Advanta Corp. v. Joshua Holcomb
Claim
Number: FA0503000442061
Complainant is Advanta Corp. (“Complainant”), represented
by Vito Petretti, of Wolf, Block, Schorr, and Solis-Cohen LLP, 1650 Arch Street, 22nd
Floor, Philadelphia, PA 19103-2097.
Respondent is Joshua Holcomb (“Respondent”),
2112 Business Center Drive, Suite 100, Irvine, CA 92612.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <advantalend.com> and <advantalending.com>,
registered with Go Daddy Software, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
16, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 18, 2005.
On
March 17, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <advantalend.com> and <advantalending.com>
are registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. Go Daddy Software,
Inc. has verified that Respondent is bound by the Go Daddy Software, 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
March 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 14, 2005 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 postmaster@advantalend.com and postmaster@advantalending.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 20, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <advantalend.com>
and <advantalending.com> domain names are confusingly similar to
Complainant’s ADVANTA mark.
2. Respondent does not have any rights or
legitimate interests in the <advantalend.com> and <advantalending.com>
domain names.
3. Respondent registered and used the <advantalend.com>
and <advantalending.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Advanta Corp., holds a registration with the United States Patent and Trademark
Office for the ADVANTA mark (Reg. No. 1,484,579 issued 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, Complainant holds marks in Reg. Nos. 2,137,420; 2,316,911; 1,611,541;
1,735,801; and 1,484,579 all reflecting the ADVANTA mark.
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 the <advantalend.com> domain name on December 1, 2004
and the <advantalending.com> domain name on November 8, 2004. Respondent is using the disputed domain
names to redirect Internet users to a website that provides competing financial
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.
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
established by extrinsic proof in this proceeding that Complainant has rights
to the ADVANTA mark as a result of its registration with the United States
Patent and Trademark Office and by continuous use in commerce. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that the registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive. The
respondent has the burden of refuting this assumption); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Wal-Mart Stores, Inc. v. MacLeod,
D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the complainant
to register all possible domain names that surround its substantive mark does
not hinder the complainant’s rights in the mark because “[t]rademark owners are
not required to create ‘libraries’ of domain names in order to protect
themselves”).
The <advantalend.com>
and <advantalending.com> domain names are confusingly similar to
Complainant’s ADVANTA mark because the domain names incorporate Complainant’s
mark in its entirety, merely adding the generic or descriptive terms “lend” and
“lending,” which describe Complainant’s business. The addition of generic or descriptive words to Complainant’s
mark does not negate the confusingly similar aspects of Respondent’s domain
names pursuant to Policy ¶ 4(a)(i). 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 Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
subject domain name incorporates the VIAGRA mark in its entirety, and deviates
only by the addition of the word “bomb,” the domain name is rendered
confusingly similar to the complainant’s mark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001)
(finding that the <hoylecasino.net> domain name is confusingly similar to
the complainant’s HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which the complainant is engaged, does not
take the disputed domain name out of the realm of confusing similarity).
Furthermore, the
addition of the generic top-level domain “.com” is insufficient to negate the
confusingly similar aspects of Respondent’s domain names pursuant to Policy ¶
4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) ("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 Blue Sky Software Corp. v. Digital Sierra,
Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to the complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests in the <advantalend.com> and
<advantalending.com> domain names. See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the respondents’ failure to respond can be construed as an
admission that they have no legitimate interests in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the <advantalend.com>
and <advantalending.com> domain names. Moreover, Respondent is not licensed or authorized to register or
use domain names that incorporate Complainant’s mark. Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) the respondent is not a licensee of the complainant; (2)
the complainant’s prior rights in the domain name precede the respondent’s
registration; (3) the respondent is not commonly known by the domain name in
question).
Additionally,
Respondent is not using the <advantalend.com> and <advantalending.com>
domain names in connection with 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).
Respondent is using domain names that are confusingly similar to Complainant’s
mark to redirect Internet users to a website that provides financial services
in direct competition with Complainant’s business. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat.
Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed
domain name to redirect Internet users to a financial services website, which
competed with the complainant, was not a bona fide offering of goods or
services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (holding that the respondent’s appropriation of the
complainant’s mark to market products that compete with the complainant’s goods
does not constitute a bona fide offering of goods and services); see also
Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan. 10, 2003)
(finding that the respondent had no rights or legitimate interests in the
disputed domain name where it used the complainant’s mark, without
authorization, to attract Internet users to its business, which competed with the
complainant).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the <advantalend.com> and <advantalending.com>
domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by registering domain
names confusingly similar to Complainant’s mark and using the domain names to
market a competing financial services provider. See EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of
variation from the complainant's marks suggests that the respondent, the
complainant’s competitor, registered the names primarily for the purpose of
disrupting the complainant's business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July
18, 2000) (finding the respondent acted in bad faith by attracting Internet
users to a website that competes with the complainant’s business).
Furthermore,
Respondent is capitalizing on the goodwill of the ADVANTA mark by using the <advantalend.com>
and <advantalending.com> domain names to divert Internet users to
a website featuring competing financial services. Since the disputed domain names contain Complainant’s mark, a
consumer searching for Complainant would become confused as to Complainant’s
affiliation with the resulting websites.
Therefore, Respondent’s opportunistic use of the disputed domain names
represents bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from
its diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain).
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 relief shall be GRANTED.
Accordingly, it
is Ordered that the <advantalend.com> and <advantalending.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
May 2, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum