AdvanceMe, Inc. v. First Guaranty Title Services
Claim Number: FA1006001331887
Complainant is AdvanceMe, Inc. (“Complainant”), represented by Catherine M. Clayton, of Gibbons P.C., New York, USA. Respondent is First Guaranty Title Services (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <advanceme1.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2010.
On June 28, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <advanceme1.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 July 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@advanceme1.com. Also on July 8, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" through submission of a Written Notice, as defined in Rule 1. 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 <advanceme1.com> domain name is confusingly similar to Complainant’s ADVANCEME mark.
2. Respondent does not have any rights or legitimate interests in the <advanceme1.com> domain name.
3. Respondent registered and used the <advanceme1.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, AdvanceMe, Inc., has used the ADVANCEME mark since at least as early as October 1, 1999 to provide alternative funding products to small- and medium-sized businesses. Complainant has served more than 25,000 businesses and more than 100 franchises nationwide. Complainant also uses the <advanceme.com> domain name to resolve to its official website. Complainant has a pending trademark registration application with the United States Patent and Trademark Office (“USPTO”) for the ADVANCEME mark (App. No. 85/000,892 filed on March 29, 2010). Complainant formerly owned a trademark registration with the USPTO for the ADVANCEME mark based on its use of the mark in commerce since at least October 1, 1999 (e.g., Reg. No. 2,719,624 issued May 27, 2003). According to Complainant, that registration was inadvertently allowed to be cancelled on January 2, 2010.
Respondent, First Guaranty Title Services, registered the <advanceme1.com> domain name on January 17, 2008. The disputed domain name resolves to a website that prominently displays the ADVANCEME mark and offers products and services which compete with Complainant’s products and services.
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.
Complainant has a pending application for trademark registration
with the USPTO for its ADVANCEME mark. Federal
trademark registration is not necessary to establish rights under Policy ¶
4(a)(i). Prior panels have found that a
governmental registration is not required so long as the Complainant can
establish common law rights through proof of sufficient secondary meaning
associated with the mark. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see also Artistic Pursuit LLC
v. calcuttawebdevelopers.com, FA 894477
(Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require
a trademark registration if a complainant can establish common law rights in
its mark).
Complainant asserts common law rights in the ADVANCEME mark through its continuous use of the mark since 1999 and the consequent development of secondary meaning in the mark. Complainant contends it has used the ADVANCEME mark since at least as early as October 1, 1999. Complainant states it has nationwide sales and customer care staff that has supported more than 25,000 businesses and more than 100 franchises. Complainant also uses the <advanceme.com> domain name to resolve to its official website. According to Complainant’s website, it received the Stevie award for Best MIS and IT Organization in June 2007. In addition, Complainant formerly owned a trademark registration with the USPTO for the ADVANCEME mark based on its use of the mark in commerce since at least October 1, 1999 (e.g., Reg. No. 2,719,624 issued May 27, 2003). According to Complainant, that registration was inadvertently allowed to be cancelled on January 2, 2010. Based on Complainant’s extensive use of the mark in commerce combined with Complainant’s former registration of the mark with the USPTO, the Panel finds Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning in the ADVANCEME mark. Therefore, the Panel finds Complainant has established common law rights in the mark under Policy ¶ 4(a)(i) dating back to 1999. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).
Respondent’s <advanceme1.com> domain name is confusingly similar to its ADVANCEME mark. Respondent fully incorporates Complainant’s mark in the disputed domain name. The Panel finds the addition of the number “1” and the generic top-level domain (“gTLD”) “.com” do not adequately differentiate Respondent’s domain name from Complainant’s mark. See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the nondistinctive number ‘0.’ The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds Respondent’s <advanceme1.com> domain name is confusingly similar to its ADVANCEME mark. Respondent fully incorporates Complainant’s mark in the disputed domain name pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must first show Respondent lacks rights and legitimate interests in the <advanceme1.com> domain name. After Complainant establishes this prima facie case, the burden shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain name. The Panel may interpret Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also 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.”). Despite Respondent’s failure to respond, the Panel will examine the record to determine whether Respondent possesses rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges it has not authorized Respondent to use its ADVANCEME mark in a domain name. Furthermore, the WHOIS information lists “First Guaranty Title Services” as the registrant of the disputed domain name, which the Panel finds is not similar to the <advanceme1.com> domain name. Without evidence to the contrary, the Panel finds Complainant’s assertions in conjunction with the WHOIS information indicate that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends Respondent’s <advanceme1.com> domain name resolves to a website that offers financial products and services that are the same as, or closely related to, Complainant’s products and services. Screen shots of the resolving website show Complainant’s ADVANCEME mark prominently displayed throughout the site. The Panel assumes Respondent profits from the advertisement and promotion of these financial services. Therefore, the Panel finds Respondent’s use of a confusingly similar domain name to profit from advertising financial products and services that compete with Complainant’s business does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent uses a confusingly similar disputed domain name to redirect Internet users seeking Complainant’s website to a Respondent’s website, which offers products and services that compete with Complainant’s products and services. Consequently, the Panel finds Respondent’s domain name disrupts Complainant’s business, which constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See 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).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Respondent has attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the ADVANCEME mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent displays Complainant’s mark and financial services that are similar to Complainant’s, and likely profits from advertising these financial products and services. The Panel finds that this is further evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advanceme1.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 12, 2010
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