Advanta Corp. v. Percom Ltd. DBA
WebBooster.com
Claim
Number: FA0507000511462
Complainant, Advanta Corp. (“Complainant”), is
represented by Vito Petretti of Wolf, Block, Schorr and Solis-Cohen LLP, 1650 Arch Street, 22nd Floor, Philadelphia, PA 19103-2097. Respondent is Percom Ltd. DBA WebBooster.com (“Respondent”), Expresspost,
Lakhtinskaya 24, St. Petersburg 197136, Russia.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <advantabusinesscard.com> and <advantacorp.com>,
registered with Domreg Ltd.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 13, 2005. The Complaint was
submitted in both Russian and English.
On
July 13, 2005, Domreg Ltd. confirmed by e-mail to the National Arbitration
Forum that the domain names <advantabusinesscard.com> and <advantacorp.com>
are registered with Domreg Ltd. and that Respondent is the current registrant
of the names. Domreg Ltd. has verified
that Respondent is bound by the Domreg Ltd. 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
July 21, 2005, a Russian Language Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 10, 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@advantabusinesscard.com and
postmaster@advantacorp.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 15, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Louis E.
Condon 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.
Pursuant
to Rule 11(a) the Panel determines that the language requirement has been
satisfied through the Russian language Complaint and Commencement Notification
and, absent a Response, determines that the remainder of the proceedings may be
conducted in English.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <advantabusinesscard.com>
and <advantacorp.com> domain names are confusingly similar to
Complainant’s ADVANTA mark.
2. Respondent does not have any rights or
legitimate interests in the <advantabusinesscard.com>and <advantacorp.com>
domain names.
3. Respondent registered and used the <advantabusinesscard.com>and
<advantacorp.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Advanta Corp., provides financial services under and holds numerous trademarks
for its ADVANTA mark with the United States Patent and Trademark Office
(“USPTO”) (E.g., Reg. No. 1,611,541 issued August 28, 1990; Reg. No.
1,735,801 issued November 24, 1992; Reg. No. 2,492,513 issued September 25,
2001). Complainant has spent considerable
time and money in bolstering its goodwill and strengthening its mark. Between 1992 and 2001, Complainant incurred
about $538 million in marketing and advertising expenses.
Respondent
registered the <advantabusinesscard.com> domain name on June 18,
2003 and the <advantacorp.com> domain name on June 26, 2003. After Complainant filed its initial
complaint on February 15, 2005, Respondent offered to sell the registrations
for the disputed domain names first at an auction with a minimum bid of $470 and
then directly to Complainant. As of
July 6, 2005, the <advantabusinesscard.com> domain name
resolved to a website that states that the domain name registration is up for
sale and the <advantacorp.com> domain name resolved to a blank
page, having remained inactive since its registration.
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. 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 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’s
registrations for its ADVANTA mark with the USPTO are sufficient to establish
Complainant’s rights in the mark. 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.”).
Complainant
argues that the <advantabusinesscard.com> and <advantacorp.com>
domain names are confusingly similar to its ADVANTA mark. Both of the disputed domain names wholly
incorporate Complainant’s mark. The <advantabusinesscard.com>
domain name adds the generic terms “business” and “card.” The <advantacorp.com> domain
name adds the generic term “corp.” In
addition to being generic, all three terms describe Complainant and its
business. The Panel finds that the
addition of generic and descriptive terms is insufficient to distinguish the
disputed domain names from Complainant’s mark.
See 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).
Therefore, the
Panel finds that Complainant has satisfied Policy ¶ (4)(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the <advantabusinesscard.com>
and <advantacorp.com> domain names. Complainant’s assertion establishes a prima facie case and
shifts the burden to Respondent. To
meet its burden, Respondent must provide concrete evidence that it does have
rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the 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
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 will
analyze whether Respondent could meet its burden of establishing rights or
legitimate interests for purposes of Policy ¶ 4(a)(ii).
Complainant
argues that Respondent is not commonly known by the disputed domain names. Without a response from Respondent, the
Panel accepts as true Complainant’s allegation. See Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that the complainant’s allegations are true unless
clearly contradicted by the evidence).
Moreover, Respondent’s WHOIS information suggests that Respondent is
known as “Percom Ltd. DBA WebBooster.com.” Therefore, the Panel concludes that
Respondent is not commonly known by the disputed domain name and does not have
rights or legitimate interests 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 Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
Complainant
argues that the <advantacorp.com> domain name has resolved to a
blank website since Respondent registered it in 2003. Without a response from Respondent, the Panel accepts
Complainant’s descriptions and arguments as true. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb.
Forum Dec. 1, 2004) (finding that because Respondent failed to submit a
Response, “Complainant’s submission has gone unopposed and its arguments
undisputed. In the absence of a
Response, the Panel accepts as true all reasonable allegations . . . unless
clearly contradicted by the evidence.”).
The Panel holds that Respondent’s passive holding of the <advantacorp.com>
domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where the respondent failed to
submit a response to the complaint and had made no use of the domain name in
question); see also TMP Int’l, Inc. v. Baker
Enters., FA 204112 (Nat. Arb. Forum Dec.
6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the
domain name does not establish rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii).”).
Complainant
has provided the Panel with evidence that Respondent has been offering to sell
the <advantabusinesscard.com> domain name registration since at
least February 15, 2005. Respondent has
not submitted a response and the Panel, therefore, accepts Complainant’s
evidence as conclusive. See Broadcom
Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004)
(“Respondent’s failure to respond to the Complaint functions as an implicit
admission that [Respondent] lacks rights and legitimate interests in the
disputed domain name. It also allows
the Panel to accept all reasonable allegations set forth . . . as true.”). The Panel determines that Respondent’s offer
to sell the disputed domain name registration is further evidence that
Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA
143684 (Nat. Arb. Forum Mar. 4, 2003) (stating that “Respondent’s lack of
rights and legitimate interests in the domain name is further evidenced by
Respondent’s attempt to sell its domain name registration to Complainant, the
rightful holder of the RED CROSS mark”); see also Mothers Against Drunk
Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that
under the circumstances, the respondent’s apparent willingness to dispose of
its rights in the disputed domain name suggested that it lacked rights
or legitimate interests in the domain name).
Consequently,
the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent
offered to sell the <advantabusinesscard.com> domain name
registration. The Panel holds that the
offer to sell the disputed domain name registration is evidence that the domain
name was registered in bad faith under Poilcy ¶ 4(b)(i). See Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale).
Respondent’s passive holding of the <advantacorp.com> is
further evidence of bad faith use and registration for purposes of Policy ¶
4(a)(iii). See DCI S.A. v. Link
Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also Caravan Club v.
Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <advantabusinesscard.com> and <advantacorp.com>
domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
August 26, 2005
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