Advanta Corp. v. Alex Kurc
Claim
Number: FA0507000514914
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 Alex Kurc (“Respondent”), Front St. North 76 11, Seattle, WA,
98798.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <advantachoice.com>, registered with Direct
Information Pvt. Ltd., d/b/a Directi.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically July 12,
2005; the National Arbitration Forum received a hard copy of the Complaint July
18, 2005.
On
July 15, 2005, Direct Information Pvt. Ltd., d/b/a Directi.com confirmed by
e-mail to the National Arbitration Forum that the domain name <advantachoice.com>
is registered with Direct Information Pvt. Ltd., d/b/a Directi.com and that
Respondent is the current registrant of the name. Direct Information Pvt. Ltd., d/b/a Directi.com verified that
Respondent is bound by the Direct Information Pvt. Ltd., d/b/a Directi.com registration
agreement and thereby has 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 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 9, 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@advantachoice.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
August 12, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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:
1. The domain name that Respondent
registered, <advantachoice.com>, is confusingly similar to
Complainant’s ADVANTA mark.
2. Respondent has no rights to or legitimate
interests in the <advantachoice.com> domain name.
3. Respondent registered and used the <advantachoice.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Advanta Corp., holds several registrations with the United States Patent and
Trademark Office (“USPTO”) for the ADVANTA mark (e.g., Reg. No.
1,484,579 issued April 12, 1988).
Complainant and its affiliated companies
have spent considerable resources establishing the goodwill associated with the
ADVANTA mark. For the nine-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 <advantachoice.com> domain name February 9,
2005. Respondent is using the disputed
domain names to redirect Internet users to a website displaying adult-oriented
images.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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 through several registrations of the
mark with the USPTO and through continuous use of the mark in commerce. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also Innomed Tech., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The domain name,
<advantachoice.com>, that Respondent registred is confusingly
similar to Complainant’s ADVANTA mark because the domain name features
Complainant’s mark in its entirety and adds the term “choice” and the generic
top-level domain “.com” to the mark. The
Panel finds that these minor alterations to Complainant’s registered mark are
insufficient to negate the confusingly similar aspects of Respondent’s domain
name 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 Am. Online, Inc. v. Anytime Online Traffic Sch.,
FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain
names, which incorporated the
complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity); see
also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO
Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall impression
of the dominant part of the name in each case, namely the trademark SONY” and
thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights to or legitimate interests in the <advantachoice.com>
domain name that contains Complainant’s protected mark. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to prove
that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel presumes that Respondent does not have
rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant has asserted that respondent does not have
rights or legitimate interests with respect to the domain name, it is incumbent
on respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); 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 the complainant that
the respondent does not have rights or legitimate interests is sufficient to
shift the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent is using
the <advantachoice.com> domain name to redirect Internet users to
a website displaying adult-oriented images.
The Panel finds that Respondent’s use of a domain name that is
confusingly similar to Complainant’s ADVANTA mark to redirect Internet users to
an adult-oriented website is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) and it not a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See ABB Asea Brown Boveri
Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (finding that “use
of the disputed domain name in connection with pornographic images and links
tarnishes and dilutes [Complainant’s mark]” and is evidence that the respondent
has no rights or legitimate interests in the disputed domain name); see also
Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept.
27, 2002) (finding that the respondent’s use of its domain name to link
unsuspecting Internet traffic to an adult oriented website, containing images
of scantily clad women in provocative poses, did not constitute a connection
with a bona fide offering of goods or services or a noncommercial or
fair use); see also McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902
(Nat. Arb. Forum June 2, 2003) (holding that the use of domain names to divert Internet users to a website that features
pornographic material, has been “consistently held” to be neither a bona
fide offering of goods or services . . . nor a legitimate noncommercial or
fair use).
Furthermore,
Respondent has not offered any evidence and no proof in the record suggests
that Respondent is commonly known by the <advantachoice.com> domain
name. Moreover, Complainant has not
authorized or licensed Respondent to use its ADVANTA mark. Therefore, Respondent has not established
that it has rights or legitimate interests in the <advantachoice.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee 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 RMO, Inc. v.
Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because the respondent is not commonly known by the disputed domain name or
using the domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges that Respondent acted in bad faith.
Respondent’s use of the <advantachoice.com> domain name to
redirect Internet users to a website displaying adult-oriented images taints
Complainant’s mark and is evidence of bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night
Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that respondent’s tarnishing use of the disputed domain names to redirect Internet users to
adult-oriented websites was evidence that the domain names were being used in
bad faith); see also Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO Mar. 4, 2003) (“Whatever the motivation of Respondent, the
diversion of the domain name to a pornographic site is itself certainly
consistent with the finding that the Domain Name was registered and is being
used in bad faith.”).
Furthermore,
Respondent registered the <advantachoice.com> domain name with
actual or constructive knowledge of Complainant’s rights in the ADVANTA mark due
to Complainant’s registration of the mark with the USPTO. Registration of a domain name that is
confusingly similar to another’s mark despite actual or constructive knowledge
of the mark holder’s rights in the mark is evidence of bad faith registration and
use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when the respondent reasonably should have been aware of the complainant’s
trademarks, actually or constructively.”); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“[T]he complainant’s OXICLEAN mark is listed on the Principal Register of the
USPTO, a status that confers constructive notice on those seeking to register
or use the mark or any confusingly similar variation thereof.”); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the complainant’s mark when it
registered the subject domain name”).
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 <advantachoice.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 26, 2005
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