DECISION

NextCard, Inc. v. Baltic Consultants Limited

Claim Number: FA0104000097073

PARTIES

Complainant is NextCard, Inc., San Francisco, CA, USA (“Complainant”) represented by Robert W. Zelnick, of McDermott, Will & Emery.  Respondent is Baltic Consultants Limited, Tortola, British Virgin Islands (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nextcardl.com> registered with Tucows, Inc..

PANEL

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. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 16, 2001; the Forum received a hard copy of the Complaint on April 17, 2001.

On April 17, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <nextcardl.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 April 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 7, 2001 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@nextcardl.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 Forum transmitted to the parties a Notification of Respondent Default.

On May 18, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant alleges that the <nextcardl.com> domain name is confusingly similar to Complainant’s federally registered trademark; that Respondent has no rights or legitimate interests in the <nextcardl.com> domain name; and that Respondent registered and used the <nextcardl.com> domain name in bad faith.

B. Respondent did not file a response in this matter.

FINDINGS

Since 1997, Complainant has used its famous NEXTCARD mark in connection with credit cards, credit card services and financial services primarily on the Internet.  Complainant registered the NEXTCARD mark, and variations thereof, on the Principal Register of the United States Patent and Trademark Office, as Registration No. 2,222,470, on February 9, 1999.  Complainant has been in continuous use of its registered mark since the date of registration. 

Complainant uses its NEXTCARD mark as the name of its Internet-based credit card business through the use of its website located at <nextcard.com>.  Complainant’s marketing efforts and expenditures has placed the Complainant among one of the most recognized financial products and service providers available on the Internet.

Respondent registered the disputed <nextcardl.com> domain name on August 24, 2000.

DISCUSSION

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the 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;

(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.

Identical to and/or Confusingly Similar

The <nextcardl.com> domain name is confusingly similar to Complainant’s federally registered NEXTCARD mark.  The addition of the letter “l” to the end of the mark does not take the domain name in dispute out of the realm of confusingly similar.  See Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters onto words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks); see also Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000 (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistakes by users when entering the url address”).

The Panel finds that the domain name registered by Respondent contains the trademark to which Complainant has sole right and the domain name containing that mark is therefore confusingly similar to Complainant’s registered mark. Policy 4(a)(i).

Rights to or Legitimate Interests

Complainant has established rights in the NEXTCARD mark.  Respondent did not come forward to demonstrate any rights or legitimate interests in the NEXTCARD mark that is contained in its entirety in the <nextcardl.com> domain name. In such circumstances, it is appropriate for the Panel to find that Respondent has no rights to or legitimate interests in the domain name. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests).  Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response.  See Pavilion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that “Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names”).

Respondent is not engaged in a bona fide offering of goods or services.  Respondent’s registration of the <nextcardl.com> domain name, while linking it to a website which offers pornographic material, is not a bona fide offering of goods or services under Policy 4(c)(i).  See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark). 

Respondent cannot demonstrate rights under Policy 4(c)(ii) because Respondent is not commonly known by the domain name in dispute.  See Victoria’s Secret et al. v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

There is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the domain name.  It is not a legitimate or fair use to redirect users to pornographic websites and to profit from advertising revenue received from such links.  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Kosmea Pty Ltd. v. Carmel Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <nextcardl.com> domain name. Policy 4(a)(ii).

Registration and Use in Bad Faith

Complainant urges that Respondent is engaged in bad faith use of the <nextcardl.com> domain name.  The Panel agrees.  The registration and use of the <nextcardl.com> domain name is evidence of bad faith when Respondent attracts Internet users to its website for commercial gain by creating a likelihood of confusion, and linking that website to other websites containing pornographic material.  See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the <geociities.com> domain name in dispute to websites displaying banner advertisements and pornographic material).

The Panel finds that Respondent registered and used the domain name in issue in bad faith. Policy 4(a)(iii).

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that Complainant is entitled to the requested relief and that should be hereby granted.

Accordingly, it is Ordered that the <nextcardl.com> domain name be transferred from Respondent to Complainant.

Carolyn Marks Johnson, Panelist

Dated: June 1, 2001.

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