Advanta Corp. v. ADVANTACARD INTL. INC.
Claim Number: FA0601000625997
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 ADVANTACARD INTL. INC. (“Respondent”), 840 S.W. 3rd. Ave., Suite 8, Pompano Beach, FL, 33060.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <advantacard-intl.com>, registered with Go Daddy Software, 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, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <advantacard-intl.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, 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 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 7, 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@advantacard-intl.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, <advantacard-intl.com>, is confusingly similar to Complainant’s ADVANTA mark.
2. Respondent has no rights to or legitimate interests in the <advantacard-intl.com> domain name.
3. Respondent registered and used the <advantacard-intl.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Advanta Corp., is a credit card services business. 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 <advantacard-intl.com> domain name November 1, 2001. Respondent is using the disputed domain name to divert Internet users to Respondent’s website, which features links to credit card services similar to those offered by Complainant, and even uses Complainant’s mark without Complainant’s authorization.
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.
Complainant established by extrinsic proof in this proceeding that it has rights to and legitimate interests in its ADVANTA mark by registration with the USPTO. This is sufficient demonstration of Complainant’s rights in the mark under 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.”).
Complainant also established that the domain name that Respondent registered, <advantacard-intl.com>, is confusingly similar to Complainant’s ADVANTA mark. Respondent’s disputed domain name is confusingly similar to Complainant’s mark for the reason that the domain name integrates Complainant’s mark in its entirety and adds the generic terms “card” and “intl,” separated by a hyphen. The addition of the term “card” renders Respondent’s disputed domain name confusingly similar to Complainant’s mark because the word “card” is closely linked to Complainant’s business in the credit card industry. 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). Furthermore, the addition of the generic term “intl” to the disputed domain name does not remove the confusing similarity between Respondent’s <advantacard-intl.com> and Complainant’s mark. See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark).
Respondent’s use of a hyphen within its <advantacard-intl.com> domain name likewise does not create a distinct domain name nor avoid the confusing similarity with Complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
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 within the disputed domain name. Pursuant to Policy ¶ 4(a)(ii), Complainant must initially establish as well that Respondent does not have rights or legitimate interests with respect to the disputed domain name. However, once Complainant demonstrates this by a prima facie showing, the burden of proof shifts to Respondent to establish that it has rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where complainant asserts 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 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 Panel finds that Complainant made a prima facie showing, and will, accordingly, determine whether the evidence on record demonstrates rights or legitimate interests for the Respondent under Policy ¶ 4(c).
Complainant asserts that no evidence suggests that
Respondent is commonly known by the <advantacard-intl.com> domain
name, and further that Complainant has not authorized or licensed Respondent to
use the ADVANTA mark. Although the
WHOIS information identifies Respondent as “ADVANTACARD INTL. INC.,” Respondent
has not presented any affirmative evidence that it is commonly known by the
disputed domain name. Thus, the Panel
determines that Respondent has not established rights or legitimate interests
under Policy ¶ 4(c)(ii). See City
News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5,
2004) (“Although Respondent’s WHOIS information lists its name as
‘citynewsandvideo,’ there is no evidence before the Panel to indicate that
Respondent is, in fact, commonly known by the disputed domain name
<citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also MB
Fin. Bank, N.A. v. mbfinancialmortgage.com, FA 405073 (Nat. Arb. Forum Mar.
11, 2005) (“[D]espite being listed in the WHOIS information as ‘mbfinancialmortgage.com,’
Respondent is not commonly known by this domain name nor is [it] authorized to
register domain names featuring Complainant’s MB FINANCIAL mark.”).
Respondent is using the <advantacard-intl.com> domain name to divert Internet users seeking Complainant to websites offering credit card services similar to those Complainant offers. 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 offers similar products in competition with Complainant’s business is not a use in connection with a bona fide offering of goods or services pursuant to 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 alleges that Respondent acted in bad faith. Pursuant to Policy ¶ 4(a)(iii), Complainant
established that Respondent’s domain name has been registered and is being used
in bad faith. The confusing similarity
between Respondent’s <advantacard-intl.com> domain name and
Complainant’s ADVANTA mark, as well as Respondent’s use of the domain name to
provide links to comeptitors of Complainant, indicate that Respondent has
registered the disputed domain name primarily for the purpose of disrupting the
business of a competitor under Policy ¶ 4(b)(iii). See Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the
respondent diverted business from the complainant to a competitor’s website in
violation of Policy ¶ 4(b)(iii)); see
also EBAY, Inc. v. MEOdesigns,
D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites).
Moreover, Respondent’s
use of the disputed domain name constitutes an attempt to attract, for
commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant as the sponsor of its activities. Respondent uses the <advantacard-intl.com>,
which prominently features Complainant’s mark, to confuse Internet users as to
Complainant’s affiliation with the website and to offer links to credit card
services in competition with Complainant.
Such use by Respondent provides evidence of registration and use in bad
faith in accordance with Policy ¶ 4(b)(iv).
See Perot Sys. Corp. v.
Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where the domain name in question is obviously connected with the complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain); see also Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on
its website and offering identical services as those offered by the
complainant).
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 <advantacard-intl.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 1, 2006
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