Advanta Corp. v. Spiral Matrix
Claim Number: FA0601000635102
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 Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave., P.O. Box 4276-30100, Eldoret, KE, 30100.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <advantabusinesscreditcards.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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 January 24, 2006; the National Arbitration Forum received a hard copy of the Complaint January 27, 2006.
On January 24, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the National Arbitration Forum that the <advantabusinesscreditcards.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 January 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 16, 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@advantabusinesscreditcards.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 23, 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, <advantabusinesscreditcards.com>, is confusingly similar to Complainant’s ADVANTA mark.
2. Respondent has not rights to or legitimate interests in the <advantabusinesscreditcards.com> domain name.
3. Respondent registered and used the <advantabusinesscreditcards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Advanta Corp., is a nationwide provider of insurance and financial services, including credit card services. Complainant has used its ADVANTA mark in offering its services since 1988. Complainant separately registered its ADVANTA mark with the United States Patent and Trademark Office (“USPTO”) for several of its services, including credit card services (Reg. No. 2,732,354 issued July 1, 2003). Complainant owns and operates websites using several domain names incorporating its ADVANTA mark, including <advanta.com>, <advantabusinesscard.org> and <advantabusinesscards.net>.
Respondent registered the <advantabusinesscreditcards.com> domain name November 8, 2005. Internet users who access this domain name are redirected to a generic search-engine website which features links to service providers in direct competition with Complainant. This website also presents Internet users with pop-up advertisements for products and services unrelated to Complainant.
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.
By registering the ADVANTA mark with the USPTO, Complainant established legal rights in the mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also 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.”).
The disputed domain name that Respondent registered, <advantabusinesscreditcards.com>, is confusingly similar to Complainant’s ADVANTA mark, with the only difference being the addition of the phrase “business credit cards” without the spaces. The Panel notes that “business credit cards” is a generic phrase that bears a direct and obvious relationship to Complainant, a provider of credit card services. Because spaces are not allowed in domain names, the removal of spaces from the phrase “business credit cards” is irrelevant. Respondent has merely added a single descriptive phrase to Complainant’s mark. Therefore, Respondent’s <advantabusinesscreditcards.com> domain name is confusingly similar to Complainant’s ADVANTA mark pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); 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); 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it does have rights or legitimate interests in it. See 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
The disputed domain name, <advantabusinesscreditcards.com>, is confusingly similar to Complainant’s ADVANTA mark. Internet users who access this domain name are redirected to a generic search-engine website, which features links to services in competition with Complainant’s services, as well as pop-up advertisements for other products and services. The Panel presumes that Respondent receives click-through fees in exchange for diverting Internet users to these other websites, and for exposing them to pop-up advertisements. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); 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).”).
Complainant asserts that Respondent is not affiliated with Complainant, and no evidence suggests that Respondent has ever been commonly known by the <advantabusinesscreditcards.com> domain name. Additionally, the WHOIS database contains no information implying that Respondent is commonly known by the <advantabusinesscreditcards.com> domain name. The Panel finds that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); 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").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent uses the <advantabusinesscreditcards.com> domain name, which is confusingly similar to Complainant’s ADVANTA mark, to redirect Internet users to services offered by Complainant’s competitors and to expose them to pop-up advertisements, presumably in return for payment. Internet users may mistakenly believe that Respondent’s domain name is affiliated with Complainant, because it includes Complainant’s mark along with a descriptive phrase. The Panel finds that Respondent is taking advantage of confusion between the disputed domain name and Complainant’s mark for its own financial gain. Such use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also 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).
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 <advantabusinesscreditcards.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 8, 2006
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