Advanta Corp. v. Try Searching
Claim Number: FA0601000625942
Complainant is Advanta Corp. (“Complainant”), represented by Jennifer C. O'Neill of Wolf, Block, Schorr and Solis-Cohen LLP, 1650 Arch Street, 22nd Floor, Philadelphia, PA, 19103-2097. Respondent is Try Searching (“Respondent”), 2100-A North Federal Hwy, Hollywood, FL, 33020.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <advantaplatinum.com>, registered with Wild West Domains, Inc.
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 January 13, 2006; the National Arbitration Forum received a hard copy of the Complaint January 17, 2006.
On January 13, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <advantaplatinum.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. verified that Respondent is bound by the Wild West Domains, Inc. 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 January 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 6, 2006, 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@advantaplatinum.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 15, 2006, 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, <advantaplatinum.com>, is confusingly similar to Complainant’s ADVANTA mark.
2. Respondent has no rights to or legitimate interests in the <advantaplatinum.com> domain name.
3. Respondent registered and used the <advantaplatinum.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Advanta Corp., is in the business of offering credit card services. Since at least 1992, Complainant has made significant financial expenditures in the marketing and advertising of its services nationwide.
Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ADVANTA mark. Complainant first registered the ADVANTA mark with the USPTO on April 28, 1990 (Reg. No. 1,611,541).
Respondent registered the <advantaplatinum.com> domain name January 23, 2005. Respondent is using the disputed domain name to redirect Internet users to Respondent’s commercial website that features links to services similar to those offered by Complainant, and even includes Complainant’s mark.
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. 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 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.
The Panel finds that Complainant established by extrinsic
proof in this proceeding that it has rights to the ADVANTA mark through
registration with the USPTO. This is
sufficient to show Complainant’s rights in the mark pursuant to Policy ¶
4(a)(i). See Innomed Techs., 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.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The domain name that Respondent
registered, <advantaplatinum.com>, is confusingly similar
to Complainant’s ADVANTA mark because Respondent’s domain name incorporates
Complainant’s mark in its entirety and adds the generic term “platinum.” The addition of a generic term connected
with Complainant’s business to Complainant’s registered mark renders the
disputed domain name confusingly similar to the mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA
206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term
“assurance,” to the complainant’s AIG mark failed to sufficiently differentiate
the name from the mark under Policy ¶ 4(a)(i) because the appended term related
directly to the complainant’s business); 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety in the disputed domain name and urges that Respondent has no such rights. Under Policy ¶ 4(a)(ii), once Complainant make a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests in it. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide "concrete evidence that it has rights to or legitimate interests in the domain name at issue"); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) ("Because Complainant's Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent's failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).").
The Panel finds that Complainant presented a prima facie showing and will evaluate whether the evidence on record demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <advantaplatinum.com> domain name. Rather, the WHOIS information identifies Respondent as “Try Searching.” Thus, Respondent has not established rights or legitimate interests in the disputed domain name under 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 Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Respondent’s use of a domain name that is confusingly similar to Complainant’s ADVANTA mark to redirect Internet users interested in Complainant’s services to a website that provides links to similar services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”)
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad faith. Respondent is using the <advantaplatinum.com> domain name, which is confusingly similar to Complainant’s ADVANTA mark, to redirect Internet users to Respondent’s commercial website. The Panel finds that such use creates confusion regarding Complainant’s affiliation with the resulting website and evidences bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also CMG Worldwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan. 12, 2001) (finding that the respondent’s use of the complainant’s VINCE LOMBARDI mark to divert Internet users to its commercial website located at the <vincelombardi.com> domain name constituted bad faith use and registration of the disputed domain name).
Moreover, Respondent’s use of Complainant’s ADVANTA mark in
the <advantaplatinum.com> domain name to provide links to services
similar to those offered by Complainant illustrates Respondent’s intent to
disrupt Complainant’s business. The
Panel finds that such use is evidence of bad faith registration and use under
Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also Lambros v. Brown, FA 198963
(Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a
domain name primarily to disrupt its competitor when it sold similar goods as
those offered by the complainant and “even included Complainant's personal name
on the website, leaving Internet users with the assumption that it was
Complainant's business they were doing business with”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <advantaplatinum.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 1, 2006
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