirements set forth in Policy ¶ 4(a)(iii). Further, because of the infringing characteristics of the domain name and Respondent’s failure to submit evidence or assertions rebutting Complainant’s allegations, the Panel finds Complainant’s arguments persuasive. More specifically, Respondent registered and used the <wwwadvanta.com> domain name in bad faith since there are no indications that Respondent could use the domain name for any non-infringing purpose. See AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where there are no indications that Respondent could have registered and used the domain name in question for any non-infringing purpose); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that given the long use and fame of Complainant’s mark, Respondent’s conduct is evidence of bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <wwwadvanta.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 23, 2002
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