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Generic Top Level Domain Name (gTLD) Decisions |
American International Group, Inc. v.
Advantage Capital
Claim Number: FA0209000125383
PARTIES
Complainant
is American International Group, Inc.,
New York, NY (“Complainant”) represented by Claudia Werner. Respondent
is Advantage Capital, Carson City,
NV (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <advantagecapital.org>,
registered with VeriSign, Inc.
PANEL
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.
Judge
Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 20, 2002; the Forum
received a hard copy of the
Complaint on September 23, 2002.
On
September 24, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the
domain name <advantagecapital.org>
is registered with VeriSign, Inc. and that Respondent is the current registrant
of the name. VeriSign, Inc. has
verified that Respondent is bound by the VeriSign, 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
October 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of October 21,
2002 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@advantagecapital.org 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
November 7, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Judge
Harold Kalina (Ret.) 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
The
<advantagecapital.org> domain
name is identical to Complainant’s ADVANTAGE CAPITAL mark.
Respondent
has no rights or legitimate interests in the <advantagecapital.org> domain name.
Respondent
registered and used the <advantagecapital.org>
domain name in bad faith.
B.
Respondent
Respondent has failed to submit a
Response.
FINDINGS
Complainant holds a trademark
registration with the United States Patent and Trademark Office for the
ADVANTAGE CAPITAL mark (Reg.
No. 1,555,033).
Complainant uses the ADVANTAGE CAPITAL mark in conjunction with its
“brokerage services related to investment company shares.” Complainant has used the mark in commerce
since at least as early as September 1, 1987.
Complainant has invested a substantial
amount of money and time in promoting and developing its ADVANTAGE CAPITAL
mark. Consequently, the ADVANTAGE
CAPITAL mark is well-recognized by the “relevant trade and consuming public as
indicating high quality
services” offered by Complainant. Thus, the mark carries with it a valuable
amount of goodwill.
Respondent registered the <advantagecapital.org> domain
name on September 19, 2001. The domain
name resolves to a website that claims to offer financial services under the
auspices of “Advantage Capital.”
Complainant has discovered that Respondent is engaged in a credit card
scheme whereby Respondent has been debiting bank accounts of
consumers without
authorization. Complainant became aware
of this activity when it received numerous complaints about large withdrawals
from checking accounts of consumers
who believed they were dealing with
Complainant. Apparently, Respondent was
offering to send consumers “an ‘Advantage Capital’ stored value MasterCard” on
the condition that a minimal
shipping fee was to be paid. Subsequently, Respondent withdrew large
amounts from the checking accounts and consumers, believing Respondent was
Complainant, sent
complaints to Complainant.
Respondent is not authorized to use the ADVANTAGE CAPITAL mark.
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 and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) 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; 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.
Identical and/or Confusingly Similar
Complainant has established its rights in
the ADVANTAGE CAPITAL mark through proof of registration with the United States
Patent and
Trademark Office.
Respondent’s <advantagecapital.org> domain name reflects Complainant’s
entire ADVANTAGE CAPITAL mark with the inconsequential addition of the
top-level domain “.org.” Top-level
domains have no bearing on a Policy ¶ 4(a)(i) analysis because they are
required. In addition, the fact that
Respondent’s domain name does not contain the space that Complainant’s
trademark has between the words
of the mark is irrelevant because spaces are
impermissible in domain names.
Therefore, Respondent’s <advantagecapital.org>
domain name is identical to Complainant’s ADVANTAGE CAPITAL mark. See
Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since
use of a gTLD is required of domain name registrants"); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(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”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant has filed a prima facie Complaint and has asserted
that Respondent lacks rights or legitimate interests in the domain name. Complainant’s compliance with the Policy
shifts the burden on Respondent to articulate rights or legitimate interests in
the domain
name. However, Respondent
has not submitted a Response in this proceeding and therefore the Panel
presumes Respondent has no such rights
or legitimate interests. See
Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in
respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate
interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc.,
AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests
where no such right or interest was immediately
apparent to the Panel and
Respondent did not come forward to suggest any right or interest it may have
possessed).
In addition, because Respondent did not
come forward with a Response, the Panel accepts Complainant’s allegations as
true and will
draw all reasonable inferences in favor of Complainant. See
Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding
that failing to respond allows a presumption that Complainant’s allegations are
true unless
clearly contradicted by the evidence); see also Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate
for the Panel to draw adverse inferences from Respondent’s failure to reply
to
the Complaint).
Respondent uses the <advantagecapital.org> domain name to resolve to a website
that offers financial services under the name “Advantage Capital.” Complainant has discovered that this website
is a front for Respondent’s telephone and mail solicitations that purport to
offer the
consuming public a credit card for the cost of shipping and
handling. Subsequent to subscribing to
Respondent’s offer an amount larger than shipping and handling is drawn from a
consumer’s bank account
and no credit card is delivered. In order to conduct this fraudulent activity
Respondent passes itself off as Complainant by using the ADVANTAGE CAPITAL
mark. Consequently, Complainant has
received numerous complaints from disgruntled consumers. Therefore, Respondent uses the domain name
to attach an appearance of legitimacy in regards to its fraudulent credit card
scheme,
which does not represent rights or legitimate interests pursuant to
Policy ¶¶ 4(c)(i) and (iii). See Big
Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding
no legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks); see also
N. Coast Med., Inc. v. Allegro Med.,
FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where
Respondent used the domain name to divert Internet users
to its competing
website).
Respondent apparently attempts to pass
itself off as “Advantage Capital” but there is no evidence on record that shows
Respondent
is commonly known by said name or the <advantagecapital.org> domain name. Respondent’s failure to come forward and claim that it is
commonly known by the domain name and the aforementioned circumstances make
it
clear that Respondent has no rights or legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known
by the mark); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by
the disputed domain name or using
the domain name in connection with a legitimate or fair use).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <advantagecapital.org> domain name; thus, Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
The circumstances of this case make it
clear that Respondent was aware of Complainant’s interests in the ADVANTAGE
CAPITAL mark. In its credit card
scheme, Respondent attempts to pass itself off as Complainant to the consuming
public by using Complainant’s ADVANTAGE
CAPITAL mark. Respondent uses the <advantagecapital.org>
domain name to provide a legitimate front for its credit card scheme. Hence, Respondent’s use of the subject
domain name causes further confusion as to Complainant’s sponsorship. Respondent’s registration and use of the
domain name, therefore, constitutes bad faith under Policy ¶ 4(b)(iv). See
Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where
similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or
is sponsoring the services offered at the
site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and
registration by linking the
domain name to a website that offers services
similar to Complainant’s services, intentionally attempting to attract, for
commercial
gain, Internet users to its website by creating a likelihood of
confusion with Complainant’s marks).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby
granted.
Accordingly, it is Ordered that the
domain name <advantagecapital.org>
be transferred from Respondent
to Complainant.
Judge
Harold Kalina (Ret.), Panelist
Dated:
November 13, 2002
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