AdvanceMe, Inc. v. Lenders International
Claim Number: FA1102001372349
Complainant is AdvanceMe, Inc. (“Complainant”), represented by Catherine M. Clayton, New York, USA. Respondent is Lenders International (“Respondent”), represented by Robert E. Campbell of White and Williams LLP, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <advancemetoday.com>, registered with EASYDNS TECHNOLOGIES, 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.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2011; the National Arbitration Forum received payment on February 10, 2011.
On February 11, 2011, EASYDNS TECHNOLOGIES, INC. confirmed by e-mail to the National Arbitration Forum that the <advancemetoday.com> domain name is registered with EASYDNS TECHNOLOGIES, INC. and that Respondent is the current registrant of the name. EASYDNS TECHNOLOGIES, INC. has verified that Respondent is bound by the EASYDNS TECHNOLOGIES, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2011 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@advancemetoday.com. Also on February 16, 2011, 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.
A timely Response was received and determined to be complete on March 8, 2011.
Complainant submitted a timely Additional Submission on March 14, 2011.
Respondent submitted a timely Additional Submission on March 16, 2011.
On March 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts:
· Complainant, AdvanceMe, Inc., is a leading supplier of alternative funding products to small and medium size businesses in diverse industries. Complainant provides its customers with working capital. Complainant’s sales and customer care staff have supported more than 25,000 businesses and more than 100 franchise concepts.
· Complainant has used the ADVANCEME mark in the United States in commerce since at least as early as October 1, 1999 to identify its funding products. Complainant claims common law rights to the use of the ADVANCEME mark in commerce.
· Complainant owns U.S. Trademark Application No. 85/000,892 for the ADVANCEME mark for “providing working capital to small businesses”. The application was published in the USPTO’s Official Gazette on December 21, 2010.
· Complainant previously owned a USPTO registration for its ADVANCEME mark based on its use in commerce since at least as early as October 1, 1999. The registration was inadvertently permitted to be cancelled on January 2, 2010 despite Complainant’s continuous use of the mark from October 1, 1999 to present.
· Respondent registered the disputed domain name on March 5, 2007. Respondent is using the disputed domain name in an attempt to trade on the goodwill associated with Complainant’s ADVANCEME mark and to unfairly divert users who are interested in Complainant’s products to Respondent’s site.
· Respondent prominently displays the ADVANCEME mark on its site and purports to offer products and services that are the same as, or closely related to, those of Complainant.
· The disputed domain name is confusingly similar to Complainant’s ADVANCEME mark.
· Complainant’s rights in the ADVANCEME mark were firmly established long before Respondent registered the disputed domain name on March 5, 2007. Respondent cannot claim or show any rights in the disputed domain name that are superior to Complainant’s rights. Respondent’s registration and use of the disputed domain name has not given it any rights or legitimate interests with respect to that domain name.
· Complainant says Respondent registered and is using the disputed domain name in bad faith. Respondent had no authorization from Complainant to use the ADVANCEME mark. At the time Respondent registered the disputed domain name, Complainant had a valid and subsisting federal trademark registration for ADVANCEME. Respondent therefore had constructive notice of Complainant’s rights in the ADVANCEME mark when Respondent registered the disputed domain name.
· Upon learning the registration had been inadvertently cancelled on January 2, 1010, Complainant took steps to make a new trademark application.
· Complainant says Respondent had actual knowledge of Complainant’s ADVANCEME mark because Respondent prominently displays Complainant’s mark in connection with the advertising and promotion of competing products and services.
· Respondent intentionally 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 and the completing products it offers on its website and with intent to profit from the goodwill associated with the ADVANCEME mark. Because Respondent is using the disputed domain name to post a site that prominently uses the ADVANCEME mark in connection with competing products and services, Respondent is using the disputed domain name in bad faith.
B. Respondent
Respondent asserts:
· Complainant cannot establish any of the three elements for the Complaint and has provided no evidence to support many of its broad statements of fact. Complainant never provided any evidence to support its conclusions that it has made longstanding efforts and expenditures which have created valuable goodwill in the ADVANCEME mark.
· Complainant has not identified a single consumer who has confused Respondent’s and Complainant’s websites. Respondent’s <advancemetoday.com> website is clearly a payday loan service directed to individuals, not businesses. Complainant’s <advanceme.com> website features the banner “Financial solutions to Advance your business” and is expressly directed to business owners. The website says Complainant serves small to mid-sized businesses that process credit card sales.
· The disputed domain name is not identical to or confusingly similar with Complainant’s mark. Furthermore, Complainant cannot establish a valid ADVANCEME trademark. A pending trademark application is not sufficient to establish rights in the mark.
· An Internet user attempting to reach Complainant’s website by typing Complainant’s purported mark followed by “.com” would not reach Respondent’s website. Nor would a simple spelling or typographical error likely lead a consumer attempting to access Complainant’s site to Respondent’s site.
· Common law rights can be established in a mark provided sufficient evidence is supplied by the complainant to show that a mark has obtained secondary meaning. Complainant has not provided evidence of any relevant secondary meaning factors such as length and amount of sales under the mark, nature and extent of advertising, consumer surveys and media recognition. Therefore, Complainant has failed to demonstrate its common law rights in the mark.
· The ADVANCEME mark consists solely of descriptive terms. The mark is not fanciful or arbitrary. Complainant has submitted no evidence to establish either fame or strong secondary meaning in its mark such that consumers are likely to associate ADVANCEME only with Complainant.
· Even if the Panel considers that Complainant had previously held a registered trademark for the ADVANCEME mark, the generic nature of the words “advance” and “me” are sufficient to defeat Complainant’s assertion that the disputed domain name is confusingly similar to its mark. A respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase even where the domain name is confusingly similar to the registered mark of the complainant.
· Complainant’s rights do not predate Respondent’s registration of the dispute domain name. Therefore Complainant has not established rights in the mark.
· Complainant did not allege any facts in support of its contention Respondent’s use of the disputed domain name is not legitimate. Policy 4(c)(i) provides a right or legitimate interest may be established by Respondent showing that: “before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain or a name corresponding to the domain name in connection with a bona fide offering of goods and services.”
· Complainant provided no evidence of when Respondent was given notice of the dispute. In the absence of such evidence, the Panel must assume Respondent received notice on or shortly after the date of this Complaint.
· Respondent has been operating the website <advancemetoday.com> since 2010 and has made over 42,000 loans through the website. Complainant provides no evidence Respondent registered the disputed domain name with knowledge of Complainant’s trademark claims. Complainant does not hold exclusive rights to the generic terms “advance” and “me” and it is more reasonable than not to assume Respondent registered the disputed domain name to describe its business, rather than to conclude that its intent was to trade on Complainant’s goodwill as embodied in Complainant’s claimed mark.
· Respondent is using the disputed domain name as part of its business, which provides pay day loans. The use of the word “advance” is widespread in domain names for pay day advance loan services; for example, <advancenow.com>, <payadvance.com>, <cashadvance.com>, <advanceamerica.net>, and <advancetoday.com>. Respondent uses the disputed domain name to describe the content of the site; therefore, Respondent has a legitimate interest in the domain name.
· General allegations of bad faith do not supply a sufficient basis upon which the Panel may conclude Respondent acted in bad faith. Most panels have declined to introduce the concept of constructive notice into the UDRP.
· Complainant’s assertion that Respondent is attempting to divert users who are interested in Complainant’s products to Respondent’s website is illogical in that Complainant and Respondent are not competitors. Respondent provides pay day loans to consumers and Complainant provides services only to businesses.
C. Additional Submissions
Complainant asserts:
· ADVANCEME is not a generic or descriptive term when applied to Complainant’s funding services. It is a coined term having no meaning, aside from its significance as Complainant’s trademark and trade name.
· Since the filing of this proceeding, Complainant has received its USPTO trademark registration for ADVANCEME without any disclaimer or showing of required distinctiveness. In light of this, Complainant is entitled to a statutory presumption that its rights in the ADVANCEME mark are valid, exclusive and belong to it. Complainant has priority of rights as of its date of first use, October 1, 1999.
· The fact of the trademark registration reflects the USPTO’s repeated findings that ADVANCEME is not generic or merely descriptive of Complainant’s funding services.
· Respondent is not using the words “advance” and “me” in their descriptive or generic sense. Complainant says a review of Respondent’s website shows Respondent uses ADVANCEMETODAY.COM as a trade name for its underlying business.
· In view of the close similarity of the two marks and their services, small differences between the parties’ marks are insufficient to avoid a likely confusion.
· Complainant has rights in the ADVANCEME mark because:
o Complainant is owner of the USPTO registration for ADVANCEME;
o In the United States, there is no requirement to show secondary meaning before common law rights might vest;
o Complainant has made allegations and provided proof sufficient to support a finding that its ADVANCEME mark has secondary meaning. The fact Complainant has been using ADVANCEME in business for eleven years is evidence of secondary meaning.
· The parties’ services are not sufficiently distinct to avoid a likelihood of confusion. Although the parties’ services are not identical, they both provide money to entities that want it or need it. Their services do not have to be identical or directly competitive for there to be likelihood of confusion. They need only be related in some manner, or the conditions of marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.
· Respondent does not deny it had actual knowledge of Complainant’s ADVANCEME mark at the time it registered the disputed domain name. Complainant tried to send Respondent a cease-and-desist letter on May 21, 2010, but the letter was returned as undeliverable on the basis the address was not correct. Complainant says because the letter was sent to the address on the WHOIS Record for the disputed domain name, this is evidence Respondent provided false contact information in its domain name registration. This, Complainant says, is evidence of bad faith registration.
· Complainant repeats its allegation that Respondent’s use of the disputed domain name is a bad faith attempt to attract for commercial gain Internet users to its website by creating the likelihood of confusion with the ADVANCEME mark and repeats its allegation that Respondent had bad faith intent to profit from the goodwill associated with the ADVANCEME mark.
Respondent asserts:
· The Panel should only consider Complainant’s Additional Submission to the extent it presents newly discovered evidence not reasonably available to Complainant at the time of its original submission or that rebuts arguments by Respondent that Complainant could not reasonably have anticipated. Complainant provided no credible evidence of bad faith in its Complaint and now seems to argue Respondent bears the burden of establishing good faith.
· Complainant has offered as evidence to support a finding of bad faith its assertion that Complainant attempted to serve a cease-and-desist letter on Respondent in May 2010 and that Federal Express failed to deliver the letter. From one alleged attempted mailing, Complainant concludes Respondent provided a false address when registering the domain name. Complainant’s argument ignores the fact Respondent was served with this Complaint using the very contact information from the registration for the disputed domain name. Therefore, it is self-evident the address information on the domain name registration was accurate. Respondent’s President has certified on oath that Respondent regularly receives mail at the address identified in the domain name registration.
· There is no evidence Complainant attempted to contact Respondent by e-mail address, telephone number or fax number identified on the domain name registration. Nor did Complainant attempt to contact Respondent via Respondent’s website.
· Complainant has provided no evidence that its mark is so famous Respondent is presumed to have knowledge of it.
· The flaw in Complainant’s argument that Respondent is attempting to attract Complainant’s customers is that Complainant and Respondent are not competitors. Complainant’s entire bad faith argument rests on the proposition that a small business owner arriving at the <advancemetoday.com> website in error would, instead of seeking working capital for his or her small business elsewhere, decide to apply for a pay day loan.
· Complainant has provided no proof Respondent was even aware of its website or mark. Without knowledge of Complainant or its claim of right in a mark, it is difficult to see how Respondent could have the specific intent required to act in bad faith against the interests of Complainant.
· Respondent repeats its assertion that even where a complainant has an incontestable trademark, a respondent may fairly use descriptive or generic terms as a commercial domain name. Here Respondent used three generic or descriptive words to create a website for individuals seeking pay day advances. Respondent submits the results of a Google search of “advance me”. The <advanceme.com> domain name is the fourth result in the search with apparent competitors of Complainant filling the top three slots. Respondent says this search reflects the generic or descriptive nature of the terms of Complainant’s mark.
· Respondent’s President has certified, on oath, that Respondent had no knowledge of Complainant’s mark or website when Respondent registered and began commercially using the disputed domain name. Respondent’s use of the disputed domain name in connection with online services demonstrates Respondent’s rights and legitimate interests in the disputed domain name.
· Respondent is using the disputed domain name as part of its business, which provides pay day advance loans. Complainant has not attempted to refute the fact that the use of the word “advance” is widespread in the domain names for pay day advance loans services. Respondent is using the disputed domain name <advancemetoday.com> to describe the content of the site. Therefore, Respondent has a legitimate interest in the domain name.
· Respondent repeats its earlier arguments about confusing similarity and the generic nature of the words “advance” and “me”. Respondent says it has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered trademark of Complainant.
The Panel finds:
· The disputed domain name is confusingly similar to a trademark in which Complainant has rights.
· Respondent has rights or legitimate interests in the disputed domain name.
· Respondent did not register and is not using the disputed domain name 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."
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 first question is whether Complainant has established rights in the ADVANCEME trademark. Complainant submitted evidence that it filed a trademark application with the United States Patent and Trademark Office (“USPTO”) for the ADVANCEME mark (Application No. 85,000,892 filed March 29, 2010). Complainant provides evidence in its Additional Submission that it now holds a trademark registration with the USPTO for the ADVANCEME mark (Reg. No. 3,928,007; filed March 29, 2010; issued March 8, 2011). Complainant’s trademark registration with the USPTO sufficiently proves it has rights in the ADVANCEME mark pursuant to Policy ¶ 4(a)(i) dating back to at least March 29, 2010. 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 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 Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”).
Because all Policy 4(a)(i) requires is that Complainant establish it has rights in the mark, the Panel need not address here the parties’ arguments about whether Complainant had common law rights or the impact of the lapse of the original trademark registration. In light of other findings, the Panel need not address these issues elsewhere in this decision either.
Complainant asserts Respondent’s <advancemetoday.com> domain name is confusingly similar to its ADVANCEME mark. Complainant argues that Respondent replicates Complainant’s mark in the disputed domain name and then merely attaches the generic term “today” and the generic top-level domain (“gTLD”) “.com” to the mark. The additions of a generic term and gTLD to a mark fail to adequately distinguish the domain name from the mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel holds Respondent’s <advancemetoday.com> domain name is confusingly similar to Complainant’s ADVANCEME mark under Policy ¶ 4(a)(i).
Complainant has established the first element.
Respondent claims it uses the <advancemetoday.com> domain name for a bona fide offering of services. Respondent says it registered the disputed domain name because the name describes Respondent’s business, which provides pay day advance loans and services. Objectively, it seems to make sense to describe a pay day loan business with the words “advance me today”. Respondent asserts it registered the disputed domain name in 2007 and the resolving website became active in 2010. Respondent claims it made over 42,000 loans in 2010 through the <advancemetoday.com> website. Respondent submits a signed statement from its president, Nelly Brenes, in support of these assertions. Additionally, Respondent argues that it does not offer products or services that are the same as, or closely related to, Complainant’s business. Respondent explains that it offers a pay day loan service directed to individuals, not businesses. By contrast, Complainant’s business is directed to business owners.
Taking into account all evidence before the Panel, including the screen shots for each of the two websites, it is clear Respondent and Complainant are not competitors and do not offer related services. Respondent uses the disputed domain name in connection with a legitimate business, pay day loan services. Complainant uses its ADVANCEME mark and domain in connection with business financing. The Panel finds Respondent uses the <advancemetoday.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)); see also Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (finding that the respondent used the <bettendorfnews.com> domain name in connection with a bona fide offering of goods or services by hosting “interactive Internet newspapers that allow[ed] the public to post articles, stories and comments directly to its site”).
In addition, Respondent argues that the terms of the <advancemetoday.com> domain name are common and descriptive, and, therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent claims the use of the term “advance” is widespread in domain names for payday advance loan services. Respondent provides screen shots from the <advancenow.com> domain name, the <payadvance.com> domain name, the <cashadvance.com> domain name, the <advanceamerica.net> domain name, and the <advancetoday.com> domain name. The Panel agrees Respondent is using the dispute domain name for the descriptive terms used. This use by Respondent supports Respondent’s rights or legitimate interests in the disputed domain name. See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
The Panel therefore finds Respondent has rights and legitimate interests in the disputed domain name. Complainant fails on the second element.
The Panel has found that Respondent has rights or legitimate interests in the disputed domain name. Because Respondent has a legitimate interest in the disputed domain name, the registration and use are not in bad faith. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Furthermore, Complainant has made several assertions of bad faith, but has not provided evidentiary support for those assertions. Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
In light of these findings, I need not discuss the question of bad faith any further.
Complainant fails on this element.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <advancemetoday.com> domain name REMAIN WITH Respondent.
Anne M. Wallace, Q.C., Panelist
Dated: April 12, 2011
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